NOTE TO THE FILE
SERIAL NUMBER: 88786425
DATE: 09/24/2020
NAME: apollack
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:
X 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:From: Charlene.Azema <Charlene.Azema@knobbe.com>
Sent: Thursday, September 24, 2020 1:30 PM
To: Pollack, Alison <Alison.Pollack@USPTO.GOV>
Cc: hard1m.190t.kmob@iwcs.kmob.com
Subject: RE: USPTO Examiner's Amendment for JH and design, Serial Number 88786425
Hi Alison,
I heard back from my client. Please see the proposed changes below to the ID of goods.
For Class 42, there is an amendment slightly different than what you proposed: instead of amending “exterior design” to “exterior architectural design,” we amended to “exterior home design and exterior color design”.
If no further changes, then please enter the EA.
Thanks!
Charlene
Class 2: Paints; coatings, namely, stains, primers, paint sealers, varnishes, clear finishes, and colored stains for exterior and interior use on a variety of substrates; paints, primers, paint sealers, coatings in the nature of stains and clear finishes, and colored coatings in the nature of stains, all for non-metal building materials and fiber cement materials; paints, primers, paint sealers, coatings in the nature of stains and clear finishes, all pre-applied on building and construction products
Class 35: Advertising, marketing and promotion services; promoting the sale of building and construction products through the distribution of printed promotional materials of others, by providing hypertext links to the websites of others, namely, of dealers, suppliers and distributors of building and construction products, by preparation of custom advertisements and custom promotional products for others in the nature of branded apparel, and by providing sales promotion consultation to others; advertising, marketing, and promotional services in the nature of providing an online website portal that connects buyer customers to the seller services of others; electronic commerce services, namely, providing information online about products and services for advertising and sales purposes; business advisory services and consultancy related to the selection and purchase of goods; online retail store services featuring building and construction materials, apparel, banners, signage, and custom-made marketing and promotional goods for businesses; providing cooperative advertising and marketing services for suppliers and distributors of building and construction products, for contractor services, and for home and commercial construction services; providing an online commercial information directory on the internet consisting of advertisements and marketing information for use by dealers, suppliers, distributors and installers of building and construction products; providing consumer information in the field of building and construction provided online; online ordering services, namely, providing a website for builders, contractors and construction sales professionals for placing orders and tracking the status of orders in the field of building and construction products and materials and tools; conducting incentive award programs for customers and employees to promote excellent service and performance in the fields of contracting and home and commercial construction; conducting incentive award programs to promote the sale of building and construction products
materials; providing incentive awards programs for commercial, promotional, andand/oradvertising purposes in the nature of providing preferred customers and member businesses with additional features and benefits through affiliation with a preferred program; membership club services, namely, providing on-line information to member businesses of a membership club in the fields of advertising and marketing and business development in the nature of business growth and sales generation, and providing advertising services for member businesses on distribution lists and websites; providing consumer product information services provided via customer support services and help desk services regarding the selection and purchase of building and construction materials; business consulting services for contractors and builders, namely, one-on-one business support services provided via telephone or online; providing consumer product information via the internet to customers regarding selection, purchase and installation of building and construction products; business support services in the nature of business operation consulting services related to building and construction products and services; providing business information to businesses within a membership club in the field of advertising and marketing, business growth, sales generation, and providing advertising services for member businesses on distribution lists, websites and social media; providing business consulting services to professionals in the building and construction industry relating to color analysis, color coordination and color selection for paints and for building and construction products; promoting the goods and services of others by means of a preferred customer program that provides customers with benefits and warranties for the purchase of building and construction products; home warranty services, namely, arranging for repairs and replacement of home building products and home exteriors provided by others pursuant to service agreements
