Notation to File

NOTE TO THE FILE

SERIAL NUMBER:            90037241

DATE:                                10/20/2020

NAME:                               choffman

NOTE:         

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

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

     Checked list of approved Canadian attorneys and agents

Discussed file with
Attorney/Applicant via:
    X   phone                               Left message with
    X   email                               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:

 X   OTHER:

From: Hoffman, Christopher
Sent: Tuesday, October 20, 2020 11:37 AM
To: trademark@patentmiami.com; robert@patentmiami.com
Subject: RE: 90037241 EL VIEJO LUIS

 

Good Morning Mr. Schwartz,

 

I wanted to thank you for your time on our call earlier this morning. I have noted your acceptance of the translation of EL VIEJO LUIS as “OLD MAN LUIS”. Additionally, in light of our discussion, I am able to propose the following identification, which you may adopt, if accurate:

 

“Meats and processed foods, namely, meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products excluding ice cream, ice milk and frozen yogurt; edible oils and fats; frozen and processed fruits; frozen vegetables; fish, chicken, vegetable and ham croquettes; meats and processed foods, namely, meat, fish and poultry; meat, fish, chicken and ham croquettes; preserved, dried, frozen, canned and cooked fruits and vegetables; dairy products in the nature of milk products excluding ice cream, ice milk and frozen yogurt; cheese; yucca and cheese croquettes; canned beans; dried beans; tomato paste; guava paste; processed hearts of palm; canned sardines; vegetable oil for food; corn oil for food; fried plantains; fruit pulps; frozen appetizers consisting primarily of chicken or seafood; frozen chicken, namely, chicken croquettes; fruit concentrates and purees used as ingredients of foods; frozen meat; vegetables, namely, frozen cassava, processed hearts of palm, frozen plantains; processed creamed corn; seasoning wraps made out of processed plantain leaves; other preparations in the nature of fruit pulps for making beverages” in International Class 029

 

“Staple foods, namely, coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, namely, cereal-based snack foods, cereal-based snack bars, breakfast cereals and processed cereals; bread and pastries; frozen confectionary in the nature of ices and ice cream; honey; treacle; yeast; baking-powder; salt; mustard; vinegar, savory sauces used as condiments; spices; ice; arepas; tamales; salad dressings; crackers; frozen confections, namely, freezer pops; steak sauce; corn meal; tomato sauce; flan; corn fritters; bread fritters; biscuit like flat bread; ready-made sauces; corn flour; empanadas; cheese biscuits; minced garlic; food seasonings; frozen breads; frozen confectionery; frozen foods, namely, grain and bread based appetizers, hors d'oeuvres, and canapés; non-dairy frozen confections; processed, frozen, cooked or packaged whole grains; ice milk; frozen yogurt” in International Class 030

 

“Light beverages, namely, mineral and aerated waters and other carbonated non-alcoholic drinks; fruit drinks and fruit juices; syrups for making beverages; other preparations in the nature of concentrates and powders for making soft drink, tea-flavored, and fruit-based beverages; coconut water” in International Class 032

 

“Wine and spirits, namely, cooking wine” in International Class 033

 

Please advise if the aforementioned is acceptable. Thank you again for your time concerning this matter.

 

Best,

 

Christopher Hoffman

U.S. Patent and Trademark Office

Trademark Examining Attorney

Law Office 128

(571) 272-3351

christopher.hoffman@uspto.gov

 

From: Hoffman, Christopher
Sent: Thursday, October 15, 2020 12:05 PM
To: trademark@patentmiami.com; robert@patentmiami.com
Subject: 90037241 EL VIEJO LUIS

 

Good Afternoon Mr. Schwartz,

 

I am writing concerning 90037241 EL VIEJO LUIS. Specifically, we will require a translation of the foreign wording in the mark. Concerning this requirement, I am able to propose the following: The English translation of the word “EL VIEJO LUIS” in the mark is “OLD MAN LUIS”. Additionally, the identification will require minor amendment as select items are indefinite (e.g., milk products, vegetable oil, etc) while other items are misclassified (e.g., cream of corn, ice milk, frozen yogurt). Lastly, select items are duplicates and must be further clarified or deleted (e.g., frozen vegetables, spices, rice, salt). These items are noted with a double strikethrough below. Based on the foregoing, I am able to propose the following, which you may adopt, if accurate:

 

“Meats and processed foods, namely, meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products excluding ice cream, ice milk and frozen yogurt; edible oils and fats; frozen and processed fruits; frozen vegetables; fish, chicken, vegetable and ham croquettes; meats and processed foods, namely, meat, fish and poultry; meat, fish, chicken and ham croquettes; preserved, dried, frozen, canned and cooked fruits and vegetables; dairy products in the nature of milk products excluding ice cream, ice milk and frozen yogurt; cheese; yucca and cheese croquettes; canned beans; dried beans; tomato paste; guava paste; processed hearts of palm; canned sardines; vegetable oil for food; corn oil for food; fried plantains; fruit pulps; frozen appetizers consisting primarily of chicken or seafood; frozen chicken, namely, chicken croquettes; fruit concentrates and purees used as ingredients of foods; frozen meat; frozen vegetables; vegetables, namely, frozen cassava, processed hearts of palm, frozen plantains; cream of corn soup” in International Class 029

 

“Staple foods, namely, coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, namely, bread and pastries; frozen confectionery and ices being frozen confections; honey; treacle; yeast; baking-powder; salt; mustard; vinegar, savory sauces used as condiments; spices; ice; arepas; tamales; seasoned sandwich wraps made out of plantain leaves; salad dressings; spices; crackers; rice; salt; frozen confections, namely, freezer pops; steak sauce; corn meal; tomato sauce; flan; corn fritters;; bread fritters; biscuit like flat bread; ready-made sauces; corn flour; empanadas; cheese biscuits; minced garlic; food seasonings; frozen breads; frozen confectionery; frozen foods, namely, grain and bread based appetizers, hors d'oeuvres, and canapés; non-dairy frozen confections; processed, frozen, cooked or packaged whole grains; ice milk; frozen yogurt” in International Class 030

 

“Light beverages, namely, mineral and aerated waters and other carbonated non-alcoholic drinks; fruit drinks and fruit juices; syrups for making beverages; other preparations in the nature of concentrates and powders for making soft drink, tea-flavored, and fruit-based beverages; coconut water” in International Class 032

 

“Wine and spirits, namely, cooking wine” in International Class 033

 

Lastly, I must inquire as to whether the name LUIS in the mark identifies a living individual as the name in the mark is the same as the owner LUIS Hernandez, which establishes a public connection between the name in the mark and the owner. See TMEP 1206.02. If so, please advise and I may proceed with issuing an individual inquiry to obtain the required written consent statements. In such case, I would be able to proceed by EAPA, should we be able to resolve the translation/ID issues. In the alternative, a statement that the name does not identify a particular living individual is required if such may be the case.

 

Please review and advise on the proposed amendments to the application. Thank you for your time concerning this matter.

 

Best,

 

Christopher Hoffman

U.S. Patent and Trademark Office

Trademark Examining Attorney

Law Office 128

(571) 272-3351

christopher.hoffman@uspto.gov

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and may be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.