NOTE TO THE FILE
SERIAL NUMBER: 88592664
DATE: 10/23/2019
NAME: mdall
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
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:X OTHER:
From: Lott, Maureen D.
Sent: Tuesday, October 22, 2019 10:36 AM
To: Suzann Moskowitz <suzann@themoskowitzfirm.com>
Subject: RE: U.S. Trademark Application Serial No. 88592664 - FEEL THE STORY - 262
Looking forward to talking to you at 11. I will await your call.
Sincerely,
/Maureen/
Maureen Dall Lott
Trademark Examining Attorney, Law Office 105
U.S. Patent and Trademark Office
571-272-9714
From: Suzann Moskowitz <suzann@themoskowitzfirm.com>
Sent: Monday, October 21, 2019 5:05 PM
To: Lott, Maureen D. <Maureen.Lott@USPTO.GOV>
Subject: Re: U.S. Trademark Application Serial No. 88592664 - FEEL THE STORY - 262
11 am Tuesday would be best for me. I'll try you then. Thank you.
Suzann Moskowitz
The Moskowitz Firm®www.themoskowitzfirm.com
CONFIDENTIAL COMMUNICATION
PRIVILEGED WORK PRODUCT
This email is not and does not contain, and should not be construed to be or contain, a legal opinion. Please delete this message if you are not the intended recipient.
On Mon, Oct 21, 2019 at 1:38 PM Lott, Maureen D. <Maureen.Lott@uspto.gov> wrote:
Hi Suzann,
Sorry for the delay. Unfortunately, I’ve been plagued with computer problems this morning.
I would be happy to chat now. I will be around until 3. Then I have a meeting.
I’ll also be in tomorrow. If you’d like we could talk around 11 am or 11:30 am Eastern time tomorrow if that works.
Sincerely,
/Maureen/
Maureen Dall Lott
Trademark Examining Attorney, Law Office 105
U.S. Patent and Trademark Office
571-272-9714
From: Suzann Moskowitz <suzann@themoskowitzfirm.com>
Sent: Monday, October 21, 2019 10:42 AM
To: Lott, Maureen D. <Maureen.Lott@USPTO.GOV>
Subject: Re: U.S. Trademark Application Serial No. 88592664 - FEEL THE STORY - 262
Thanks. Do you have a few minutes to speak today?
Best,
Suzann
Suzann Moskowitz
The Moskowitz Firm®www.themoskowitzfirm.com
CONFIDENTIAL COMMUNICATION
PRIVILEGED WORK PRODUCT
This email is not and does not contain, and should not be construed to be or contain, a legal opinion. Please delete this message if you are not the intended recipient.
On Fri, Oct 18, 2019 at 1:52 PM Lott, Maureen D. <Maureen.Lott@uspto.gov> wrote:
Hi Suzanne,
With regard, to Class 9:
The image below is small and I can’t see a download button/link. Perhaps a larger image would help. Regarding the specimen submitted or the one below, if there is something on the specimen that one may click to download items, then you could simply provide an explanation in your response. We would just need that explanation in the record. It is often the case that the word “download” is not used when providing the link to download. In that case, we just need more information in the record describing how what we see in the specimen enables a consumer to download an item.
With regard to Class 38:
Thank you for the reminder below. As you may recall, the issue here had to do with what the specimen showed. It was clear that applicant was a CONTENT provider or publisher, i.e., that applicant provided and published podcasts (the providing of podcast, TV shows, radio programs, and similar online audio-visual shows are services in Class 41; similarly publishing services are in Class 41). What wasn’t clear from the specimen was that applicant was separately providing telecommunication services for the benefit of others, i.e., the services that do the transmitting or the broadcasting for others. It appeared from the specimen that, at best, iTunes® or Apple® was doing that.
Please also keep in mind that, to be a service under the Trademark Act: (1) a service must be a real activity; (2) a service must be performed to the order of, or for the benefit of, someone other than the applicant; and (3) the activity performed must be qualitatively different from anything necessarily done in connection with the sale of the applicant’s goods or the performance of another service. See TMEP Section 1301.01(a).