Class 37: Building construction, remodeling and repair; construction planning services; installation services for wallboards, siding, roofing, and walls; consultation in the field of construction, maintenance and renovation of real property; consultation in the field of installation, maintenance, and repair of wallboards, siding, roofing, and walls; maintenance and renovation of real property; providing an internet website that features information on building construction, construction planning, and building renovation; building construction information provided online; providing construction information to member businesses in a membership club, namely, regarding installation best practices for home and commercial contracting and construction services; customer support services for dealers, distributors, builders and other trade professionals for answering questions related to product information, product installation, and providing installation guidance and support services in the field of building and construction, all being technical advice related to the installation and
carerepair of building and construction products; customer support services for dealers, distributors, builders and other trade professionals in the nature of providing information in the field of installation of building and construction productsmaterials; technical customer support services in the nature of help desk services, namely, providing technical advice related to the installation of building and construction products; customer support services and help desk services, namely, providing information about the installation of building construction productsmaterials; providing information to customers regarding the installation of building and construction products; technical support services, namely, troubleshooting and technical consultation related to the installation of building and construction products
Class 42: Platform as a service (PAAS) featuring computer software platforms for users to manage products and online purchases for their customers, to compare costs, to prepare budgets and to prepare cost reports; platform as a service (PAAS) services featuring computer software platforms for users to access information about fiber cement products, to create cost estimates for product purchases, to manage online product sales on a project-by-project basis, to manage inventory of goods on a project-by-project basis, and to provide users with software for billing purposes; software as a service (SAAS) services featuring software for creating 3D images, artwork and designs; software as a service (SAAS) services featuring software that connects customers to product distributors; software as a service (SAAS) services featuring software that allows users to track product purchases and to calculate cost estimates for product purchases; architectural design, interior design, exterior home design, and exterior color design advisory and consultancy services, namely, color analysis for the purpose of interior and exterior design, providing a means of color coordinating building and construction materials, and providing color analysis for the design of cladding, siding, trim, panels and boards for building and construction; providing an online interactive website portal featuring technology that allows customers to place orders, view order status and manage orders, check and compare pricing of materials, access educational videos and materials in the fields of building and construction, access instructional videos and materials in the fields of building and construction, and contact customer service representatives; providing a website featuring information in the field of home and building architectural design, interior design, exterior architectural design, and architecture; providing a website featuring technology that enables users to place and track orders for builders, contractors and construction sales professionals; providing an online website portal featuring technology that allows customers to place orders, view order status and manage orders, check and compare pricing of materials, access educational videos and materials in the fields of building and construction, to access instructional videos and materials in the fields of building and construction, and contact customer service representatives; software as a service (SAAS) featuring software for managing and calculating construction takeoff; software as a service (SAAS) featuring software for quantifying the volume of construction materials required from construction project measurements and from blueprints; software as a service (SAAS) featuring software for the construction industry for preparing bids; software as a service (SAAS) services featuring software for construction project management; software as a service (SAAS) services featuring software for providing digital estimations of measurements from blueprints; software as a service (SAAS) services featuring software for creating digital plans and allowing users to view and share digital plans; providing a website featuring interior design information on colors, paints, color analysis, color coordination, and color selection
Charlene Azema
Partner
949-721-5332 Direct
Knobbe Martens
2040 Main St., 14th Fl.
Irvine, CA 92614
From: Pollack, Alison <Alison.Pollack@USPTO.GOV>
Sent: Tuesday, September 22, 2020 1:32 PM
To: Charlene.Azema <Charlene.Azema@knobbe.com>
Subject: RE: USPTO Examiner's Amendment for JH and design, Serial Number 88786425
Hi Charlene, that’s ok. Thanks.
Alison F. Pollack
Trademark Examining Attorney
Law Office 106
U.S. Patent and Trademark Office
Tel. (571) 272-4592
From: Charlene.Azema <Charlene.Azema@knobbe.com>
Sent: Tuesday, September 22, 2020 4:28 PM
To: Pollack, Alison <Alison.Pollack@USPTO.GOV>
Subject: RE: USPTO Examiner's Amendment for JH and design, Serial Number 88786425
Hi there! The business is just checking on the Class 42 proposed addition since it changes the meaning a little bit.
When do you need to enter the EA by? I expect to have a response from the business no later than Friday. Does that work?
Thanks!
Charlene
Charlene Azema
Partner
949-721-5332 Direct
Knobbe Martens
2040 Main St., 14th Fl.
Irvine, CA 92614
From: Pollack, Alison <Alison.Pollack@USPTO.GOV>
Sent: Tuesday, September 22, 2020 12:25 PM
To: Charlene.Azema <Charlene.Azema@knobbe.com>
Subject: RE: USPTO Examiner's Amendment for JH and design, Serial Number 88786425
Hi Charlene,
Any update? Thanks.
