NOTE TO THE FILE
Sent to TICRS as Serial Number: 90033432SERIAL NUMBER: 90033439
DATE: 09/21/2020
NAME: kkung
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 (copied below) 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: 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)
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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
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