NOTE TO THE FILE
SERIAL NUMBER: 88582195
DATE: 11/21/2019
NAME: ssettles
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 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: Lewis, Shaila E.
Sent: Thursday, November 21, 2019 9:26 AM
To: Max Crowley <max@thebandit.com>
Subject: RE: U.S. PATENT AND TRADEMARK OFFICE COMMUNICATION REGARDING U.S. APPLICATION NO. 88508606 (BANDIT)
Dear Max,
The case was withdrawn from publication because the goods in Class 9 do not specifically state that all software and computer programs are “downloadable.” The current description is “Computer software, downloadable computer programs, mobile device software, and computer application software for mobile phones and tablets, all for viewing, ordering and paying for food, beverage and merchandise, for delivering targeted offers, promotional messages and announcements to prospective purchasers, for locating and informing users about venues based on geographical location, for tracking and displaying venue activity based on user information, for purchasing and delivering food, beverage, merchandise and credits for others, for facilitating the advertisement and promotion of goods and services of others, for social networking, and for conducting and administering loyalty programs, incentive rewards programs, discount programs, rebate programs or other similar programs to promote the purchase of goods and services of others”.
The applicant will have to indicate, if accurate, that all software and programs are “downloadable”. The following wording would be accepted, if accurate: “Computer software, computer programs, mobile device software, and computer application software for mobile phones and tablets, all downloadable and for viewing, ordering and paying for food, beverage and merchandise, for delivering targeted offers, promotional messages and announcements to prospective purchasers, for locating and informing users about venues based on geographical location, for tracking and displaying venue activity based on user information, for purchasing and delivering food, beverage, merchandise and credits for others, for facilitating the advertisement and promotion of goods and services of others, for social networking, and for conducting and administering loyalty programs, incentive rewards programs, discount programs, rebate programs or other similar programs to promote the purchase of goods and services of others”.
Please let me know if you would like to amend the Class 9 wording in that manner. If so, I will enter the change for you via examiner’s amendment.
Kind regards,
Shaila E. Lewis
Trademark Examining Attorney
Law Office 114
(571) 270-1527 (phone)
(571) 270-2527 (fax)
From: Max Crowley <max@thebandit.com>
Sent: Wednesday, November 20, 2019 10:26 PM
To: Lewis, Shaila E. <Shaila.Lewis@USPTO.GOV>
Subject: Re: U.S. PATENT AND TRADEMARK OFFICE COMMUNICATION REGARDING U.S. APPLICATION NO. 88508606 (BANDIT)
Dear Shaila,
I am writing to inquire about the recent update on status of my application to: “Application withdrawn by USPTO before publication for further review.” Could you give me any insight on what this means?
Kind regards,
Max
On Thu, Oct 31, 2019 at 6:55 PM Max Crowley <max@thebandit.com> wrote:
Thanks Shaila. Let's proceed with that then: “Mineral water, carbonated nonalcoholic drinks, and syrups for making beverages”
On Thu, Oct 31, 2019 at 5:24 PM Lewis, Shaila E. <Shaila.Lewis@uspto.gov> wrote:
Dear Mr. Crowley,
The wording “Oat-based beverages with milk not for food purposes. Fruit-based soft drinks flavored with tea” is different that what was in the original description because “milk-based” means that the primary ingredient is milk. This type of beverage falls in Class 29. Tea-based beverages have tea as the primary ingredient and are not just flavored with tea. Therefore, the amendment cannot be accepted because tea-based beverages fall in 30.
Goods/services cannot be added to the identification. Therefore, the services in Class 43 cannot be added.
Would you like to proceed with the following description in Class 32: “Mineral water, carbonated nonalcoholic drinks, and syrups for making beverages”?
Kind regards,
Shaila E. Lewis
Trademark Examining Attorney
Law Office 114
(571) 270-1527 (phone)
(571) 270-2527 (fax)
From: Max Crowley <max@thebandit.com>
Sent: Thursday, October 31, 2019 4:46 PM
To: Lewis, Shaila E. <Shaila.Lewis@USPTO.GOV>
Subject: Re: U.S. PATENT AND TRADEMARK OFFICE COMMUNICATION REGARDING U.S. APPLICATION NO. 88508606 (BANDIT)
Sounds good, and thank you again for your help on this. Would this work and is there any way I can add an additional category?
Category 32: Mineral water, carbonated nonalcoholic drinks, and syrups for making beverages. Oat-based beverages with milk not for food purposes. Fruit-based soft drinks flavored with tea.
