Notation to File

NOTE TO THE FILE

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SERIAL NUMBER:            90033439

DATE:                                09/21/2020

NAME:                               kkung

NOTE:         

Searched:                                                             
     Google                            
     Lexis/Nexis                       
     OneLook
     Wikipedia
     Acronym Finder                         Protest evidence reviewed
     Other:

Checked:                                                             
     Geographic significance          
     Surname                          
     Translation
     ID with ID/CLASS mailbox

     Checked list of approved Canadian attorneys and agents

Discussed file with
Attorney/Applicant via:
        phone                               Left message with
    X   email (copied below)                               Attorney/Applicant

     Requested Law Library search       X   Issued Examiner’s Amendment
     for:                                   and entered changes in TRADEUPS

        PRINT        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:

     OTHER:

 

From: Frandsen, Nancy Rubner <NFrandsen@bakerlaw.com>
Sent: Sunday, September 20, 2020 9:55 PM
To: Kung, Kaelie <Kaelie.kung@USPTO.GOV>; BH IP Docket <bhipdocket@bakerlaw.com>
Cc: Dale, Judy <JDale@bakerlaw.com>
Subject: RE: U.S. Trademark Application Serial Nos. 90033432 for ABPRIME (stylized) and 90033439 for AB (stylized)

 

Dear Ms. Kung,

 

The changes you referenced are acceptable.

 

Thank you,

Nancy Rubner Frandsen

 

 

Nancy Rubner Frandsen Partner
Cira Centre 2929 Arch Street | 12th Floor Philadelphia, PA 19104-2891 T +1.215.564.1223 M +1.610.639.1402 nfrandsen@bakerlaw.com bakerlaw.com

 

 

 

From: Kung, Kaelie <Kaelie.kung@USPTO.GOV>
Sent: Wednesday, September 16, 2020 9:16 AM
To: BH IP Docket <bhipdocket@bakerlaw.com>
Cc: Frandsen, Nancy Rubner <NFrandsen@bakerlaw.com>; Dale, Judy <JDale@bakerlaw.com>
Subject: U.S. Trademark Application Serial Nos. 90033432 for ABPRIME (stylized) and 90033439 for AB (stylized)

 

[External Email: Use caution when clicking on links or opening attachments.]

Dear Ms. Frandsen,

 

The 9/14/20 Response to Office Action for these applications arrived in my docket for review this morning.  Each of these applications still requires clarification as to one identification clause in Class 040.

 

90033432 for ABPRIME (stylized)

 

The proposed identification amendments are acceptable, but one “namely” suggested for the first clause of Class 040 was not addressed.  The first clause in Class 040 is: “Custom manufacture of a wide variety of consumer products, including but not limited to office supplies, knives, lights, tools, electronics, clocks, pens, key tags, mouse pads, note pads, magnifying glasses, body massagers, luggage tags, travel kits, lint brushes, make-up mirrors, sewing kits, executive toys, measuring devices, golf accessories, and stress balls, for use as promotional products by others” and the underlined wording “including but not limited to” is considered indefinite because the service of “custom manufacture of ___ ” requires a specific listing of what goods are made, and “including but not limited to” wording leaves open the possibility that applicant makes many more custom items that are not listed. 

 

The suggested amendment for this clause is: “Custom manufacture of a wide variety of consumer products, namely, office supplies, knives, lights, tools, electronics, clocks,

pens, key tags, mouse pads, note pads, magnifying glasses, body massagers, luggage tags, travel kits, lint brushes, make-up mirrors, sewing kits, executive toys, measuring devices, golf accessories, and stress balls, for use as promotional products by others”.

 

90033439 for AB (stylized)

 

Again, the proposed identification amendments are acceptable, but here one “namely” suggested for the last clause of Class 040 was not addressed.  The last clause in Class 040 reads: “custom imprinting services of a wide variety of consumer products, including but not limited to office supplies, knives, lights, tools, electronics, clocks, pens, key tags, mouse pads, note pads, magnifying glasses, body massagers, luggage tags, travel kits, lint brushes, make-up mirrors, sewing kits, executive toys, measuring devices, golf accessories, and stress balls, for use as promotional products by others” and the underlined wording “including but not limited to” is considered indefinite because the service of “custom imprinting of ___” requires a specific listing of what goods are printed upon, and “including but not limited to” language leaves the listing unclear as to whether all goods have been specified.

 

The suggested amendment for this clause is: “custom imprinting services of a wide variety of consumer products, namely, office supplies, knives, lights, tools, electronics, clocks, pens, key tags, mouse pads, note pads, magnifying glasses, body massagers, luggage tags, travel kits, lint brushes, make-up mirrors, sewing kits, executive toys, measuring devices, golf accessories, and stress balls, for use as promotional products by others”.

 

Please let me know if the above suggested amendments are acceptable to you, and if I may enter these amendments for you via Examiner’s Amendment in each application.  Upon clarification of these identification matters, I will be able to approve both marks for publication.

 

Sincerely,

Kaelie

 

Kaelie E. Kung

U.S. Patent & Trademark Office

Trademark Examining Attorney

Law Office 103

571-272-8265

kaelie.kung@uspto.gov

 

Notice to applicants and attorneys: relevant e-mail communications will be uploaded to the official application record in accordance with 37 C.F.R. Sect.2.191 and TMEP Sections 709.04-05.

 

 

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         Sent to TICRS as Serial Number: 90033432