NOTE TO THE FILE
SERIAL NUMBER: 88622409
DATE: 12/18/2019
NAME: lshinn
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:
From: SchlossD@gtlaw.com <SchlossD@gtlaw.com>
Sent: Wednesday, December 18, 2019 4:11 PM
To: Shinn, Lauren <Lauren.Shinn@USPTO.GOV>; BIANCOC@gtlaw.com; akersb@gtlaw.com
Subject: RE: USPTO Trademark Application Ser. No. 88622409 SAMSUNG
Ms. Shinn –
The statement is acceptable and may be entered via an Examiner’s Amendment. Thank you.
Daniel I. Schloss
Greenberg Traurig, LLP | MetLife Building | 200 Park Avenue, 38th Floor | New York, NY 10166
Tel 212.801.2256 | Fax 212.805.5571SchlossD@gtlaw.com | www.gtlaw.com
From: Shinn, Lauren [mailto:Lauren.Shinn@USPTO.GOV]
Sent: Wednesday, December 18, 2019 3:32 PM
To: Schloss, Daniel I. (OfCnsl-NY-WCO-IP-Tech) <SchlossD@gtlaw.com>; Bianco, Christopher (BStf-NY-IP-Tech) <BIANCOC@gtlaw.com>; Akers, Beth (BStf-NY-IP-Tech) <akersb@gtlaw.com>; NYTMDKT <NYTMDKT@gtlaw.com>
Subject: RE: USPTO Trademark Application Ser. No. 88622409 SAMSUNG
My apologies, the statement should say: “Applicant has had a bona fide and effective industrial or commercial establishment in the European Union as of the date of issuance of the foreign registration.”
From: Shinn, Lauren
Sent: Wednesday, December 18, 2019 3:30 PM
To: SchlossD@gtlaw.com; BIANCOC@gtlaw.com; akersb@gtlaw.com; NYTMDKT@gtlaw.com
Subject: RE: USPTO Trademark Application Ser. No. 88622409 SAMSUNG
Dear Mr. Schloss,
Thank you for your quick reply.
I also noticed that the application has a Section 44(e) basis with an EUIPO registration. Because the applicant is domiciled in the Republic of Korea (and thus a country different from the country that issued the foreign registration), the applicant must establish that, as of the date of issuance of the foreign registration, the country that issued the foreign registration is also applicant’s country of origin. See 15 U.S.C. §1126(c); TMEP §1002.04.
To overcome this refusal, applicant may provide the following written statement for the record: “Applicant has had a bona fide and effective industrial or commercial establishment in Europe as of the date of issuance of the foreign registration.”
Kindly let me know whether I may enter the above statement for the record by Examiner’s Amendment.
Thank you,
Lauren
From: SchlossD@gtlaw.com <SchlossD@gtlaw.com>
Sent: Wednesday, December 18, 2019 3:01 PM
To: Shinn, Lauren <Lauren.Shinn@USPTO.GOV>; BIANCOC@gtlaw.com; akersb@gtlaw.com; NYTMDKT@gtlaw.com
Subject: RE: USPTO Trademark Application Ser. No. 88622409 SAMSUNG
Ms. Shinn –
New York does not have bar numbers. See below from : http://ww2.nycourts.gov/attorneys/registration/faqs.shtml :
What is my New York Bar number?
Many states have Bar numbers; New York does not. The registration number, which appears on the biennial registration form, is used for internal Office of Court Administration record-keeping only.
Daniel I. Schloss
Greenberg Traurig, LLP | MetLife Building | 200 Park Avenue, 38th Floor | New York, NY 10166
Tel 212.801.2256 | Fax 212.805.5571SchlossD@gtlaw.com | www.gtlaw.com
From: Shinn, Lauren [mailto:Lauren.Shinn@USPTO.GOV]
Sent: Wednesday, December 18, 2019 2:58 PM
To: Schloss, Daniel I. (OfCnsl-NY-WCO-IP-Tech) <SchlossD@gtlaw.com>; Bianco, Christopher (BStf-NY-IP-Tech) <BIANCOC@gtlaw.com>; Akers, Beth (BStf-NY-IP-Tech) <akersb@gtlaw.com>; NYTMDKT <NYTMDKT@gtlaw.com>
Subject: USPTO Trademark Application Ser. No. 88622409 SAMSUNG
*EXTERNAL TO GT*
Dear Mr. Schloss,
I am the trademark examining attorney assigned to the above-cited case.
In reviewing the application, I noticed that you listed “N/A” as your attorney bar membership number. However, upon review of the New York State Unified Court System, it appears that your attorney bar membership number might be ********.
Could you (or any other attorney working on this matter) please confirm whether “********” is your attorney bar membership number? And if it is, may I also have permission to add this to the record via Examiner’s Amendment?
Thank you,
Lauren
Lauren D. Shinn
Trademark Examining Attorney
Law Office 128
(571) 270-5230
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