Notation to File

RIDICULOUSLY PRACTICAL

Friedman, Michael

RE: U.S. Trademark Application Nos. 88611973,

NOTE TO THE FILE

SERIAL NUMBER: 88597885

DATE:    11/19/2019

NAME: lberns

NOTE:

Searched:
     Google
     Lexis/Nexis
     OneLook
     Wikipedia
     Acronym Finder                         Protest evidence reviewed
     Other:

Checked:
     Geographic significance
     Surname
     Translation
     ID with ID/CLASS mailbox

     Checked list of approved Canadian attorneys and agents

Discussed file with
Attorney/Applicant via:
        phone                               Left message with
    X   email                               Attorney/Applicant

     Requested Law Library search           Issued Examiner’s Amendment
     for:                                   and entered changes in TRADEUPS

        PRINT        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: Berns, Lee-Anne
Sent: Tuesday, November 19, 2019 4:04 PM
To: Michael Friedman <westaops@gmail.com>
Subject: RE: U.S. Trademark Application Nos. 88611973, 88615310 + 88647077 + 88597885

Thank you.

I will issue the Examiner’s Amendment entering the disclaimer and the amendment to the identification of goods as discussed below.

Regards,

Lee-Anne Berns

From: Michael Friedman <westaops@gmail.com>
Sent: Tuesday, November 19, 2019 3:37 PM
To: Berns, Lee-Anne <Lee-Anne.Berns@USPTO.GOV>
Subject: Re: U.S. Trademark Application Nos. 88611973, 88615310 + 88647077 + 88597885

Yes, please enter the disclaimer.

On Mon, Nov 18, 2019 at 6:14 AM Berns, Lee-Anne <Lee-Anne.Berns@uspto.gov> wrote:

Michael,

Thank you for the reply.

The term “PRACTICAL” in the applied-for mark “RIDICULOUSLY PRACTICAL” (Serial No. 88597885) is descriptive and must be disclaimed because it describes the utility of the goods- phone cases. Wording that merely describes features of applicant’s goods must be disclaimed. A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance (i.e., the term remains in the mark) .

I can enter the disclaimer of “PRACTICAL” via an Examiner’s Amendment.

The disclaimer must be submitted in the following format:

“No claim is made to the exclusive right to use “PRACTICAL” apart from the mark as shown.”

Please let me know if I can enter the disclaimer via Examiner’s Amendment. Otherwise, I will issue an Office Action with the disclaimer requirement.

Thank you.

Regards,

Lee-Anne Berns

From: Michael Friedman <westaops@gmail.com>
Sent: Saturday, November 16, 2019 1:07 PM
To: Berns, Lee-Anne <Lee-Anne.Berns@USPTO.GOV>
Subject: Re: U.S. Trademark Application Nos. 88611973, 88615310 + 88647077 + 88597885

Yes, please proceed with the same amendment for application No. 88597885.

Thanks again,

Michael

On Fri, Nov 15, 2019 at 11:58 AM Berns, Lee-Anne <Lee-Anne.Berns@uspto.gov> wrote:

Thank you Mr. Friedman,

I am also reviewing U.S. Trademark Application No. 88597885, for the mark “Ridiculously Practical”.

There is the same issue with the identification of goods as specified below.

I can enter the same changes via Examiner’s Amendment for application No. 88597885. Please confirm.

Regards,

Lee-Anne Berns

From: Michael Friedman <westaops@gmail.com>
Sent: Thursday, November 14, 2019 9:08 PM
To: Berns, Lee-Anne <Lee-Anne.Berns@USPTO.GOV>
Subject: Re: U.S. Trademark Application Nos. 88611973, 88615310 + 88647077

Hi Lee-Anne. Thanks for reviewing my application. Kyle Pendergrass and I agree you have proposed a sensible modification. Therefore, I approve the proposed amendments to the identification of goods in Class 009.

I also see you recommended the same amendments in the office action for my application number 88597949. If it is efficient to do so, I approve of the amendments for that application as well. I also see the Likelihood of Confusion Refusal. I will investigate this issue further before deciding how to respond.

On Thu, Nov 14, 2019 at 5:11 PM Berns, Lee-Anne <Lee-Anne.Berns@uspto.gov> wrote:

Dear Mr. Friedman,

I am the trademark examining attorney reviewing the above referenced applications.

The wording “kickstands for personal electronic devices” in the identification of goods is indefinite and must be clarified.

Applicant must clarify that the kickstands are a component of, or adapted for, cases for personal electronic devices.

“Clips for personal electronic devices” must be clarified as “belt clips”.

“Grips for personal electronic device” should be further clarified, such as “hand grips”.

Please let me know if the following proposed amendments to the identification of goods in Class 009 is acceptable:

International Class 009: “Cases for personal electronic devices, namely, cell phones and tablet computers; belt clips for personal electronic devices, namely, cell phones and tablet computers; Mounts for personal electronic devices, namely, cell phones and tablet computers; kickstands adapted for cases for personal electronic devices, namely, cell phones and tablet computers; Stands for handheld digital electronic devices, namely, cell phones and tablet computers; hand grips for personal electronic devices, namely, cell phones and tablet computers; Wireless charging pads for smartphones”.

If acceptable, I can enter the changes via Examiner’s Amendment for the three applications referenced above.

Regards,

Lee-Anne Berns

Trademark Examining Attorney

Law Office 118

United States Patent & Trademark Office

(571) 2721168