NOTE TO THE FILE
SERIAL NUMBER: 88916977
DATE: 08/19/2020
NAME: jfickes
NOTE:
Searched:
X Google sudoc
Lexis/Nexis
OneLook
Wikipedia
X 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
email Attorney/ApplicantRequested Law Library search 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:X OTHER:
Hi Jeri,
Unfortunately, I have not received a response from my client yet. Please feel free to go ahead and issue the office action. Apologies for the delay.
Thank you,
Chrissy
Christel (Chrissy) E. Harlacher | Attorney | Williams Mullen
Williams Mullen Center | 200 South 10th Street, Suite 1600 | P.O. Box 1320 (23218) | Richmond, VA 23219
T 804.420.6318 | C 813.416.6367 | F 804.420.6507 | charlacher@williamsmullen.com | www.williamsmullen.com
NOTICE: Information contained in this transmission to the named addressee is proprietary and is subject to attorney-client privilege and work product confidentiality. If the recipient of this transmission is not the named addressee, the recipient should immediately notify the sender and destroy the information transmitted without making any copy or distribution thereof.
From: Fickes, Jeri <Jeri.Fickes@uspto.gov>
Sent: Wednesday, August 19, 2020 10:56 AM
To: Harlacher, Christel <charlacher@williamsmullen.com>
Subject: Trademark Application Serial No. 88/916977 for SUDOC [IWOV-IWOVRIC.FID2161605]
Dear Chrissy,
Action is due on the application today. Any chance you have heard back from the client yet?
Thank you for your help.
Jeri Fickes
USPTO
571/272-9157
From: Fickes, Jeri
Sent: Monday, August 17, 2020 12:53 PM
To: Harlacher, Christel <charlacher@williamsmullen.com>
Subject: RE: Trademark Application Serial No. 88/916977 for SUDOC [IWOV-IWOVRIC.FID2161605]
Thank you Chrissy. I look forward to hearing from you.
Jeri Fickes
USPTO
From: Harlacher, Christel <charlacher@williamsmullen.com>
Sent: Monday, August 17, 2020 11:15 AM
To: Fickes, Jeri <Jeri.Fickes@uspto.gov>
Cc: Van Arnam, Robert C. <rvanarnam@williamsmullen.com>; Renie, Patricia G. <prenie@williamsmullen.com>; IP (mailbox only) <ip@williamsmullen.com>
Subject: RE: Trademark Application Serial No. 88/916977 for SUDOC [IWOV-IWOVRIC.FID2161605]
Examining Attorney Fickes,
Thank you for your email. We will need to discuss these amendments with the applicant and will get back to you as soon as we have a response (hopefully within a day or two).
Thank you,
Chrissy
Christel (Chrissy) E. Harlacher | Attorney | Williams Mullen
Williams Mullen Center | 200 South 10th Street, Suite 1600 | P.O. Box 1320 (23218) | Richmond, VA 23219
T 804.420.6318 | C 813.416.6367 | F 804.420.6507 | charlacher@williamsmullen.com | www.williamsmullen.com
NOTICE: Information contained in this transmission to the named addressee is proprietary and is subject to attorney-client privilege and work product confidentiality. If the recipient of this transmission is not the named addressee, the recipient should immediately notify the sender and destroy the information transmitted without making any copy or distribution thereof.
From: Fickes, Jeri <Jeri.Fickes@uspto.gov>
Sent: Saturday, August 15, 2020 4:19 PM
To: IP (mailbox only) <ip@williamsmullen.com>
Cc: Harlacher, Christel <charlacher@williamsmullen.com>; Van Arnam, Robert C. <rvanarnam@williamsmullen.com>; Renie, Patricia G. <prenie@williamsmullen.com>
Subject: Re: Trademark Application Serial No. 88/916977 for SUDOC
Dear Ms. Harlacher,
I am the examining attorney assigned to review the above application. Before it can proceed in the registration process, we need to address the following issues.
First, does the term “SUDOC” have any meaning (perhaps as an acronym) with respect to the goods or services or in applicant’s industry, or in a foreign language, or as a geographic place name or the surname of anyone associated with applicant?
