NOTE TO THE FILE
SERIAL NUMBER: 88582261
DATE: 02/11/2020
NAME: kschwarz
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:
X 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
X Changed TRADEUPS to: amend identification and add disclaimerX OTHER:
From: Suzanna M. Morales <smmorales@powleygibson.com>
Sent: Tuesday, February 11, 2020 1:56 PM
To: Schwarz, Kathleen <Kathleen.Schwarz@USPTO.GOV>
Cc: Keith E. Sharkin <kesharkin@powleygibson.com>
Subject: RE: Application Ser. Nos. 88582293, 88582261 (our refs. 621.109(US), 621.110(US))
Dear Ms. Schwarz,
I’m writing further to our conversation yesterday regarding the above-referenced applications.
Please proceed with the proposed amendment to the identification in Class 42:
Testing, analysis, and evaluation of the knowledge, skills and abilities of others to determine conformity with certification standards in the field of business management
In addition, our client accepts the disclaimer of CERTIFIED PROFESSIONAL IN MANAGEMENT.
Please do not hesitate to contact us with any questions. We understand you should be able to enter examiner’s amendments, but please let me know if you need us to file responses instead.
Best,
Suzanna M. M. Morales
Of Counsel
POWLEY & GIBSON, p.c.
60 Hudson Street
Suite 2203
New York, New York 10013
p (212) 226 – 5054
f (212) 226 – 5085
This email message and any attachments are intended for the use of the addressee(s) indicated above. Information that is privileged or otherwise confidential may be contained herein. Unintended transmission shall not constitute waiver of the attorney-client privilege or any other privilege. If you are not the intended recipient(s), you are hereby notified that any dissemination, review or use of this message, documents or information contained therein is strictly prohibited. If you have received this message in error, please immediately delete it and notify us by telephone at (212) 226-5054. Thank you.
From: Schwarz, Kathleen <Kathleen.Schwarz@USPTO.GOV>
Sent: Friday, February 7, 2020 4:28 PM
To: Suzanna M. Morales <smmorales@powleygibson.com>
Subject: RE: Application Ser. Nos. 88582293, 88582261 (our refs. 621.109(US), 621.110(US))
Ms. Morales:
I will be in-office on Monday and Tuesday, and am available to discuss the applications any time after 11am.
Best Regards,
Kathleen Schwarz
/Kathleen H. Schwarz/
Trademark Examining Attorney
Law Office 123
U.S. Patent and Trademark Office
Tel: 571-272-2460
From: Suzanna M. Morales <smmorales@powleygibson.com>
Sent: Friday, February 7, 2020 10:30 AM
To: Schwarz, Kathleen <Kathleen.Schwarz@USPTO.GOV>
Subject: RE: Application Ser. Nos. 88582293, 88582261 (our refs. 621.109(US), 621.110(US))
Good morning, Ms. Schwarz,
Would you have a few minutes today or early next week for a quick phone call on the above-referenced applications?
Thank you,
Suzanna M. M. Morales
Of Counsel
POWLEY & GIBSON, p.c.
60 Hudson Street
Suite 2203
New York, New York 10013
p (212) 226 – 5054
f (212) 226 – 5085
This email message and any attachments are intended for the use of the addressee(s) indicated above. Information that is privileged or otherwise confidential may be contained herein. Unintended transmission shall not constitute waiver of the attorney-client privilege or any other privilege. If you are not the intended recipient(s), you are hereby notified that any dissemination, review or use of this message, documents or information contained therein is strictly prohibited. If you have received this message in error, please immediately delete it and notify us by telephone at (212) 226-5054. Thank you.
From: Schwarz, Kathleen <Kathleen.Schwarz@USPTO.GOV>
Sent: Tuesday, January 28, 2020 3:35 PM
To: Suzanna M. Morales <smmorales@powleygibson.com>
Subject: RE: Application Ser. Nos. 88582293, 88582261 (our refs. 621.109(US), 621.110(US))
Dear Ms. Morales:
I spoke today with my management team, who confirmed the position that the stated purpose of the Class 42 testing and analysis services in Application Serial Nos. 88582293 and 88582261 (identifying and recognizing individuals who have attained qualifications and expertise) suggests that applicant is certifying individuals who have successfully achieved knowledge or skills rather than determining their conformity (and, by extension, potential non-conformity) with certification standards. The difference between these purposes, while subtle, forms the differentiation between testing and certification; the former is intended to deliver a pass/fail assessment while the latter is performed to recognizing and hold out to consumers only those who have passed testing or have attained qualifications and expertise in a particular field. The Note associated with similar services in the USPTO Identification Manual may be of use in applicant’s further amendments and reads as follows:
“On 10-01-2015, this 10-08-2009 entry was modified by deleting “for the purpose of certification” and inserting “to determine conformity with certification standards” to clarify the nature of the services. Although these testing, analysis, and evaluation services may be rendered by a certifying body, “certification,” or the validation or approval of goods/services of others, is not a service under the Nice Classification. Also, this description should not be used in connection with certification marks, which are used by third parties to indicate that their goods/services are “certified” or approved by the certifying body. See TMEP §1306.06 et seq.”
