NOTE TO THE FILE
Sent to TICRS as Serial Number: 88632606SERIAL NUMBER: 88632851
DATE: 01/03/2020
NAME: dciurpita
NOTE:
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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
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about misclassified definite ID
Changed TRADEUPS to:Hi Drew,
Thanks for the quick response.
The amendments you propose for Ser. Nos. 88632770 NEWTON, 88632851 NEWTON A LA CARTE, & 88632874 NEWTON WORLD are acceptable for both Class 9 and Class 42. Regarding the submission of fees for the additional class, will I be directed to pay this online after you make the examiner’s amendment?
The disclaimer for Ser. Nos. 88632897 & 88632915 NEWTON PAY is also acceptable.
Best,
Lauren
Lauren Sabella
Attorney
Bilzin Sumberg Baena Price & Axelrod LLP
1450 Brickell Avenue, 23rd Floor
Miami, Florida 33131
www.bilzin.comTel 305.375.6145
Direct Fax 305.351.2289
lsabella@bilzin.com
From: Ciurpita, Drew <Drew.Ciurpita@USPTO.GOV>
Sent: Friday, January 3, 2020 4:44 PM
To: Lauren Sabella <lsabella@bilzin.com>
Cc: Jose Sariego <jsariego@bilzin.com>
Subject: RE: United States Trademark Application Serial Nos. 88632606, 88632770, 88632805, 88632842, 88632851, 88632868, 88632874, 88632885, 88632897, & 88632915 (NEWTON marks) [IWOV-MIAMI.FID1362890]
Hi Lauren,
If it is acceptable, I can amend the identification for Ser. Nos. 88632770 NEWTON, 88632851 NEWTON A LA CARTE, & 88632874 NEWTON WORLD to:
International Class 9: Downloadable software for making reservations and booking services, namely, event reservations, restaurant, bar and club reservations, and travel-related reservations
International Class 42: Providing on-line non-downloadable software for making reservations and booking services, namely, event reservations, restaurant, bar and club reservations, and travel-related reservations
This can be done by examiner’s amendment/priority action that will include multiple-class application requirements such as submitting a fee for the additional class.
As for Ser. Nos. 88632897 & 88632915 NEWTON PAY, the wording “PAY” needs to be disclaimed. If you agree, I can make the modification by examiner’s amendment as well.
Please let me know if the above mentioned disclaimer statements and identification amendments are acceptable or if you have any questions about the application.
Best,
Drew
From: Lauren Sabella <lsabella@bilzin.com>
Sent: Friday, January 3, 2020 4:32 PM
To: Ciurpita, Drew <Drew.Ciurpita@USPTO.GOV>
Cc: Jose Sariego <jsariego@bilzin.com>
Subject: RE: United States Trademark Application Serial Nos. 88632606, 88632770, 88632805, 88632842, 88632851, 88632868, 88632874, 88632885, 88632897, & 88632915 (NEWTON marks) [IWOV-MIAMI.FID1362890]
Hi Drew,
I can now confirm that the disclaimer statements and amendments to the identification of services are acceptable for the following:
· International Class 041:
o 88632606 NEWTON,
o 88632868 NEWTON WORLD, &
o 88632897 NEWTON PAY
· International Class 043:
o 88632805 NEWTON,
o 88632842 NEWTON A LA CARTE,
o 88632885 NEWTON WORLD, &
o 88632915 NEWTON PAY
However, regarding 88632770 NEWTON, 88632851 NEWTON A LA CARTE, & 88632874 NEWTON WORLD in International Class 042, our client also intends to offer downloadable applications for iPhone, iPad and Android, which I understand would fall into Class 009, rather than Class 042.
Would it be possible to bifurcate the existing Class 042 applications to cover both Class 042 and Class 009 by paying an additional fee? If so, the Class 009 description would read:
“Providing downloadable software for making reservations and booking services, namely, event reservations, restaurant, bar and club reservations, and travel-related reservations”
Unless we need to be more specific, in which case we could use “Providing downloadable software for mobile devices for making reservations and booking services, namely, event reservations, restaurant, bar and club reservations, and travel-related reservations”.
Please let me know the best way to proceed regarding International Class 042, and if you need anything further from me regarding the applications in Class 041 and Class 043.
Best,
Lauren
Lauren Sabella
Attorney
Bilzin Sumberg Baena Price & Axelrod LLP
1450 Brickell Avenue, 23rd Floor
Miami, Florida 33131
www.bilzin.comTel 305.375.6145
Direct Fax 305.351.2289
lsabella@bilzin.com
From: Ciurpita, Drew <Drew.Ciurpita@USPTO.GOV>
Sent: Tuesday, December 31, 2019 1:09 PM
To: Lauren Sabella <lsabella@bilzin.com>
Cc: Jose Sariego <jsariego@bilzin.com>
Subject: United States Trademark Application Serial Nos. 88632606, 88632770, 88632805, 88632842, 88632851, 88632868, 88632874, 88632885, 88632897, & 88632915 (NEWTON marks)
This email is intended for Lauren Sabella and/or any authorized party
United States Trademark Application Serial Nos. 88632606, 88632770, 88632805, 88632842, 88632851, 88632868, 88632874, 88632885, 88632897, & 88632915 (NEWTON marks)
Dear Lauren Sabella,
I am the assigned trademark examining attorney for the above-referenced application. The application should be ready to proceed once applicant agrees to modify the identification of services for each of the applications and to disclaim the wording “PAY” in Ser. Nos. 88632897 & 88632915 NEWTON PAY. If the changes below are acceptable, I will issue an examiner's amendment accordingly:
88632606 NEWTON, 88632868 NEWTON WORLD, & 88632897 NEWTON PAY
International Class 41: Entertainment services, namely, ticket reservation and booking services for entertainment, sporting and cultural events
88632770 NEWTON, 88632851 NEWTON A LA CARTE, & 88632874 NEWTON WORLD
International Class 42: Providing on-line non-downloadable software for making reservations and booking services, namely, event reservations, restaurant, bar and club reservations, and travel-related reservations
88632805 NEWTON, 88632842 NEWTON A LA CARTE, 88632885 NEWTON WORLD, & 88632915 NEWTON PAY
International Class 43: Food services, namely, making reservations and booking for restaurants and bars and night club reservation services in the nature of arranging for cocktails and table service reservations at night clubs and nightclub events
Please let me know by phone or email if you agree to the disclaimer statements and amendments to the identification of services or if you have any questions about the application.
Kind regards,
Drew Ciurpita
Examining Attorney, Law Office 114
United States Patent and Trademark Office
571-272-8002