NOTE TO THE FILE
SERIAL NUMBER: 90044356
DATE: 10/26/2020
NAME: kmoninghoff
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 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:X OTHER:
From: Moninghoff, Kim
Sent: Monday, October 26, 2020 8:22 AM
To: Rogers, Scott <srogers@ulmer.com>
Cc: Maynard, Hillary <hmaynard@ulmer.com>
Subject: RE: Trademark Application Nos. 90044364 BEANIE BOO, 90044356 TY (Docket #26454.0002) - please respond by Friday (10/23)
Thank you. I’ll have the EAs out to you this morning.
Kim Teresa Moninghoff
Trademark Examining Attorney
Law Office 113
Phone: 571-272-4738
All informal e-mail communications relevant to this application will be placed in the official application record.
From: Rogers, Scott <srogers@ulmer.com>
Sent: Monday, October 26, 2020 8:21 AM
To: Moninghoff, Kim <Kim.Moninghoff@USPTO.GOV>
Cc: Maynard, Hillary <hmaynard@ulmer.com>
Subject: RE: Trademark Application Nos. 90044364 BEANIE BOO, 90044356 TY (Docket #26454.0002) - please respond by Friday (10/23)
Thanks Ms. Moninghoff. Yes, you may include the term “sanitary” as you suggest.
Scott
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Scott E. Rogers
Ulmer & Berne LLP
p 312.658.6530
c 312.914.5772From: Moninghoff, Kim <Kim.Moninghoff@USPTO.GOV>
Sent: Monday, October 26, 2020 7:12 AM
To: Rogers, Scott <srogers@ulmer.com>
Cc: Maynard, Hillary <hmaynard@ulmer.com>
Subject: RE: Trademark Application Nos. 90044364 BEANIE BOO, 90044356 TY (Docket #26454.0002) - please respond by Friday (10/23)
Can I include the term “sanitary” as follows:
Personal protective equipment (PPE), namely, sanitary masks for protection against viral infection, in Class 10.
This is the term we’re using for masks with the purpose you described for non-medical personnel.
Kim Teresa Moninghoff
Trademark Examining Attorney
Law Office 113
Phone: 571-272-4738
All informal e-mail communications relevant to this application will be placed in the official application record.
From: Rogers, Scott <srogers@ulmer.com>
Sent: Thursday, October 22, 2020 3:28 PM
To: Moninghoff, Kim <Kim.Moninghoff@USPTO.GOV>
Cc: Maynard, Hillary <hmaynard@ulmer.com>
Subject: RE: Trademark Application Nos. 90044364 BEANIE BOO, 90044356 TY (Docket #26454.0002) - please respond by Friday (10/23)
Hi Ms. Moninghoff,
Thanks for reaching out to me. I’m very sorry for any confusion, but we don’t think the Ty products fit into the description you provided for the Class 9 goods. These are masks for non-medical and non-industrial persons. They’re designed to help people thwart Covid and reduce exposure to viruses, but they are not designed to be worn by medical professionals or those needing industrial face and respiratory masks. They are not FDA or OSHA approved, and certainly not qualified for use by medical personnel.
As such, we don’t think Class 9 applies. For Class 10, we would not want to say these are for use by medical personnel. If this is acceptable, please feel free to amend: Personal protective equipment (PPE), namely, masks for protection against viral infection, in Class 10.
Should you have any questions, I am working from home for the foreseeable future (big surge in Chicago). My cell is 312-914-5772.
Thanks again.
Scott
------
Scott E. Rogers
Ulmer & Berne LLP
p 312.658.6530
c 312.914.5772From: Moninghoff, Kim <Kim.Moninghoff@USPTO.GOV>
Sent: Monday, October 19, 2020 5:12 PM
To: Rogers, Scott <srogers@ulmer.com>
Cc: Maynard, Hillary <hmaynard@ulmer.com>; ipdocketing <ipdocketing@ulmer.com>
Subject: Trademark Application Nos. 90044364 BEANIE BOO, 90044356 TY (Docket #26454.0002) - please respond by Friday (10/23)
Mr. Rogers,
I’ve been assigned to review these two trademark applications. Before I can approve the marks for publication, there is one issue that must be addressed. We may be able to resolve this by Examiner’s Amendment (EA) or at least simplify it by Examiner’s Amendment/Priority Action (EA/PA). Specifically, the identification includes PPE masks, but these may be classified in Class 9 or Class 10 depending on their specific use. See the following examples:
Personal protective equipment (PPE), namely, industrial face and respiratory masks, in Class 9.
Fashion masks being sanitary masks for protection against viral infection; Reusable sanitary masks for protection against viral infection; Sanitary masks made of cloth for protection against viral infection; Face coverings being sanitary masks for protection against viral infection; Personal protective equipment (PPE), namely, masks for use by medical personnel and sanitary masks for protection against viral infection, in Class 10.
If you consent to limit the masks as suggested above for Class 10, you can let me know by reply email and I will enter the amendment by EA and approve the mark for publication.
If you wish to include the masks in Class 9 and consent to the above amendments in both classes, you can let me know by reply email and I will enter the amendments in EA/PAs that also include requirements for an additional filing fee.
If you have any questions, please let me know.
If I don’t hear back from you by the end of the week (10/23), I will send you formal Office actions with the above requirements. Thank you.
Kim Teresa Moninghoff
Trademark Examining Attorney
Law Office 113
Phone: 571-272-4738
All informal e-mail communications relevant to this application will be placed in the official application record.