Second, the identifications of goods and services contain a few items requiring clarification or reclassification (see below).
Chemical preparations for use in treating and reclaiming wastewater; Chemical preparations for removing micropollutants, pathogens, and contaminants from wastewater; Chemical preparations for use in cleaning and remediating groundwater; Chemical preparations for use in cleaning drinking water; Chemical preparations for mineralizing and destroying pharmaceuticals and drugs; Chemical preparations for decontamination of hazardous materials; Chemical preparations for scientific purposes; Chemical preparations for industrial purposes; Eco-friendly chemical preparations [specify the use or purpose, e.g., for use in industry, for scientific purposes, for use in treating and reclaiming wastewater, etc.]; Chemical preparations for use as a remediation agent; Chemical products intended to increase the rate of hydrolysis for use in the agriculture industry; in International Class 1;
Cleaning preparations; Cleaning preparations for cleaning surfaces; [move “Chemical preparations for sanitary purposes” to International Class 5]; Cleaning preparations for use in medical, commercial, public, and residential buildings and in transportation vehicles; Eco-friendly cleaning preparations; Laundry detergent; in International Class 3;
Chemical preparations for sanitary purposes; Disinfectants for sanitary purposes; Disinfectant and sanitizing preparations for use in [specify area of use, e.g., households, hospitals, commercial buildings, institutional buildings, industrial buildings, etc.] for destroying viruses, bacteria, and mold; Disinfectant and sanitizing preparations for use in medical, commercial, and residential buildings; Eco-friendly disinfectant and sanitizing preparations for use in [specify area of use, e.g., households, hospitals, commercial buildings, institutional buildings, industrial buildings, etc.]; Chemical products intended to increase the rate of hydrolysis for use in the healthcare and pharmaceutical industries; Pharmaceuticals for reducing damage to cardiac tissue after heart attack; Pharmaceuticals for reducing damage to brain tissue after stroke; in International Class 5;
[amend “distribution” to “Distributorships”] in the field of disinfectant, sanitizing, cleaning, and chemical preparations and wholesale [specify the nature of the services, e.g., ordering, store] services for featuring disinfectant, sanitizing, cleaning, and chemical preparations; in International Class 35;
Environmental remediation services, namely, treatment of soil, waste and water; Decontamination of hazardous materials; Water treatment services; Environmental remediation services for medical, commercial, and public buildings and in transportation vehicles, namely, air purification, water treatment and purification, mold, microbial, bacterial and fungi [delete “removal” and replace with “treatment”], and detoxification of hazardous materials; Consulting services in the field of water treatment; Consulting services in the field of environmental remediation in the nature of treatment of soil, waste and water; in International Class 40;
Chemical analysis; Chemical engineering; Chemical research; Environmental services, namely, technical consultation in the field of environmental science, engineering services and design for others in the field of environmental engineering; Consulting services in the field of engineering for remediation of environmentally contaminated sites; Environmental testing and inspection services; Providing waste water testing and analysis; Providing drinking water testing and analysis; in International Class 42;
[delete “Consulting services for sterilization, decontamination, sanitization, disinfecting, and cleanroom technology for medical and veterinary facilities” - these services appear to identify the following International Class 37 services of “cleanroom technology consulting services for in the field of sterilization, decontamination, sanitization, and disinfection for sanitary purposes and cleanroom technology for of medical and veterinary facilities” or the International Class 42 services of “technology consulting services in the field of [identify the computer or scientific technology, e.g., computer hardware, etc.] used for sterilization, decontamination, sanitization, and disinfection of medical and veterinary facilities”]; Technical consulting in the field of agriculture [applicant must clarify the nature of the agriculture focus, e.g., practices, namely, planting, growing, fertilizing, pruning, and picking crops, etc. – classification will depend on the nature of the agriculture focus of the services; for example, technical consulting in the field of agricultural scientific research would be classified in International Class 42]; in International Class 44.
I appreciate your help in resolving these issues. The application is otherwise ready for publication.
Jeri Fickes
Trademark Examining Attorney
Law Office 107USPTO
571/272-9157