NOTE TO THE FILE
SERIAL NUMBER: 88601861
DATE: 11/21/2019
NAME: jgriffin
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 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
Changed TRADEUPS to:X OTHER:
From: Smouse, Charles <Charles.Smouse@uhsinc.com>
Sent: Thursday, November 21, 2019 4:57 PM
To: Griffin, Jim <Jim.Griffin@USPTO.GOV>
Cc: Esch, Carolyn <Carolyn.Esch@uhsinc.com>
Subject: RE: DOVER BEHAVIORAL HEALTH SYSTEM marks, ser. nos. 88601861 and 88615522
Jim, the changes below are acceptable, pls proceed.
Thank you.
Charles Smouse | Associate General Counsel | charles.smouse@uhsinc.com | Office (610) 382-3385
Universal Health Services, Inc. | UHS of Delaware, Inc. | 367 South Gulph Road, King of Prussia, PA 19406 | www.uhsinc.com
From: Griffin, Jim <Jim.Griffin@USPTO.GOV>
Sent: Thursday, November 21, 2019 1:30 PM
To: Smouse, Charles <Charles.Smouse@uhsinc.com>
Cc: Esch, Carolyn <Carolyn.Esch@uhsinc.com>
Subject: [External] DOVER BEHAVIORAL HEALTH SYSTEM marks, ser. nos. 88601861 and 88615522
Importance: High
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Hi Charles,
Two more done. These are both for DOVER BEHAVIORAL HEALTH SYSTEM.
Ser. no. 88615522 is for the wording in standard characters. This application is based on use and has all of the wording in the mark ("DOVER BEHAVIORAL HEALTH SYSTEM") disclaimed. We don’t allow applicants to disclaim all of the wording in a mark since it would leave nothing to actually be registered. But all of this wording is descriptive, as you no doubt realized when you disclaimed it. DOVER is where the services are rendered, and BEHAVIORAL HEALTH SYSTEM is generic. What we can do with this one is amend to the Supplemental Register and just disclaim BEHAVIORAL HEALTH SYSTEM and let DOVER carry it on the Supp.
Ser. no. 88601861 is the version with the cupola design and was filed ITU, but with no disclaimer. This one does need the descriptive wording DOVER BEHAVIORAL HEALTH SYSTEM disclaimed. The design can carry the mark on the Principal Register.
Please let me know if these changes are acceptable.
James T. Griffin
Examining Attorney, Law Office 103
United States Patent & Trademark Office
571-272-9169