NOTE TO THE FILE
SERIAL NUMBER: 88776182
DATE: 08/03/2020
NAME: mbeggs
NOTE:
Discussed file with
Attorney/Applicant via:
X phone Left message with
X email Attorney/ApplicantRequested Law Library search X Issued Examiner’s Amendment
for: and entered changes in TRADEUPSFrom: Salpi Dunlap <cognitoconsultinginc@gmail.com>
Sent: Thursday, July 30, 2020 5:49 PM
To: Beggs, Monica <Monica.Beggs@USPTO.GOV>
Subject: Re: Case IDs: 88776115, 88757362, 88776182
Hi Monica,
Let’s go with your original ID suggestion. Please let me know if you need anything from me to move forward.
Many thanks,
Salpi Dunlap
Cognito Consulting, Inc.
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On Jul 29, 2020, at 1:11 PM, Beggs, Monica <Monica.Beggs@USPTO.GOV> wrote:
Hi Salpi,
Cited Registration No. 5141079 includes “Microscopes and parts thereof” in its identification of goods. Marketplace evidence indicates that the same companies that make microscopes and parts thereof also make telescopes, binoculars, and children’s microscopes and telescopes, for example:
· http://www.amscope.com/ (AmScope brand microscopes, toy microscopes, toy telescopes, telescopes);
· http://www.celestron.com/ (Celestron brand microscopes, toy microscopes, telescopes, binoculars);
· http://explorescientificusa.com/collections/vendors?q=Explore%20One (Explore One brand microscopes, toy microscopes, telescopes, binoculars);
· http://explorescientificusa.com/collections/vendors?q=Discovery (Discovery brand microscopes, toy microscopes, telescopes, binoculars);
· http://carson.com/ (Carson brand microscopes, telescopes, binoculars).
Additionally, the mark in the registration, BLUE MARBLE PRODUCTS, is nearly identical to the applied-for marks. Based on the strong similarity between the marks, I would have to maintain the Section 2(d) refusal for the goods in the application that are related to the goods in the registration, namely applicant’s “binoculars, telescopes” and “toy telescopes, toy microscopes.”
Accordingly, I can make the changes to the ID discussed in the previous emails (keeping binoculars and telescopes in IC 9 and toy telescopes and toy microscopes in IC 28); however, I would have to maintain the partial 2(d) refusal as to “binoculars, telescopes” and “toy telescopes, toy microscopes.” If I maintain the refusal, you will have an opportunity to present arguments and evidence against the refusal. Alternatively, since the refusal would be a partial refusal, deletion of the relevant goods would obviate the refusal.
Best,
Monica L. Beggs
Examining Attorney, Law Office 105
U.S. Patent & Trademark Office
Phone: (571) 272-6614
From: Salpi Dunlap <cognitoconsultinginc@gmail.com>
Sent: Monday, July 27, 2020 10:38 PM
To: Beggs, Monica <Monica.Beggs@USPTO.GOV>
Subject: Re: Case IDs: 88776115, 88757362, 88776182
Hi Monica,
Thank you for sending the ID amendments. If we can keep binoculars and telescopes in IC 9 (since they are not laboratory equipment as mentioned in the Office Action) as well as keeping toy telescopes and toy microscopes in IC 28 (again, since they are not lab equipment), then the rest of the amendments are ok.
Thanks,
Salpi Dunlap
Cognito Consulting, Inc.
CONFIDENTIAL COMMUNICATION: This email message and any attached files may contain privileged and/or confidential information and are solely intended for the addressee(s) named above. Any storage, dissemination, copying, or use of this email message and/or attachments without the express written authorization of the sender is strictly prohibited. If you are not the intended recipient, please immediately notify the sender by reply email and delete or destroy any copy of this email message and any attachments.
On Jul 10, 2020, at 12:43 PM, Beggs, Monica <Monica.Beggs@USPTO.GOV> wrote:
Hi Salpi,
As we discussed, here are the proposed acceptable ID amendments I drafted taking into consideration the issues in the office action and your comments:
International Class 7: Rock tumblers in the nature of power-operated polishers for rocks; lapidary equipment, namely, stone cutting machines.
*International Class 9: Metal detectors.
International Class 11: Electric grills with an integrated heat source for use when camping; portable lights, namely, headlamps, portable utility lights; water filtration apparatus in the form of pens; water filters.
International Class 16: Arts and craft paint kits; Children's arts and crafts paper kits.
International Class 19: Play sand; rock collections in the nature of non-precious stones for ornamental use.
*International Class 20: Birdhouses.
International Class 28: Plastic molded toy figures for teaching STEM principles to children; educational toys in the nature of geode kits, mining kits, and dig kits, all consisting primarily of toy tools and geodes; toy drones, toy robots, free-flowing play gel; infant development toys, namely, early education foam toys, toy foam blocks, and magnetic toy foam blocks; wooden building kits consisting primarily of wooden toy building blocks; plastic building kits consisting primarily of plastic toy building blocks; toy wooden construction sets, plastic toy construction sets; toy model volcano experiment kits; children’s educational toys in the areas of STEM, namely, toy models and toy blocks; children’s science experiment plant and flower growing kits comprised primarily of seeds and peat pots for teaching STEM principles to children, excluding eggplant; children’s science experiment crystal growing kits comprised primarily of crystal seeds and test tubes for teaching STEM principles to children.
International Class 31: Plant and flower growing kits composed primarily of seeds and also including peat pots and peat pellets; all of the foregoing excluding eggplant.
(International Class 21)
(International Class 24)
As I mentioned, this comes to a total of 8 classes; however, your filing fees currently only cover 6 classes. Accordingly, if you would like to adopt all of the above changes, you will be required to pay the additional filing fee for the added classes. Alternatively, you can limit the amendment to only 6 of the above suggested classes, and then no further filing fees would be needed.
Please review the changes and let me know if you have any concerns or counter-suggestions. I’m also attaching my notes, in case it’s helpful for you to see why I suggested deleting some of the original identified goods.
You can still file a response with arguments against the refusals in the Office action, if you would like. Alternatively, let me know if you would like to adopt the suggested changes and I can enter the ID amendments via Examiner’s Amendment. If you decide you would like to add any classes, I can also enter the changes via Examiner’s Amendment and issue a Priority Action with the filing fee requirement.
Best,
Monica L. Beggs
Examining Attorney, Law Office 105
U.S. Patent & Trademark Office
Phone: (571) 272-6614