Alison F. Pollack
Trademark Examining Attorney
Law Office 106
U.S. Patent and Trademark Office
Tel. (571) 272-4592
From: Pollack, Alison
Sent: Friday, September 18, 2020 4:09 PM
To: Charlene.Azema <Charlene.Azema@knobbe.com>
Subject: RE: USPTO Examiner's Amendment for JH and design, Serial Number 88786425
Thanks!
Alison F. Pollack
Trademark Examining Attorney
Law Office 106
U.S. Patent and Trademark Office
Tel. (571) 272-4592
From: Charlene.Azema <Charlene.Azema@knobbe.com>
Sent: Friday, September 18, 2020 4:08 PM
To: Pollack, Alison <Alison.Pollack@USPTO.GOV>
Cc: Betty.DeLaTorre <Betty.DeLaTorre@knobbe.com>
Subject: RE: USPTO Examiner's Amendment for JH and design, Serial Number 88786425
Hi Ms. Pollack,
Thanks for this. I will review this with the client and get back to you asap.
Have a great weekend.
Thanks!
Charlene
Charlene Azema
Partner
949-721-5332 Direct
Knobbe Martens
2040 Main St., 14th Fl.
Irvine, CA 92614
From: Pollack, Alison <Alison.Pollack@USPTO.GOV>
Sent: Friday, September 18, 2020 7:52 AM
To: efiling <efiling@knobbe.com>
Subject: USPTO Examiner's Amendment for JH and design, Serial Number 88786425
Dear Ms. Azema,
I am writing in regard to your client’s trademark application for the mark JH and design, Serial Number 88786425. I am the Trademark Examining Attorney assigned randomly to your client’s trademark application.
Most of the information in your client’s response is acceptable. Please see the minor ID issues below. The wording in International Classes 006, 007, 008, 017 and 019 is acceptable as written.
Applicant may adopt the following identification, if accurate:
“Paints; coatings, namely, stains, primers, paint sealers, varnishes, clear finishes, and colored stains for exterior and interior use on a variety of substrates; paints, primers, paint sealers, coatings in the nature of stains AND clear finishes {Based on the way the ID is currently worded it does not seem that clear finishes are a type of coatings. If you tweak it as I suggest I think it’s acceptable} and colored coatings in the nature of stains ALL for non-metal building materials and fiber cement materials; paints, primers, paint sealers, coatings in the nature of stains {delete comma} and clear finishes {Based on the way the ID is currently worded it does not seem that clear finishes are a type of coatings. If you tweak it as I suggest I think it’s acceptable}, ALL pre-applied on building and construction products” in International Class 002.
“Advertising, marketing and promotion services; promoting the sale of building and construction products through the distribution of printed promotional materials of others, by providing hypertext links to the websites of others, namely, of dealers, suppliers and distributors of building and construction products, by preparation of custom advertisements and custom promotional products for others in the nature of branded apparel, and by providing sales promotion consultation to others; advertising, marketing, and promotional services in the nature of providing an online website portal that connects buyer customers to the seller services of others; electronic commerce services, namely, providing information online about products and services for advertising and sales purposes; business advisory services and consultancy related to the selection and purchase of goods; online retail store services featuring building and construction materials, apparel, banners, signage, and custom-made marketing and promotional goods for businesses; providing cooperative advertising and marketing services for suppliers and distributors of building and construction products, for contractor services, and for home and commercial construction services; providing an online commercial information directory on the internet consisting of advertisements and marketing information for use by dealers, suppliers, distributors and installers of building and construction products; providing consumer information in the field of building and construction provided online; online ordering services, namely, providing a website for builders, contractors and construction sales professionals for placing orders and tracking the status of orders in the field of building and construction products and materials and tools; conducting incentive award programs for customers and employees to promote excellent service and performance in the fields of contracting and home and commercial construction; conducting incentive award programs to promote the sale of building and construction PRODUCTS
materials; providing incentive awards programs for commercial, promotional, ANDand/oradvertising purposes in the nature of providing preferred customers and member businesses with additional features and benefits through affiliation with a preferred program; membership club services, namely, providing on-line information to member businesses of a membership club in the fields of advertising and marketing and business development in the nature of business growth and sales generation, and providing advertising services for member businesses on distribution lists and websites; providing consumer product information services provided via customer support services and help desk services regarding the selection and purchase of building and construction materials; business consulting services for contractors and builders, namely, one-on-one business support services provided via telephone or online; providing consumer product information via the internet to customers regarding selection, purchase and installation of building and construction products; business support services in the nature of business operation consulting services related to building and construction products and services; providing business information to businesses within a membership club in the field of advertising and marketing, business growth, sales generation, and providing advertising services for member businesses on distribution lists, websites and social media; providing business consulting services to professionals in the building and construction industry relating to color analysis, color coordination and color selection for paints and for building and construction products; promoting the goods and services of others by means of a preferred customer program that provides customers with benefits and warranties for the purchase of building and construction products; home warranty services, namely, arranging for repairs and replacement of home building products and home exteriors provided by others pursuant to service agreements” in International Class 035.
