NOTE TO THE FILE
SERIAL NUMBER: 88573834
DATE: 01/14/2020
NAME: lmartin2
NOTE:
Searched:
Lexis/Nexis
OneLook
Wikipedia
Acronym Finder Protest evidence reviewed
Other:Checked:
Geographic significance
Surname
Translation
ID with ID/CLASS mailboxChecked list of approved Canadian attorneys and agents
Discussed file with
Attorney/Applicant via:
phone Left message with
X email Attorney/ApplicantRequested Law Library search X Issued Examiner’s Amendment
for: and entered changes in TRADEUPSPRINT 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:
From: Kelly Kubasta <kkubasta@fbfk.law>
Sent: Monday, January 13, 2020 5:02 PM
To: Martin, Lief <lief.martin@USPTO.GOV>
Cc: Trademark <trademark@fbfk.law>
Subject: Re: U.S. TM App. Ser. No. 88/573,834 for IDNA
Lief,
On behalf of Applicant, your proposals are approved -- both the amended identification of services and the ownership claim for PRIVATE IDNA registration.
Thanks,
Kelly
KELLY J. KUBASTA
Attorney & Shareholder
(972) 378-9111 Office | (972) 826-4447 Direct | (972) 378-9115 Fax
2500 Dallas Parkway, Suite 600 | Plano, Texas 75093
IMPORTANT\CONFIDENTIAL: This message contains information from the law firm of Ferguson Braswell Fraser Kubasta PC that may be subject to the attorney-client or work product doctrine, or may be otherwise confidential and exempt from disclosure under applicable law. Unless expressly stated otherwise, nothing contained in this message should be construed as a digital or electronic signature, nor is this message intended to reflect an intention to make an agreement by electronic means. DO NOT COPY OR FORWARD TO UNAUTHORIZED PERSONS. If you are not the intended recipient or the employee or agent responsible for delivering the message to the intended recipient, you are hereby notified that any dissemination, distribution, copying or forwarding of this communication is strictly prohibited. Unauthorized interception of this message may be in violation of the Electronic Communications Privacy Act, 18 U.S.C § 2510 et seq. If you have received this communication in error, please notify us immediately at our telephone number: (972) 378-9111
From: "Martin, Lief" <lief.martin@USPTO.GOV>
Date: Monday, January 13, 2020 at 2:29 PM
To: Kelly Kubasta <kkubasta@fbfk.law>
Subject: RE: U.S. TM App. Ser. No. 88/573,834 for IDNA
Good Afternoon Kelly,
I am proposing the following additional amendment to the ID. The proposed amendment clarifies that the services consist of (or pertain to) testing for the presence of pathogens, and expressly exclude genetic testing.
CLASS 44:
Health assessment services; Medical diagnosis of HIV, herpes, hepatitis, syphilis, chlamydia, gonorrhea, trichomoniasis, HPV, mycoplasma, and ureaplasma; Providing a web site featuring information in the field of sexual health, including living a healthy and disease free life; Providing a website featuring information in the field of the diagnosis and treatment of HIV, herpes, hepatitis, syphilis, chlamydia, gonorrhea, trichomoniasis, HPV, mycoplasma, and ureaplasma; Health screening services in the field of HIV, herpes, hepatitis, syphilis, chlamydia, gonorrhea, trichomoniasis, HPV, mycoplasma, and ureaplasma; Providing medical information to consumers in the form of reports in the field of sexually transmitted diseases; all the foregoing services consist of, or feature, tests for the presence of pathogens or other foreign bodies or substances in bodily fluids; and all the foregoing exclude services which consist of, or feature, dna or genetic testingI am also proposing adding an ownership claim for Reg. No. 5,567,449 (PRIVATE IDNA).
Please let me know if the proposed amendment is acceptable.
Best,
Lief
From: Kelly Kubasta <kkubasta@fbfk.law>
Sent: Monday, January 13, 2020 12:38 PM
To: Martin, Lief <lief.martin@USPTO.GOV>
Cc: Trademark <trademark@fbfk.law>
Subject: U.S. TM App. Ser. No. 88/573,834 for IDNA
Mr. Martin,
In the above-referenced trademark application, the Office Action entered November 14, 2019 includes a Section 2(d) refusal based on two registrations (Reg. No. 4,402,970 for IDNA & Design, and Reg. No. 5,567,449 for PRIVATE IDNA), as well as a citation to one prior pending application (App. Ser. No. 86/754,586).
As to Reg. No. 5,567,449 for PRIVATE IDNA, please note that Applicant is now the owner of record of this cited registration. Since the Office Action was entered, Applicant has updated the assignment records with the Assignment Branch to reflect its ownership of such registration.
As to Reg. No. 4,402,970 and App. Ser. No. 86/754,586, Applicant proposes that an amendment to the identified services in Applicant’s pending application would obviate any potential likelihood of confusion with either of these cited marks. In particular, Applicant proposes deleting the clause “Health assessment services” from the identified services, such that all remaining identified services are tightly related to specific sexually transmitted diseases. If acceptable to overcome these two cited third party marks, Applicant would propose that deletion of “Health assessment services” occur by way of an Examiner’s Amendment.
Moreover, Applicant notes that the term “IDNA” has no meaning or significance in the trade or industry in which Applicant’s goods and/or services are provided, and no meaning or significance as applied to Applicant’s identified services. To be more specific, Applicant’s identified services are in no way based upon DNA testing and/or genetics testing.
Please feel free to contact me if you have any questions.
Regards,
Kelly Kubasta
KELLY J. KUBASTA
Attorney & Shareholder
(972) 378-9111 Office | (972) 826-4447 Direct | (972) 378-9115 Fax
2500 Dallas Parkway, Suite 600 | Plano, Texas 75093
IMPORTANT\CONFIDENTIAL: This message contains information from the law firm of Ferguson Braswell Fraser Kubasta PC that may be subject to the attorney-client or work product doctrine, or may be otherwise confidential and exempt from disclosure under applicable law. Unless expressly stated otherwise, nothing contained in this message should be construed as a digital or electronic signature, nor is this message intended to reflect an intention to make an agreement by electronic means. DO NOT COPY OR FORWARD TO UNAUTHORIZED PERSONS. If you are not the intended recipient or the employee or agent responsible for delivering the message to the intended recipient, you are hereby notified that any dissemination, distribution, copying or forwarding of this communication is strictly prohibited. Unauthorized interception of this message may be in violation of the Electronic Communications Privacy Act, 18 U.S.C § 2510 et seq. If you have received this communication in error, please notify us immediately at our telephone number: (972) 378-9111