I hope that helps!
/Maureen/
Maureen Dall Lott
Trademark Examining Attorney, Law Office 105
U.S. Patent and Trademark Office
571-272-9714
From: Suzann Moskowitz <suzann@themoskowitzfirm.com>
Sent: Friday, October 18, 2019 1:24 PM
To: Lott, Maureen D. <Maureen.Lott@USPTO.GOV>
Subject: Re: U.S. Trademark Application Serial No. 88592664 - FEEL THE STORY - 262
Thanks, Maureen.
On the downloadable issue, I'd like to discuss what was already submitted but also offer something like the attached image, noting that there are many plugins to download Facebook videos (e.g. http://fbdownloader.net/) . I'd also like to discuss Class 38, noting the Nice Agreement description of the class as:
Class 38
Telecommunications.
Explanatory note
Class 38 includes mainly services allowing at least one person to communicate with another by a sensory means. Such services include those which:
1. allow one person to talk to another,
2. transmit messages from one person to another, and
3. place a person in oral or visual communication with another (radio and television).
This Class includes, in particular: services which consist essentially of the diffusion of radio or television programmes.
Best,
Suzann
Suzann Moskowitz
The Moskowitz Firm®www.themoskowitzfirm.com
CONFIDENTIAL COMMUNICATION
PRIVILEGED WORK PRODUCT
This email is not and does not contain, and should not be construed to be or contain, a legal opinion. Please delete this message if you are not the intended recipient.
On Fri, Oct 18, 2019 at 1:03 PM Lott, Maureen D. <Maureen.Lott@uspto.gov> wrote:
Hi Suzann,
Sorry for the delay in responding. I’ve been in and out.
I will be around until 2pm Eastern time; then back for a bit after 4 pm (I’m on the West Coast). I’ll also be around Monday. If that works better, would you like to call me at 11 am Eastern time (8 am my time)? Just let me know.
Also please note that if you have potential substitute specimen, you could just e-mail me a copy if you would like me to give an informal opinion before you formally submit it.
Sincerely,
/Maureen/
Maureen Dall Lott
Trademark Examining Attorney, Law Office 105
U.S. Patent and Trademark Office
571-272-9714
From: Suzann Moskowitz <suzann@themoskowitzfirm.com>
Sent: Wednesday, October 16, 2019 11:22 AM
To: Lott, Maureen D. <Maureen.Lott@USPTO.GOV>
Subject: Fwd: U.S. Trademark Application Serial No. 88592664 - FEEL THE STORY - 262
Ms. Lott,
Can we arrange a time this week to discuss acceptable specimens for the OA?
Best,
Suzann
Suzann Moskowitz
The Moskowitz Firm®www.themoskowitzfirm.com
CONFIDENTIAL COMMUNICATION
PRIVILEGED WORK PRODUCT
This email is not and does not contain, and should not be construed to be or contain, a legal opinion. Please delete this message if you are not the intended recipient.
---------- Forwarded message ---------
From: ecom105 <ecom1053@uspto.gov>
Date: Fri, Oct 11, 2019 at 6:44 PM
Subject: U.S. Trademark Application Serial No. 88592664 - FEEL THE STORY - 262
To: suzann@themoskowitzfirm.com <suzann@themoskowitzfirm.com>
United States Patent and Trademark Office (USPTO)
USPTO OFFICIAL NOTICE
Office Action (Official Letter) has issued
on October 11, 2019 for
U.S. Trademark Application Serial No. 88592664
Your trademark application has been reviewed by a trademark examining attorney. As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned. Please follow the steps below.
(2) Direct questions about the contents of the Office action to the assigned attorney below.
Lott, Maureen D.
Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).
(3) Respond within 6 months (or earlier, if required in the Office action) from October 11, 2019, using the Trademark Electronic Application System (TEAS). The response must be received by the USPTO before midnight Eastern Time of the last day of the response period. See the Office action for more information about how to respond.
GENERAL GUIDANCE
· Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.
· Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.
· Beware of misleading notices sent by private companies about your application. Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees. All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”