“Building construction, remodeling and repair; construction planning services; installation services for wallboards, siding, roofing, and walls; consultation in the field of construction, maintenance and renovation of real property; consultation in the field of installation, maintenance, and repair of wallboards, siding, roofing, and walls; maintenance and renovation of real property; providing an internet website that features information on building construction, construction planning, and building renovation; building construction information provided online; providing construction information to member businesses in a membership club, namely, regarding installation best practices for home and commercial contracting and construction services; customer support services for dealers, distributors, builders and other trade professionals for answering questions related to product information, product installation, and providing installation guidance and support services in the field of building and construction, all being technical advice related to the installation and
careREPAIR of building and construction products; customer support services for dealers, distributors, builders and other trade professionals in the nature of providing information in the field of installation of building and construction PRODUCTSmaterials; technical customer support services in the nature of help desk services, namely, providing technical advice related to the installation of building and construction products; customer support services and help desk services, namely, providing information about the installation of building construction PRODUCTSmaterials; providing information to customers regarding the installation of building and construction products; technical support services, namely, troubleshooting and technical consultation related to the installation of building and construction products” in International Class 037.
“Platform as a service (PAAS) featuring computer software platforms for users to manage products and online purchases for their customers, to compare costs, to prepare budgets and to prepare cost reports; platform as a service (PAAS) services featuring computer software platforms for users to access information about fiber cement products, to create cost estimates for product purchases, to manage online product sales on a project-by-project basis, to manage inventory of goods on a project-by-project basis, and to provide users with software for billing purposes; software as a service (SAAS) services featuring software for creating 3D images, artwork and designs; software as a service (SAAS) services featuring software that connects customers to product distributors; software as a service (SAAS) services featuring software that allows users to track product purchases and to calculate cost estimates for product purchases; architectural design, interior design, and exterior ARCHITECTURAL design advisory and consultancy services, namely, color analysis for the purpose of interior and exterior design, providing a means of color coordinating building and construction materials, and providing color analysis for the design of cladding, siding, trim, panels and boards for building and construction; providing an online interactive website portal featuring technology that allows customers to place orders, view order status and manage orders, check and compare pricing of materials, access educational videos and materials in the fields of building and construction, access instructional videos and materials in the fields of building and construction, and contact customer service representatives; providing a website featuring information in the field of home and building architectural design, interior design, exterior architectural design, and architecture; providing a website featuring technology that enables users to place and track orders for builders, contractors and construction sales professionals; providing an online website portal featuring technology that allows customers to place orders, view order status and manage orders, check and compare pricing of materials, access educational videos and materials in the fields of building and construction, to access instructional videos and materials in the fields of building and construction, and contact customer service representatives; software as a service (SAAS) featuring software for managing and calculating construction takeoff; software as a service (SAAS) featuring software for quantifying the volume of construction materials required from construction project measurements and from blueprints; software as a service (SAAS) featuring software for the construction industry for preparing bids; software as a service (SAAS) services featuring software for construction project management; software as a service (SAAS) services featuring software for providing digital estimations of measurements from blueprints; software as a service (SAAS) services featuring software for creating digital plans and allowing users to view and share digital plans; providing a website featuring interior design information on colors, paints, color analysis, color coordination, and color selection” in International Class 042.
I would appreciate it if you would please respond with your authorization as soon as possible to resolve this matter promptly. After receipt of your authorization, I will issue an examiner’s amendment and approve the mark for publication.
Please feel free to call me with any questions. I look forward to hearing from you.
Best,
Alison Pollack
Alison F. Pollack
Trademark Examining Attorney
Law Office 106
U.S. Patent and Trademark Office
Tel. (571) 272-4592