Category 43: Restaurant and café services; Restaurant services, namely, providing of food and beverages for consumption on and off the premises. Preparation of foods and beverages; carry-out restaurants;
On Thu, Oct 31, 2019 at 4:06 PM Lewis, Shaila E. <Shaila.Lewis@uspto.gov> wrote:
Hi Mr. Crowley,
I am unable to speak on the phone at the moment, but would like to resolve the issue below. Would you like to follow the suggestions below or do you have other suggestions?
Kind regards,
Shaila E. Lewis
Trademark Examining Attorney
Law Office 114
(571) 270-1527 (phone)
(571) 270-2527 (fax)
From: Max Crowley <max@thebandit.com>
Sent: Thursday, October 31, 2019 12:44 PM
To: Lewis, Shaila E. <Shaila.Lewis@USPTO.GOV>
Subject: Re: U.S. PATENT AND TRADEMARK OFFICE COMMUNICATION REGARDING U.S. APPLICATION NO. 88508606 (BANDIT)
Hi Shaila, I just tried calling you. I'm at 847-476-4940 if you get a free minute. Thank you so much!
On Wed, Oct 30, 2019 at 9:46 PM Lewis, Shaila E. <Shaila.Lewis@uspto.gov> wrote:
Dear Mr. Crowley,
Please let me know if you’d like me to make the changes for you.
Kind regards,
Shaila E. Lewis
Trademark Examining Attorney
Law Office 114
(571) 270-1527 (phone)
(571) 270-2527 (fax)
From: Lewis, Shaila E.
Sent: Tuesday, October 29, 2019 10:34 AM
To: Max Crowley <max@thebandit.com>
Cc: Lhodge@mayerbrown.com
Subject: RE: U.S. PATENT AND TRADEMARK OFFICE COMMUNICATION REGARDING U.S. APPLICATION NO. 88508606 (BANDIT)
Mr. Crowley,
I don’t see that you have an attorney of record. Please note that anyone who assists with preparation of your response or files documents with the USPTO must be an attorney or comply with the rules regarding representation.
If you would like to amend the wording “preparations for making beverages, namely, concentrates and extracts used in the preparation of cold brew” to: “preparations for making beverages, namely, concentrates and extracts used in the preparation of cold brewed malt-based beers” and delete the “milk based beverages” and “tea based drinks”, I’d be glad to enter the changes for you and approve the application for publication.
Please let me know as soon as possible.
Kind regards,
Shaila E. Lewis
Trademark Examining Attorney
Law Office 114
(571) 270-1527 (phone)
(571) 270-2527 (fax)
From: Max Crowley <max@thebandit.com>
Sent: Monday, October 28, 2019 10:39 PM
To: Lewis, Shaila E. <Shaila.Lewis@USPTO.GOV>
Cc: Lhodge@mayerbrown.com
Subject: Re: U.S. PATENT AND TRADEMARK OFFICE COMMUNICATION REGARDING U.S. APPLICATION NO. 88508606 (BANDIT)
Hi Shaila,
Thanks for reaching out about this. Can you send me a link where I can make an amendment to this?
Lauren, who is assisting me, is traveling this week so if there’s any way we could extend to next week that would be helpful.
Really appreciate it!
Max
On Fri, Oct 25, 2019 at 8:33 PM Lewis, Shaila E. <Shaila.Lewis@uspto.gov> wrote:
Dear Mr. Crowley,
I am the examining attorney assigned to review the above-referenced trademark application on behalf of the U.S. Patent and Trademark Office. I have reviewed the response to office action filed October 2, 2019, and determined that the following amendments to the identification of goods in Class 32 are required:
The wording “preparations for making beverages, namely, concentrates and extracts used in the preparation of cold brew” must be amended to specify the exact nature of the drinks being prepared. For instance, if accurate, applicant may amend to: “preparations for making beverages, namely, concentrates and extracts used in the preparation of cold brewed malt-based beers”.
Also, the goods “milk based beverages” and “tea based drinks” fall in Classes 29 and 30 and must either be deleted, or the applicant must add these classes to the application and move the goods to their respective classes.
If you would like to delete the “milk based beverages” and “tea based drinks” and make the changes to the preparations for making beverages via examiner's amendment, please let me know on or before October 29, 2019. If you have any questions, feel free to call or email.
Kind regards,
Shaila E. Lewis
Trademark Examining Attorney
Law Office 114
(571) 270-1527 (phone)
(571) 270-2527 (fax)
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