Notation to File

NOTE TO THE FILE

SERIAL NUMBER:            88601030

DATE:                                12/09/2019

NAME:                               jobrien2

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       X   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:

     OTHER:

Dear Jennifer:

All of these changes are acceptable to the applicant. Will an Office Action be issued soon on the configurations so that we may repair the drawings?

Kind regards,

Amy

 

 

	Amy B. Goldsmith | Partner D: 212-216-1135 | F: 212-216-8001 agoldsmith@tarterkrinsky.com | Bio
	Tarter Krinsky & Drogin LLP 1350 Broadway | New York | NY | 10018 www.tarterkrinsky.com

 

From: O'Brien, Jennifer <Jennifer.O'Brien@USPTO.GOV>
Sent: Monday, December 9, 2019 1:44 PM
To: Amy B. Goldsmith <agoldsmith@tarterkrinsky.com>
Subject: [EXT] MA Trademark Application No. 88601015 and Marla Aaron No. 88601030
Importance: High

 

Good Afternoon,

I am the examining attorney for MA Trademark Application No. 88601015 and Marla Aaron No. 88601030. There are a few issues with the applications which I believe can be resolved via an examiner’s amendment.

 

 

MA Trademark Application No. 88601015

 

The wording in Class 035 must be clarified that these are types of “retail store services” and “on-line retail store services”. The following is suggested:

 

Class 035: Retail stores services featuring jewelry and on-line retail store services featuring jewelry

 

 

Marla Aaron No. 88601030

 

The wording in Class 035 must be clarified that these are “on-line retail store services”. The following is suggested:

 

Class 035: Retail store services featuring jewelry and on-line retail store services featuring jewelry

 

Further, a name consent statement is required as an applicant does not have to submit a new consent if a consent to register is already part of the record in the file of a valid registration for a mark comprised in whole or in part of the same name, portrait, or signature for the same goods and/or services, or such goods and/or services as would encompass those in the subsequent application. See In re McKee Baking Co., 218 USPQ 287, 288 (TTAB 1983) . In this situation, the applicant only has to: (1) claim ownership of that existing registration; and (2) advise the examining attorney that the consent is of record therein. If the applicant provides the information that the consent is of record in the claimed registration by telephone or e-mail, the examining attorney must enter an appropriate Note to the File in the record. The examining attorney must ensure that the consent statement is entered into the Trademark database. TMEP 1206.04c

 

Therefore, if Applicant claims ownership of U.S. Reg. Nos. 5104873, 4939976, and 4939974, I will go ahead and enter those registrations and indicate that the consent is of record and enter the statement “The name(s), portrait(s), and/or signature(s) shown in the mark identifies "MARLA AARON," whose consent(s) to register is made of record.”

 

Additionally, the mark description does not indicate the literal element of the mark as it is presented and the following is suggested:

 

            The mark consists of the wording “MARLA AARON” in a stylized font, where the letter L of the word MARLA forms the cross bar of the letter A and the first bar of the second letter A in the word AARON has a curved bottom bar.

 

 

Please let me know if these changes are acceptable and I will enter them via an examiner’s amendment so the applications can proceed forward. Additionally, the remaining co-pends of the configurations have issues regarding the drawings which will require office actions.

 

Thank you,

 

 

Jennifer O’Brien, Esq.

United States Patent and Trademark Office

Trademark Examining Attorney

571-272-4579

Jennifer.O’Brien@uspto.gov