NOTE TO THE FILE
SERIAL NUMBER: 88588786
DATE: 06/10/2020
NAME: wverhosek
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 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: applicant maintains priority claim of original foreign application for all the services because the UK application was divided
From: Jeff Smith <smithj@mwzb.com>
Sent: Tuesday, June 9, 2020 5:14 PM
To: Verhosek, William <William.Verhosek@USPTO.GOV>
Cc: Tessica Venteicher-Shulman <cutchin@mwzb.com>; Millen, White, Zelano & Branigan, P.C. <mail@mwzb.com>
Subject: RE: US Trademark Application SN 88588786 QUEEN ANNE - OUR FILE NO. CUNA-0291-T
Hi Bill:
I hope all is well.
We agree with your suggested amendments to the services in Classes 35 & 43.
As for Classes 39 & 44, we want these services to proceed to registration based on UK Reg. No. UK00003467687 under Section 44(e) while retaining the priority date.
As for the services in Classes 35, 41 & 43 under UK application serial number UK00003422742, please suspend the application.
Kindly note we tried to reach your earlier via telephone to let you know we filed a request to divide so the services in Classes 39 & 44 could go to publication and the services in Classes 35, 41 & 43 could be suspended pending the issuance of the UK application (Serial No. UK00003422742)
Thank you.
Best regards,
Jeff
--------------------------------------------------------
Jeffrey A. Smith - Partner/Shareholder
Millen, White, Zelano & Branigan, P.C.
2200 Clarendon Boulevard, Suite 1400
Arlington, Virginia 22201
Direct Tel: (703) 465-5355
Fax: (703) 243-6410
E-Mail: smithj@mwzb.com
Website: www.mwzb.com
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From: Verhosek, William <William.Verhosek@USPTO.GOV>
Sent: Tuesday, June 9, 2020 3:53 PM
To: Jeff Smith <smithj@mwzb.com>
Subject: US Trademark Application SN 88588786 QUEEN ANNE
Dear Mr. Smith,
I’ve reviewed the response and have ID and foreign registration issues, as follows:
ID of Services (Classes 39, 43 and 44 are accepted)
Retail store services in bleaching preparations and other substances for laundry use, cleaning polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, soaps and the like, cosmetics and toiletries, perfumery and incenses, cosmetics sold in kit form, creams, bath salts, beauty masks, deodorants, laundry preparations, powder compacts, lipsticks, makeup, nail polish, oils for cosmetic purposes and oils for perfumes and scents, shampoos, shaving preparations, shoe polish, sun tanning preparations, ironmongery, small items of metal hardware, pipes and tubes of metal, safes, ship ornaments of metal, metal sculptures, metal key chains, metal key rings, metal thimbles, brass magnets, bells of metal, hand operated tools and implements, cutlery, side arms, razors, sugar tongs, can openers, tin openers, bottle openers, nutcrackers, spoons, non-electric cheese slicers, non-electric pizza cutters, forks, spoons and trivets, thimbles, key rings of metal, key chains of metal, fridge magnets of metal, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, automatic vending machines and mechanisms for coin operated apparatus, cash registers, calculating machines, data processing equipment and computers, fire extinguishing apparatus, protective clothing,
clothing, headgear and footwear, eye shades, sunglasses, spectacles, torches, binoculars, buoys, DVD players, CD players, magnetic data recorders, video cassettes, video game cartridges, computer games, video recorders, compact disks, electronic publications, ships and boats, their parts and fittings, jewellery, precious stones, horological and chronometric instruments, watches, ornamental thimbles of precious metal, pill boxes of precious metal, compacts of precious metal, key rings of precious metal, coins, medallions, lapel pins, printed matter, book binding material, photographs, stationery, adhesives for stationery or household purposes, artists materials, paint brushes, typewriters and office requisites except furniture, instructional and teaching material except apparatus, plastic materials for packaging, printers type, printing blocks, magazines, brochures, flyers, playing cards, post cards, greeting cards, drawing materials, painting materials, paper flags, ink, beer mats, paper coasters and place mats, tissues,table cloths, wrapping paper, maps, pens, pencils and other writing instruments, liquid pens, executive pens, book marks, diaries and calendars, catalogues, office requisites, notebooks, notepads, globes,napkins, handkerchiefs of paper, desk accessories, posters, writing paper, prints, printing materials, paper bags, paperweights, pictures, scrapbooks, photo albums, pencil cases, paper table stationery, coloring books, coffee table books, trunks and traveling bags, umbrellas, parasols and walking sticks, whips, harness and saddlery, luggage, leather traveling cases, shopping bags, tote bags, beach bags, purses, wallets, coin purses, change purses, toiletry bags sold empty, fanny packs, sport bags, gym bags, sports bags, organizer bags, compartmentalized travel organizer bags for organizing clothes and