NOTE TO THE FILE
Sent to TICRS as Serial Number: 88577631SERIAL NUMBER: 88577646
DATE: 11/14/2019
NAME: jgriffin
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:X OTHER:
From: Griffin, Jim
Sent: Thursday, November 14, 2019 5:21 PM
To: Olszyk, Christopher D. <colszyk@foxrothschild.com>
Cc: IPDocket <IPDocket@foxrothschild.com>
Subject: RE: Docklight Brands trademarks
Thanks for your response! Those changes are fine, and those deletions with regard to EARTH are also acceptable and will obviate the 2d refusal. I’ll get the changes made and get these approved for pub.
From: Olszyk, Christopher D. <colszyk@foxrothschild.com>
Sent: Thursday, November 14, 2019 5:04 PM
To: Griffin, Jim <Jim.Griffin@USPTO.GOV>
Cc: IPDocket <IPDocket@foxrothschild.com>
Subject: RE: Docklight Brands trademarks
Dear Mr. Griffin,
Thank you for your emails and courtesies extended in resolving these issues.
Our client will agree to most of the changes proposed below. Specifically, they will accept the following amendments (capitalization and bold is simply to identify new terms added):
Class 09 - DOWNLOADABLE electronic publications, namely, newsletters, brochures,
websites,reports and guides in the field of female wellness
Class 25 - Caps BEING HEADWEAR; athletic apparel, NAMELY, sweat pants, sweat shirts, athletic shorts, athletic shirts, athletic tights; t-shirts; sweat shirts; shirts; toques; casual wear, NAMELY, sweat pants, sweat shirts, athletic shorts, athletic shirts, athletic tights; women's sportswear, NAMELY, sweat pants, sweat shirts, athletic shorts, athletic shirts, athletic tights; women's socks; women's shirts; sandals; yoga pants
Class 35 -
Distribution and saleDISTRIBUTORSHIPS, RETAIL STORE SERVICES, AND ONLINE RETAIL STORE SERVICES IN THE FIELD of caps, athletic apparel, t-shirts, sweat shirts, shirts, toques, casual wear, women's sportswear, women's socks, women's shirts, sandals, and yoga pants,; Distribution and sale ofsmoothies, fruit juices, drinking water with vitamins
I believe this should resolve the ID issue for each application.
With respect to the EARTH marks to be cited, we would like to proactively offer an amendment which will hopefully resolve or remove any 2(d) citation. Specifically, the client will agree to the following amendment (deleting class 25 and amending class 35 to remove those goods identified in class 25). Please advise if this will be acceptable? If so, we will accept that amendment (see below). If not, I would like to discuss this further with you – perhaps tomorrow.
· Class 9: Electronic publications, namely, newsletters, brochures, websites, reports and guides in the field of female wellness
· Class 16: Printed publications, namely, newsletters, brochures, reports and guides in the field of female wellness
·
Class 25: Caps; athletic apparel; t-shirts; sweat shirts; shirts; toques; casual wear; women's sportswear; women's socks; women's shirts; sandals; yoga pants
· Class 32: Smoothies; fruit juices; drinking water with vitamins
· Class 35:
Distribution and sale of caps, athletic apparel, t-shirts, sweat shirts, shirts, toques, casual wear, women's sportswear, women's socks, women's shirts, sandals, and yoga pants; Distribution and sale ofDISTRIBUTORSHIPS, RETAIL STORE SERVICES, AND ONLINE RETAIL STORE SERVICES IN THE FIELD smoothies, fruit juices, drinking water with vitamins
If you have any questions, please let me know.
Best regards,
Chris Olszyk
Christopher Olszyk, Jr
Attorney at Law
Fox Rothschild LLP
2000 Market Street
20th Floor
Philadelphia, PA 19103-3222
(215) 299-2081 - direct
(215) 299-2150- fax
colszyk@foxrothschild.com
www.foxrothschild.com
From: Griffin, Jim <Jim.Griffin@USPTO.GOV>
Sent: Thursday, November 14, 2019 3:57 PM
To: Olszyk, Christopher D. <colszyk@foxrothschild.com>
Cc: IPDocket <IPDocket@foxrothschild.com>
Subject: [EXT] RE: Docklight Brands trademarks
Hi Chris,
Can you please let me know where we stand on these? I know it’s a lot of applications and a lot of changes, but if there’s any way I could have an answer by tomorrow that would be ideal.