I am available via telephone or email should you have any further questions regarding the most recent Office Actions or wish to discuss their contents further.
Best Regards,
Kathleen Schwarz
/Kathleen H. Schwarz/
Trademark Examining Attorney
Law Office 123
U.S. Patent and Trademark Office
Tel: 571-272-2460
From: Suzanna M. Morales <smmorales@powleygibson.com>
Sent: Friday, January 24, 2020 5:23 PM
To: Schwarz, Kathleen <Kathleen.Schwarz@USPTO.GOV>
Cc: Keith E. Sharkin <kesharkin@powleygibson.com>
Subject: RE: Application Ser. Nos. 88582293, 88582261 (our refs. 621.109(US), 621.110(US))
Dear Ms. Schwarz,
I’m writing to follow up on our conversation earlier this week regarding the proposed amendment to the above-referenced applications. We look forward to hearing from you further on the nature of the marks.
Thank you,
Suzanna M. M. Morales
Of Counsel
POWLEY & GIBSON, p.c.
60 Hudson Street
Suite 2203
New York, New York 10013
p (212) 226 – 5054
f (212) 226 – 5085
This email message and any attachments are intended for the use of the addressee(s) indicated above. Information that is privileged or otherwise confidential may be contained herein. Unintended transmission shall not constitute waiver of the attorney-client privilege or any other privilege. If you are not the intended recipient(s), you are hereby notified that any dissemination, review or use of this message, documents or information contained therein is strictly prohibited. If you have received this message in error, please immediately delete it and notify us by telephone at (212) 226-5054. Thank you.
From: Suzanna M. Morales <smmorales@powleygibson.com>
Sent: Tuesday, January 21, 2020 10:16 AM
To: Schwarz, Kathleen <Kathleen.Schwarz@USPTO.GOV>
Cc: Keith E. Sharkin <kesharkin@powleygibson.com>
Subject: RE: Application Ser. Nos. 88582293, 88582261 (our refs. 621.109(US), 621.110(US))
Dear Ms. Schwarz,
I’m writing to follow up on my email below regarding the above-referenced applications. I look forward to hearing from you on whether you would have time this week to discuss.
Thanks very much,
Suzanna M. M. Morales
Of Counsel
POWLEY & GIBSON, p.c.
60 Hudson Street
Suite 2203
New York, New York 10013
p (212) 226 – 5054
f (212) 226 – 5085
This email message and any attachments are intended for the use of the addressee(s) indicated above. Information that is privileged or otherwise confidential may be contained herein. Unintended transmission shall not constitute waiver of the attorney-client privilege or any other privilege. If you are not the intended recipient(s), you are hereby notified that any dissemination, review or use of this message, documents or information contained therein is strictly prohibited. If you have received this message in error, please immediately delete it and notify us by telephone at (212) 226-5054. Thank you.
From: Suzanna M. Morales <smmorales@powleygibson.com>
Sent: Tuesday, January 14, 2020 11:30 AM
To: Schwarz, Kathleen <Kathleen.Schwarz@USPTO.GOV>
Cc: Keith E. Sharkin <kesharkin@powleygibson.com>
Subject: Application Ser. Nos. 88582293, 88582261 (our refs. 621.109(US), 621.110(US))
Dear Ms. Schwarz,
We have received the January 9 office actions regarding the above-referenced applications for and .
Would you have time in the next few days for a brief call to discuss these matters? I should be fairly flexible this Wednesday through Friday after 10AM, as well as next Wednesday or Thursday. Please let me know if there is a time that would work for you.
Thank you,
Suzi
Suzanna M. M. Morales
Of Counsel
POWLEY & GIBSON, p.c.
60 Hudson Street
Suite 2203
New York, New York 10013
p (212) 226 – 5054
f (212) 226 – 5085
This email message and any attachments are intended for the use of the addressee(s) indicated above. Information that is privileged or otherwise confidential may be contained herein. Unintended transmission shall not constitute waiver of the attorney-client privilege or any other privilege. If you are not the intended recipient(s), you are hereby notified that any dissemination, review or use of this message, documents or information contained therein is strictly prohibited. If you have received this message in error, please immediately delete it and notify us by telephone at (212) 226-5054. Thank you.