NOTE TO THE FILE
SERIAL NUMBER: 88844407
DATE: 06/18/2020
NAME: jhan6
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:From: Jarrett, Bonnie <Bonnie.Jarrett@nfl.com>
Sent: Thursday, June 18, 2020 2:59 PM
To: Han, Joanna <Joanna.Han@USPTO.GOV>; Wygand, Nancy <Nancy.Wygand@NFL.com>
Subject: RE: Mark: LA; Serial Number: 88844407
Hi Ms. Han – I approve the below amendment.
Thank you,
Bonnie
Bonnie L. Jarrett
Intellectual Property Counsel
NATIONAL FOOTBALL LEAGUE
P: 212-450-2201
From: Han, Joanna <Joanna.Han@USPTO.GOV>
Sent: Thursday, June 18, 2020 2:41 PM
To: Wygand, Nancy <Nancy.Wygand@NFL.com>
Cc: Jarrett, Bonnie <Bonnie.Jarrett@nfl.com>
Subject: RE: Mark: LA; Serial Number: 88844407
Hi Nancy,
Initially, I thought you were also an attorney in the office, so I didn’t raise this issue. I need the approval directly from Bonnie Jarrett for the below amendment for me to move forward with the Examiner’s Amendment.
Thank you,
From: Wygand, Nancy <Nancy.Wygand@NFL.com>
Sent: Thursday, June 18, 2020 1:31 PM
To: Han, Joanna <Joanna.Han@USPTO.GOV>
Cc: Jarrett, Bonnie <Bonnie.Jarrett@nfl.com>
Subject: RE: Mark: LA; Serial Number: 88844407
Hi Examiner Han.
Many thanks for your email. We hope you are doing well.
We agree to the amendments to our application, as well as the disclaimer that you request.
With this response, we are hopeful that this application will be accepted for publication.
I have copied in my colleague and attorney of record here to confirm.
Thanks and kind regards,
Nancy Wygand
Nancy Wygand
Director, Trademark & Brand Enforcement
National Football League
345 Park Avenue
New York, NY 10154
P: (212) 450-2551| F: (212) 847-1904
E: nancy.wygand@nfl.com
From: Han, Joanna <Joanna.Han@USPTO.GOV>
Sent: Wednesday, June 17, 2020 2:28 PM
To: Wygand, Nancy <Nancy.Wygand@NFL.com>
Subject: Mark: LA; Serial Number: 88844407
Importance: High
Hello Bonnie Jarrett,
My name is Joanna Han, and I am the trademark examining attorney for your trademark application you submitted to the US Patent and Trademark Office.
Below is information regarding your trademark application.
Mark: LA
Serial Number: 88844407
There are two (2) issues with the application I would like to discuss with you.
First, I would like to discuss the applicant’s identification of goods and services in International Classes 16, 25, 28 and 35. Because “carrying cases specially adapted to hold collectible trading cards, holders for collectible coins and paper money” in class 16 may be identified in another International Class because cases that are fitted to carry a particular item are classified with the product that they are designed to carry, e.g., carrying cases for collectible coins in class 14 and carrying cases for collectible paper money in class 16). Further, some words in the Classes 16, 25, 28 and 35 are vague. Thus, applicant must amend the identification to clarify or limit the goods/services. Please note that classes 9, 14 and 18 are acceptable as-is. I have provided a suggested amended wording of the identification of goods/services in International Classes 16, 25, 28 and 35 for the applicant below, and, if accurate, applicant may accept the suggested changes (suggested changes in bold, deletions in strikethroughs):
Class 14 Jewelry; watches; clocks; pins being jewelry; lapel pins; earrings; necklaces; bracelets; jewelry charms; tie pins; rings; collectible coins; commemorative coins; carrying cases specially adapted to hold collectible coins
Class 16 Posters; calendars; trading cards other than for games; printed books in the field of football; notepads; stickers; bumper stickers; printed tickets to sports games and events; pens and pencils; pencil cases; note paper; pictorial prints; art pictures; stationery; envelopes; wrapping paper; paper napkins; printed paper party invitations; paper gift bags; paper party decorations; collectible trading cards; collectible trading cards and memorabilia holders, namely, carrying cases specially adapted to hold collectible trading cards, holders for collectible
coins andpaper money; souvenir programs concerning sports events; money clips made primarily for precious metals
Class 25 clothing, namely, fleece tops and bottoms, headwear, caps being headwear, knit hats, t-shirts, shirts, turtlenecks, sweatshirts, shorts, tank tops, sweaters, pants, jackets, golf shirts, knit shirts, jerseys, wristbands, warm up suits, gloves, ties, cloth bibs; sleepwear, namely, bathrobes, pajamas; underwear; socks; scarves; swimwear; boxers briefs;
underwear,bibs not of paper; footwear; sneakers; slippers
Class 28 toys and sporting goods, namely, plush toys, toy stuffed animals, play figures, golf balls, golf bags, golf club covers, footballs, toy banks, board games relating to football, playing cards, Christmas tree ornaments, balloons, jigsaw puzzles, toy and decorative wind socks, toy cars and trucks, billiard balls, dart boards,
playing cards,miniature toy helmets
Class 35 Marketing services, namely, promoting the goods and services of others by arranging for sponsors to affiliate their goods and services with various football personalities and/or the sport of football; dissemination of advertising for others via
anon-line electronic communications network
Please note, applicant may amend the identification to clarify or limit the goods/services, but not to broaden or expand the goods/services beyond those in the original application or as acceptably amended. Generally, any deleted services may not later be reinserted. For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.
Second, I would like to discuss the use of the term “LA” in your mark. Because the wording is merely geographically descriptive of the applicant’s goods/services, applicant must disclaim it. Please note that disclaiming the word “LA” from the mark would not affect the appearance of the mark or remove it from the mark. Please see following suggested disclaimer, and, if acceptable, please respond with your approval:
No claim is made to the exclusive right to use “LA” apart from the mark as shown.
To expedite the review process of your application, I can make the changes for you and send you an Examiner’s Amendment confirming the changes. If you have any questions and/or concerns, please feel free to reach me at your most convenient time. Please also note that I will need to take action on this file as soon as possible and would appreciate your response by Noon 12PM (Eastern time) Friday, June 19, 2020.
Best,
/Joanna Han/
Trademark Examining Attorney
Law Office 126
United States Patent and Trademark Office (USPTO)
571-270-3617
Notice to trademark applicants and attorneys: All relevant e-mail communications will be added to the official application record in accordance with 37 C.F.R. §2.191 and TMEP §§709.04 - .05.