NOTE TO THE FILE
SERIAL NUMBER: 88636602
DATE: 01/03/2020
NAME: dfathy
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
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:X OTHER:
From: Meddings, Lori S. <Lori.Meddings@quarles.com>
Sent: Friday, January 3, 2020 12:30 PM
To: Fathy, Dominic <Dominic.Fathy@USPTO.GOV>
Subject: RE: BOBCAT TM applications (TM Ser. Nos. 88636592 and 88636602) [QBLLP-ACTIVE.FID40234646]
Dear Dominic,
Thank you for your communication below. Yes, we are agreeable to claiming the prior registrations noted. I look forward to receiving the priority action for the remaining amendments.
Kind regards,
Lori
Lori S. Meddings / Partner
Lori.Meddings@quarles.com / LinkedIn BIO vCard
Quarles & Brady LLP
33 East Main Street, Suite 900 / Madison, WI 53703-3095
Office 608-283-2653 / Cell 608-630-1623 / quarles.com
Assistant Tim Storniolo 608-283-2493
From: Fathy, Dominic <Dominic.Fathy@USPTO.GOV>
Sent: Friday, January 3, 2020 10:31 AM
To: Meddings, Lori S. (MAD x2653) <Lori.Meddings@quarles.com>
Cc: tm-dept <tm-dept@quarles.com>
Subject: BOBCAT TM applications (TM Ser. Nos. 88636592 and 88636602)
Hello Ms. Meddings,
I am the USPTO trademark examining attorney handling two BOBCAT trademark applications for your client Clark Equipment Company having U.S. Ser. Nos. 88636592 and 88636602. As is often the case with multi-class applications, there are clarifications that are required. I am happy to help to resolve these issues with you.
I am writing today to seek your authorization in adding a claim of ownership of your client’s prior registrations by examiner’s amendment. The applications contain specimens of use for 4 of the 13. These specimens could be perceived as ornamental use, however, this is not an issue if the prior registrations shows “secondary source.” Therefore I would like to add a claim of ownership to “U.S. Reg. Nos. 1677100, 4267606, 4776982, and others.” As to the identification of goods and services, I will issue a Priority Office action so that you may review and consider my proposed amendments.
If you would kindly reply to this email or telephone me with authorization for the claim of ownership of the prior registration, I will issue an examiner’s amendment / priority action. If you find that you would like to informally resolve the ID issues in the future, feel free to contact me.
Thank you,
Dominic
______________________________
Dominic Fathy
Trademark Examining Attorney
Law Office 104
(571) 272-8801
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