Notation to File

NOTE TO THE FILE

SERIAL NUMBER:            88570234

DATE:                                09/22/2020

NAME:                               sjackson10

NOTE:         

Searched:                                                             
     Google                            
     Lexis/Nexis                       
     OneLook
     Wikipedia
     Acronym Finder                         Protest evidence reviewed
     Other:

Checked:                                                             
     Geographic significance          
     Surname                          
     Translation
     ID with ID/CLASS mailbox

     Checked list of approved Canadian attorneys and agents

Discussed file with
Attorney/Applicant via:
        phone                               Left message with
        email                               Attorney/Applicant

     Requested Law Library search           Issued Examiner’s Amendment
     for:                                   and entered changes in TRADEUPS

        PRINT        DO NOT PRINT           Added design code in TRADEUPS
     Description of the mark
     Translation statement                  Re-imaged standard character
                                            drawing
     Negative translation statement             
     Consent of living individual           Contacted TM MADRID ID/CLASS
                                            about misclassified definite ID
     Changed TRADEUPS to:

 X   OTHER:

From: Willsey, Peter J. <PWillsey@brownrudnick.com>
Sent: Tuesday, September 22, 2020 1:51 PM
To: Jackson, Steven <Steven.Jackson@USPTO.GOV>
Subject: RE: Application Serial No. 88570234 LYST

 

 

Hi Mr. Jackson –

 

Thank you for the email and proposed amendments. I will confer with my client and hope to get back to you by tomorrow afternoon.

 

Best regards,

 

Peter

 

From: Jackson, Steven <Steven.Jackson@USPTO.GOV>
Sent: Tuesday, September 22, 2020 10:15 AM
To: Willsey, Peter J. <PWillsey@brownrudnick.com>
Cc: IP Docketing <docketing@brownrudnick.com>
Subject: RE: Application Serial No. 88570234 LYST

 

External E-mail. Use caution accessing links or attachments.

---

Good morning, Mr. Willsey,

 

I hope this message finds you well.

 

I have reviewed the Request for Reconsideration, and the following issues remain:  (1) amending wording at the end of the recitation of services for Classes 038, 042 and 045.  Specifically, the wording “advice, consultancy and information services…” in each Class still needs clarification to keep each classified in each respective Class.  I propose the following, if accurate:

 

“providing advice, consultancy and information services, namely, advice, consultancy and information services in relation to providing on-line facilities for real-time interaction with other computer users concerning topics of interest relating to fashion, lifestyle and beauty,” in International Class 038;

 

“providing technical advice, consultancy and information services in relation to user authentication services using technology for e-commerce transactions in connection with retail and consumer goods,” in International Class 042.

 

(2) In Class 045, the recitation still needs clarification.  Please note, that information about “beauty” is generally classified in Class 044. The wording “providing information, news, and commentary in the field of fashion, well-being and diverse human lifestyles” would be classified in Class 041 as “providing information, news, and commentary in the field of current events relating to fashion, well-being and diverse human lifestyles.” I propose the following, if accurate:

 

“Online social networking services; providing information in the field of social networking services; online social networking services designed for people with a common desire to meet other people with similar interests; providing on-line computer databases and on-line searchable databases in the field of social networking; copyright management; providing information relating to personal online shopping for others and personal fashion consulting services; consultancy services relating to personal fashion consulting and shopping for others, provided both online and in person; providing fashion information relating the trends in fashion and lifestyles; online social networking services accessible by means of downloadable mobile applications; social introduction agencies; personal introduction services; personal concierge services for others comprising making requested fashion, lifestyle and beauty appointments to meet individual needs; concierge services for others comprising making requested personal arrangements and reservations and providing customer-specific information to meet individual needs rendered together in an online retail environment; providing an internet website portal featuring information in the fields of fashion and personal lifestyles; providing advice, consultation and information services, namely, online advice, guidance and information used in connection with fashion, personal lifestyle and personal shopping for others,” in International Class 045.

 

If these amendment are acceptable and you would like me to enter them via Examiner’s amendment and move the application forward, please let me know.

 

Also, is the applicant the owner of U.S. Registration No. 5045749?

 

Regards,

 

Steven W. Jackson

Trademark Attorney

Law Office 107

steven.jackson@uspto.gov

571-272-9409