NOTE TO THE FILE
Sent to TICRS as Serial Number: 88836894SERIAL NUMBER: 88838811
DATE: 06/08/2020
NAME: dciurpita
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:Dear Examiner Ciurpita:
We can agree to the disclaimers for the mark MITE PURE and the mark PERFORMANCE PLUS. We look forward to those marks passing to publication. Thank you.
CL COMFORT LAB: We respectfully submit that a disclaimer of the entire phrase COMFORT LAB is not warranted. Please consider that our client has an approved application for the mark COMFORT LAB in class 24 (88252596), wherein no disclaimer was required (we understand other cases are not binding, but we believe this is persuasive). Also, it is our position that COMFORT LAB is a unique and suggestive phrase, but it is not merely descriptive, and does NOT immediately convey the characteristics of the masks and gowns for the current application. Further, the mark COMFORTLAB in class 24 was applied for in January 2019 by a third party and received an office action not requiring a disclaimer (see application 88246744, now dead). Finally, there is no evidence we are aware of showing that the unique phrase COMFORT LAB is used in the market or by the public as a merely descriptive phrase for such goods.
Given the foregoing various reasons, we respectfully request that the disclaimer requirement for the phrase COMFORT LAB be withdrawn.
Thank you.
Sincerely Yours,
Joseph E. Sutton, Esq.
Sutton IP Associates, P.A.
900 U.S. Hwy. 9 -Suite 201
Woodbridge, N.J. 07095
ph 732-634-3520
fax 732-634-3511
New York Office: (send mail to NJ)
15 West 37th St., 11th Floor
New York, NY 10018
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From: Ciurpita, Drew <Drew.Ciurpita@USPTO.GOV>
Sent: Monday, June 08, 2020 4:51 PM
To: trademarks@ezrasutton.com
Subject: United States Trademark Application Serial Nos. 88836894 MITE PURE, 88838811 PERFORMANCE PLUS, & 88900842 CL COMFORT LAB
This email is intended for Joseph Sutton and/or any authorized party
United States Trademark Application Serial Nos. 88836894 MITE PURE, 88838811 PERFORMANCE PLUS, & 88900842 CL COMFORT LAB
Dear Mr. Sutton,
I am the assigned trademark examining attorney for the above-referenced applications. There is one issue that I believe we can resolve via email or phone—specifically, disclaimer of the descriptive wording in the marks. If you agree to the following disclaimers, I can modify the application via examiner’s amendment:
88836894 MITE PURE
No claim is made to the exclusive right to use “MITE” apart from the mark as shown.
88838811 PERFORMANCE PLUS
No claim is made to the exclusive right to use “PERFORMANCE” apart from the mark as shown.
88900842 CL COMFORT LAB
No claim is made to the exclusive right to use “COMFORT LAB” apart from the mark as shown.
Please let me know by phone or email if you agree to allow me to correct the above by an examiner's amendment or if you have any questions about the application.
Kind regards,
Drew Ciurpita
Examining Attorney, Law Office 114
United States Patent and Trademark Office
571-272-8002