NOTE TO THE FILE
SERIAL NUMBER: 88865314
DATE: 10/23/2020
NAME: jsullivan1
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:John,
Pax Labs agrees to enter the proposed amendments as you have suggested.
Best, Kelu
Kelu L. Sullivan
Of Counsel
202-559-1558 (Direct)
From: Sullivan, John <John.Sullivan@USPTO.GOV>
Sent: Tuesday, October 13, 2020 12:24 PM
To: PAXDocketing <PAXDocketing@kelly-ip.com>
Subject: Pax Labs Trademark Applications (Serial Nos. 88838692 and 88865314)
Dear Ms. Bald,
My name is John Sullivan and I am the Trademark Examining Attorney assigned to examine Trademark Application Serial Nos. 88838692 and 88865314 for PAX 3 and X, respectively.
I have reviewed your responses to my Office actions and I am writing with regard to a couple of minor remaining issues with the identifications.
Specifically, on SN 88838692, the wording “wire brush, and multi-purpose tool specially adapted to clean the interior of cartridges for oral vaporizers” is indefinite. If the “specially adapted” wording is written to more clearly be modifying the wording “wire brush” then that part would be okay. However “multi-purpose tool” is also indefinite without specifying all of the purposes. I am proposing the following amended ID, with a semi-colon inserted before the wording “cleaning tools” and other changes in bold:
International Class 034: Electronic cigarettes; electronic oral vaporizers for smokers; oral vaporizers for smokers; flavorings, other than essential oils, for use in electronic cigarettes and electronic oral vaporizers for smokers; liquid solution containing flavors for use in electronic cigarettes; electronic cigarette and oral vaporizer for smokers refills being chemical flavorings in liquid form used to refill cartridges for electronic cigarette and oral vaporizers for smokers; electronic cigarette and oral vaporizer for smokers refill cartridges sold empty; electronic cigarette and oral vaporizers for smokers accessories, namely, electronic cigarette and vaporizer pods in the nature of cartridges sold empty, cases for electronic cigarettes and oral vaporizers for smokers, skins being plastic films specially adapted for covering electronic cigarettes and oral vaporizers for smokers; cleaning tools for electronic cigarettes and oral vaporizers for smokers in the nature of pipe cleaners, wire brush and a hand tool, all specially adapted to clean the interior of cartridges for oral vaporizers; smokers' mouth pieces for electronic cigarettes and oral vaporizers for smokers.
On SN 88865314, there are issues in International Class 018 and 042. In Class 18, “shopping bags” requires specification, as paper and plastic shopping bags are in 16 while textile shopping bags are in 18. This application also contains Class 16, so each of these entries can be added. The entries for “laptop bags” and “technology cases and pouches” are misclassified and would belong in Class 9, which is not currently in the application. Similarly, “cooler bags” belongs in Class 11, which is not part of the application. Finally, “toiletry bags” and “cosmetic bags” require the additional wording “sold empty.”
In Class 42, the wording “informational and educational website” is indefinite and must specify the subject matter of the information. The subject matter would also determine the classification of this entry, which would require an additional class unless some sort of technology/software field is specified. My proposed ID is as follows:
International Class 014: No changes;
International Class 016: stickers; printed materials, namely, manuals, user guides, brochures in the field of electronic cigarettes and oral vaporizers; paper and plastic shopping bags;
International Class 018: travel bags, messenger bags; backpacks; gym bags; sports bags; tote bags; duffle bags; shoulder bags; textile shopping bags;
laptop bags;briefcases; drawstring bags; toiletry bags sold empty; cosmetic bags sold empty;technology cases and pouches; cooler bags;carrying cases;
International Class 021: No changes;
International Class 022: No changes;
International Class 034: No changes;
International Class 042: Providing online, non-downloadable software for use with electronic cigarettes and oral vaporizers for smoking purposes, namely, software for remotely adjusting and saving settings and updating firmware for electronic cigarettes and oral vaporizers for smoking purposes; providing online non-downloadable software for tracking battery usage for use with oral vaporizers, electronic cigarettes; providing a website featuring information in the field of electronic cigarette and oral vaporizer software.
If these proposals are acceptable, or if you would like to discuss any of these issues further, please let me know and I can issue an Examiner's Amendment and move the application forward.
Thank you,
John
John Sullivan
Acting Senior Attorney | Law Office 114
United States Patent and Trademark Office
(571) 272-9519