NOTE TO THE FILE
SERIAL NUMBER: 88642071
DATE: 01/14/2020
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: Griffin, Jim
Sent: Tuesday, January 14, 2020 6:29 PM
To: Osowski, Kaydi <Kaydi.Osowski@viacom.com>
Subject: RE: Couple quick changes for AWESOMENESS FILMS, ser. no. 88642071
I looked into it and I didn’t notice when I sent you the email that the rule was just changed 1/1/2020. But since you filed prior to the implementation date, you’re grandfathered in to the old rule, so I can accept it! Just note that going forward (i.e. in any new applications you file), you’ll have to list the more specific Class 38 or 41 services. We update the ID Manual every January.
Jim
From: Osowski, Kaydi <Kaydi.Osowski@viacom.com>
Sent: Tuesday, January 14, 2020 6:02 PM
To: Griffin, Jim <Jim.Griffin@USPTO.GOV>
Subject: RE: Couple quick changes for AWESOMENESS FILMS, ser. no. 88642071
Hi Jim,
It is ok to disclaim FLIMS, as requested. However, I found a number of live registrations that have “podcasting services” in Class 38. As such, I am hoping you can review some of the registrations I found and accept the identification as is. A sampling of recently issued registration numbers is listed below. I also note that this identification was previously accepted in AwesomenessTV’s prior application for this same mark (Ser. No. 86698875), which Awesomeness filed an SOU for many of the goods and services, but had to refile for these services as it is still working towards offering such services in commerce.
- 5957677
- 5957677
- 5951061
- 5943409
- 5942457
- 5939477
- 5934406
- 5928497
- 5928496
- 5928081
Please let me know if you would like to have a call to discuss in further detail.
Kind regards,
Kaydi
Kaydi Osowski
Counsel, TrademarkViacom International Inc.
O: 212.846.7911 / M: 646.983.6132
kaydi.osowski@viacom.com
1515 Broadway, 33rd Floor
New York, NY 10036
From: Griffin, Jim <Jim.Griffin@USPTO.GOV>
Sent: Tuesday, January 14, 2020 11:22 AM
To: Osowski, Kaydi <Kaydi.Osowski@viacom.com>
Subject: RE: Couple quick changes for AWESOMENESS FILMS, ser. no. 88642071
[EXTERNAL SENDER]
Any decision yet?
From: Osowski, Kaydi <Kaydi.Osowski@viacom.com>
Sent: Friday, January 10, 2020 2:51 PM
To: Griffin, Jim <Jim.Griffin@USPTO.GOV>
Subject: RE: Couple quick changes for AWESOMENESS FILMS, ser. no. 88642071
Thank you for clarifying.
Kaydi Osowski
Counsel, TrademarkViacom International Inc.
O: 212.846.7911 / M: 646.983.6132
kaydi.osowski@viacom.com
1515 Broadway, 33rd Floor
New York, NY 10036
From: Griffin, Jim <Jim.Griffin@USPTO.GOV>
Sent: Friday, January 10, 2020 2:49 PM
To: Osowski, Kaydi <Kaydi.Osowski@viacom.com>
Subject: RE: Couple quick changes for AWESOMENESS FILMS, ser. no. 88642071
[EXTERNAL SENDER]
And I note that I got the podcasting/webcasting discussion backwards. It should have read:
“The second change is a little more complicated. For some reason, “webcasting services” is acceptable wording in Class 38 while “podcasting services” is not. For podcasting, we need to specify “transmission of podcasts” in Class 38. (“Production of podcasts” would be in Class 41.)”
Sorry for the confusion! The suggested ID amendments were correct.
From: Osowski, Kaydi <Kaydi.Osowski@viacom.com>
Sent: Friday, January 10, 2020 2:41 PM
To: Griffin, Jim <Jim.Griffin@USPTO.GOV>
Subject: RE: Couple quick changes for AWESOMENESS FILMS, ser. no. 88642071
Hi Jim,
Thank you for your email. I will discuss this with my team and get back to you shortly.
Kind regards,
Kaydi
Kaydi Osowski
Counsel, TrademarkViacom International Inc.
O: 212.846.7911 / M: 646.983.6132
kaydi.osowski@viacom.com
1515 Broadway, 33rd Floor
New York, NY 10036
From: Griffin, Jim <Jim.Griffin@USPTO.GOV>
Sent: Friday, January 10, 2020 2:39 PM
To: Osowski, Kaydi <Kaydi.Osowski@viacom.com>
Cc: MTVN Trademarks <Trademark@viacom.com>
Subject: Couple quick changes for AWESOMENESS FILMS, ser. no. 88642071
Importance: High
[EXTERNAL SENDER]
Hi Kaydi,
I’m the examiner reviewing this application. It has just two minor changes that need to be made before I can approve it. The first is to disclaim FILMS, which you’ve also done in the applicant’s other application. I can add the disclaimer for you via an examiner’s amendment, and then approve your application for publication. I just need to get your authorization. You can either email me or call me at the number below.
The standard form wording for a disclaimer is: No claim is made to the exclusive right to use “FILMS” apart from the mark as shown.
The second change is a little more complicated. For some reason, “podcasting services” is acceptable wording in Class 38 while “webcasting services” is not. For webcasting, we need to specify “transmission of webcasts” in Class 38. (“Production of webcasts” would be in Class 41.) So with your permission, I’ll amend the ID to read:
Webcasting services and transmission of podcasts (Class 38).
If those two changes acceptable, please let me know and I’ll make both of them for you and get this approved for publication. If the applicant wants to add Production of podcasts in Class 41, you can pay the second filing fee ($275) here: http://teas.gov.uspto.report/office/pra/, and click “yes” for number 6.
Regards,
Jim Griffin
James T. Griffin
Examining Attorney, Law Office 103
United States Patent & Trademark Office
571-272-9169