accessories, children's purses, backpacks, rucksacks, duffel bags, travel bags, key fobs of leather, furniture, mirrors, picture frames, plaster sculptures and plastic sculptures, mirror compacts, non-metallic fridge magnets, fridge magnets of resin, nonmetal and nonleather key chains, non-metallic key rings, chairs, household or kitchen utensils and containers, glassware, porcelain and earthenware, combs and sponges, ornamental thimbles of porcelain or glass, brushes except paintbrushes, containers for food and for beverages, tableware, tea towels, oven gloves, ceramic plates, coasters, clothes brushes, shoe brushes, shoe horns, shoe shine cloths, handy shoe shiners and shoe trees, portable cold boxes, drinking flasks, insulating flasks and vacuum bottles, ice pails, plates, pepper pots, sugar bowls, salt shakers, egg cups, napkin holders, napkin rings, trays, toothpick holders, pill boxes, pan-mats and trivets, feeding vessels for pets, sports and water bottles sold empty, travel mugs, mugs, drinking glasses and tankards, glass tankards, glass shot glasses, crystal shot glasses, cloth shopping bags, games and playthings, gymnastic and sporting articles, lace and embroidery, ribbons and braid, buttons, hooks and eyes, pins and needles, artificial flowers, decorations for Christmas trees, scale model ships, Christmas tree ornaments, golf club head covers, golf bags, sports bags for tennis, puzzles, poker chips, toy musical instruments, toy dolls, toy boats, model ships, inflatable dolls and ring buoys for recreational use, inflatable toy cruise ships, plush toys, coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, bread, honey, treacle, yeast, baking-powder, salt, mustard, vinegar, sauces as condiments, spices, ice, chocolate based beverages, pasta, pate, yogurt, conserves, sauces,alcoholic beverages except beers, wine, beer, soft drinks, fruit juices, cigarette lighters, cigarette cases, smokers articles, matches and ashtrays
Class 41: Providing sports facilities; organizing of sports competitions and sports events; providing facilities for recreational activities; presenting live musical performances; presenting live cabaret performances; presenting live comedy performances; presenting live variety performances; provision of casino, gambling and gaming facilities; casino gaming services; travel, excursion and tour arrangement services, namely, arranging and conducting guided tours of cruise ships; providing education services, namely, courses of instruction in the field of the arts, conducting workshops and seminars in literary and art appreciation; entertainment services, namely, showing of movies, providing live music concerts, dancing events, poolside and water activities, namely, conducting contests, trivia competitions, swimming competitions, fitness instruction and water slides being recreational services, conducting parties at sea and on land; casinos;
casinos[delete duplicate wording]; entertainment services, namely, photography, videotaping services, golf instruction, arranging and conducting putting contests, video game arcade services; entertainment services, namely, arranging and conducting parties and contests, live stage shows, live nightclub shows, dances and live theatrical productions, live visual and audio performances and live musical, variety and comedy shows; education and entertainment services, namely, libraries, rental of films, meeting and seminar arranging; educational services, namely, conducting classes and seminars in the fields of music, theatre, film, food and wine, gaming, art and health and providing motivational and educational speakers; recreation services, namely, children's entertainment and amusement centers, namely, interactive play areas and teen night club services; health club services, namely, providing instruction, classes and equipment in the field of physical exercise; providing facilities for recreation, namely, movie theaters; night club services
The strikethrough items in bold indicates goods still subject to the section 2(d) refusal, and must be deleted to obviate the section 2(d) refusal. The Queen Anne’s Revenge cited mark is withdrawn.
Foreign Registration
The foreign registration No. UK00003467687 was submitted and accepted only for Classes 39 and 44, even though applicant claimed this foreign registration for all the classes.
Moreover, the applicant originally claimed UK00003422742 for all the services. If applicant wishes to maintain submittal of this foreign registration, or the above foreign registration, or an amendment to section 1(b) for the remaining services in Classes 35, 41 and 43, then a final office action will be sent.
Applicant may wish to delete the remaining services not already covered by the submitted foreign registration.
If you are agreeable to the changes above, please let me know via this email or phone below. I can take care of the changes by an examiner’s amendment.
Or if you prefer, I can always send out an Office Action giving you six months to respond.
Thanks,
Bill
William T. Verhosek
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 114
571-272-9464