NOTE TO THE FILE
SERIAL NUMBER: 88615647
DATE: 12/20/2019
NAME: ahayes
NOTE:
Searched:
X Google
Lexis/Nexis
X 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:From: Lindsey Olson Diefenbach <lolson@mandourlaw.com>
Sent: Tuesday, December 17, 2019 2:51 PM
To: Hayes, Ashley <Ashley.Hayes@USPTO.GOV>
Cc: Joseph A. Mandour <jmandour@mandourlaw.com>
Subject: RE: US Trademark Application Nos. 88689874 (GLOBAL M3), 88689876 (GLOBAL M4), 88689881 (GLOBAL R3AIR), 88692096 (Global R4AIR), 88692102 (Global V6AIR), and 88708463 (GLOBAL M4HSD)
Hello Ashley:
We have heard back from our client on this and he would like to enter section 2(f) claims of acquired distinctiveness based on use for the trademarks that have been in use for the past five years or more, namely, GLOBAL M3, GLOBAL M4, GLOBAL R3AIR, and GLOBAL M4HSD. If you need to issue Priority Actions on those for us to do that, please proceed.
For GLOBAL R4AIR and GLOBAL V6AIR our client would like to consent to the disclaimers of “GLOBAL”.
Should you need anything further from us, please feel free to contact me.
Best Regards,
Lindsey
Lindsey Olson Diefenbach, Esq.
Mandour & Associates, APC - Intellectual Property Law
12121 Wilshire Boulevard, Suite 810
Los Angeles, California 90025
T: 310-656-3900
***********************************************************************
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From: Hayes, Ashley <Ashley.Hayes@USPTO.GOV>
Sent: Tuesday, December 17, 2019 9:54 AM
To: Lindsey Olson Diefenbach <lolson@mandourlaw.com>
Subject: RE: US Trademark Application Nos. 88689874 (GLOBAL M3), 88689876 (GLOBAL M4), 88689881 (GLOBAL R3AIR), 88692096 (Global R4AIR), 88692102 (Global V6AIR), and 88708463 (GLOBAL M4HSD)
Thank you. I am due to take action on these applications by close of business Thursday. To the extent you are able to obtain a response before then, that would be appreciated.
Ashley D. Hayes
Examining Attorney, Law Office 108
United States Patent & Trademark Office
(571) 272-2826
From: Lindsey Olson Diefenbach <lolson@mandourlaw.com>
Sent: Tuesday, December 17, 2019 12:52 PM
To: Hayes, Ashley <Ashley.Hayes@USPTO.GOV>
Cc: Joseph A. Mandour <jmandour@mandourlaw.com>
Subject: RE: US Trademark Application Nos. 88689874 (GLOBAL M3), 88689876 (GLOBAL M4), 88689881 (GLOBAL R3AIR), 88692096 (Global R4AIR), 88692102 (Global V6AIR), and 88708463 (GLOBAL M4HSD)
Hello Ashley:
We have reached out to our client on this and will be in touch as soon as we have their response, thanks.
Best Regards,
Lindsey
Lindsey Olson Diefenbach, Esq.
Mandour & Associates, APC - Intellectual Property Law
12121 Wilshire Boulevard, Suite 810
Los Angeles, California 90025
T: 310-656-3900
***********************************************************************
CONFIDENTIAL COMMUNICATION: This message is for the sole use of the
intended recipient and may contain confidential and privileged information. Any unauthorized
review or distribution is prohibited. If you are not the intended recipient, please contact the sender
by reply email and destroy all copies of the original message.
************************************************************************
From: Hayes, Ashley <Ashley.Hayes@USPTO.GOV>
Sent: Monday, December 16, 2019 10:08 AM
To: Joseph A. Mandour <jmandour@mandourlaw.com>
Cc: Lindsey Olson Diefenbach <lolson@mandourlaw.com>
Subject: US Trademark Application Nos. 88689874 (GLOBAL M3), 88689876 (GLOBAL M4), 88689881 (GLOBAL R3AIR), 88692096 (Global R4AIR), 88692102 (Global V6AIR), and 88708463 (GLOBAL M4HSD)
Mr. Mandour,
I am the examining attorney assigned to handle these applications. I have reviewed the applications and am pleased to advise that substantively, the applications look good. However, a disclaimer is needed for the term GLOBAL in the marks because it is descriptive in the context of the applications goods, which are available worldwide. The disclaimer would read as follows:
• No claim is made to the exclusive right to use “GLOBAL” apart from the mark as shown.
With your authorization, I could add the disclaimer statement to the record for each application via an Examiner’s Amendment, obviating the need for a formal Office action and placing the applications in order for final review for publication.
Alternatively, if applicant can claim acquired distinctiveness as to GLOBAL based on long use of that word as a mark, and applicant would prefer to submit a section 2(f) claim of acquired distinctiveness, I can issue Priority Actions for the applications, in response to which you can assert the section 2(f) claim.
Please advise as to how your client would like to proceed.
As a courtesy, please note that I have also examined application No. 88615647 for the standard character mark GLOBAL. I will need to issue an office action on that application refusing registration under Trademark Act 2(e)(1) because it is merely descriptive for the reasons set forth above.
Thank you.
Ashley D. Hayes
Examining Attorney, Law Office 108
United States Patent & Trademark Office
(571) 272-2826