Jim
From: Griffin, Jim
Sent: Wednesday, November 13, 2019 5:10 PM
To: colszyk@foxrothschild.com
Cc: ipdocket@foxrothschild.com
Subject: RE: Docklight Brands trademarks
Importance: High
Hi Chris,
To follow up on these, I did the searches for the remaining applications. MOON, SUN and STARS are fine.
There is a 2(d) issue with EARTH in Classes 25 and 35, but the other classes are clear. There is one prior pending and five registrations, all owned by the same entity, and all for EARTH in standard characters. So we can still fix the ID on that one if amenable and then I’ll do a refusal b/c of the 2(d) issue. If you’re curious, the prior pending application is 88034619 and the registrations are:
3677917
3526963
2199118
2249826
1371439
From: Griffin, Jim
Sent: Tuesday, November 12, 2019 3:49 PM
To: colszyk@foxrothschild.com
Cc: ipdocket@foxrothschild.com
Subject: Docklight Brands trademarks
Importance: High
Hi Chris,
I’m the examiner handling all of the following marks:
88577630, IRISA (standard characters)
88577631, IRISA (stylized)
88577633, IRISA (and design)
88577644, MOON
88577646, SUN
88577647, EARTH
88577648, STARS
All of these applications have the same ID in five classes. Of those classes, we need to make some changes to Classes 9, 25 and 35 before I can approve them.
In Class 9, we must specify whether the electronic publications are “downloadable” or “recorded on computer media.” At this point, I believe nearly all electronic publications are downloadable. A newsletter on a CD would be uncommon. Also, if the electronic publications are also provided online, then the applicant could add Class 41. The wording would be NONDOWNLOADABLE electronic publications, namely, newsletters, brochures, reports and guides in the field of female wellness (Class 41).
Also, “websites” are not electronic publications. The service of “providing a website featuring information in the field of female wellness” would be a Class 44 information service. Information services are classified based on subject matter, and wellness services are in Class 44. Applicant may add that class if desired. So I’d suggest the following for Class 9:
DOWNLOADABLE electronic publications, namely, newsletters, brochures,
websites,reports and guides in the field of female wellness (Class 9).
In Class 25, “caps,” “athletic apparel,” “casual wear,” and “women’s sportswear” are indefinite. The caps must be clarified as being headwear, and the other three entries must list specific types of clothing, e.g. sweat pants, sweat shirts, athletic shorts, athletic shirts, athletic tights, etc. So I’d suggest the following for Class 25:
Caps BEING HEADWEAR; athletic apparel, NAMELY, [LIST SPECIFIC GOODS, e.g. sweat pants, sweat shirts, athletic shorts, athletic shirts, athletic tights]; t-shirts; sweat shirts; shirts; toques; casual wear, NAMELY, [LIST SPECIFIC GOODS, e.g. sweat pants, sweat shirts, athletic shorts, athletic shirts, athletic tights]; women's sportswear, NAMELY, [LIST SPECIFIC GOODS, e.g. sweat pants, sweat shirts, athletic shorts, athletic shirts, athletic tights]; women's socks; women's shirts; sandals; yoga pants (Class 25).
In Class 35, the wording “distribution and sale” is problematic. “Distribution” is a Class 39 delivery service, which applicant likely does not provide. “Retail distributorships” is acceptable wording in Class 35, however. Also, “sale” of anything is not a service, but “retail store services” and “online retail store services” are acceptable services. So for Class 35, I’d suggest:
Distribution and saleDISTRIBUTORSHIPS AND ONLINE RETAIL STORE SERVICES IN THE FIELD of caps, athletic apparel, t-shirts, sweat shirts, shirts, toques, casual wear, women's sportswear, women's socks, women's shirts, sandals, and yoga pants; Distribution and sale ofAS WELL AS smoothies, fruit juices, drinking water with vitamins (Class 35).
If the applicant wants to add Class 41 or 44, you may pay the fee ($275/class) here: http://teas.gov.uspto.report/office/pra/, and click “yes” for number 6.
Please let me know how you’d like to proceed on these.
PLEASE NOTE: I’ve done the search for the three IRISA marks, but not the other four yet. But since the ID issue is the same on all seven of them I’m sending this out now. If I come upon any 2(d) issues with the others I’ll let you know.
Regards,
Jim Griffin
James T. Griffin
Examining Attorney, Law Office 103
United States Patent & Trademark Office
571-272-9169