NOTE TO THE FILE
SERIAL NUMBER: 88765771
DATE: 11/06/2020
NAME: msinger
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: rkadden <rkadden@vonmaltitz.com>
Sent: Thursday, November 5, 2020 5:44 PM
To: Singer, Melanie <Melanie.Singer@USPTO.GOV>
Subject: Re: EXAMINER'S AMENDMENT_88765771_VISU360
OK. Please delete the Section 1(b) basis.
Thank you,
Ron Kadden
On 11/5/2020 5:15 PM, Singer, Melanie wrote:
This email is intended for Ronald S. Kadden, as counsel for Carl Zeiss Vision GmbH, or any other authorized party. In reference to the following Trademark Application:
United States Trademark Application Serial No. 88765771
Good afternoon,
I am the examining attorney assigned to the above-referenced file. The application specifies both an intent to use basis under Trademark Act Section 1(b) and reliance on a foreign registration(s) under Section 44(e). See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.34(a)(2)-(3). However, the foreign registration alone may serve as a basis for obtaining a U.S. registration. See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d). If applicant wants to rely solely on the foreign registration under Section 44(e) as the basis, applicant can request deletion of the Section 1(b) basis. See 37 C.F.R. §2.35(b)(1); TMEP §806.04.
Unless applicant indicates otherwise, the USPTO will presume that applicant is relying on both Sections 1(b) and 44(e). Thus, although the mark may be approved for publication, it will not register until an acceptable allegation of use has been filed for the goods and/or services based on Section 1(b).
Please let me know if you wish to delete the 1(b) basis from the application.
With your authorization, I would be happy to enter the suggested change through an examiner’s amendment for you today so that the application may proceed. If you would like for me to make the suggested change, please reply to this email with “OK” by 12 PM EST November 9, 2020.
Please let me know by phone or email if you have any questions about the application. Thank you so much for your prompt cooperation!
Best regards,
Melanie Singer
**************PLEASE BE ADVISED OF THE FOLLOWING*************
Although the USPTO will not accept a formal response by e-mail, an applicant may communicate informally by phone or e-mail with the trademark examining attorney to agree to a proposed amendment to the application that will immediately place the application in condition for publication for opposition, issuance of a registration, or suspension. See 37 C.F.R. §2.62(c); TMEP §707. All relevant e-mail communications will be placed in the official application record.