NOTE TO THE FILE
SERIAL NUMBER: 90070244
DATE: 11/12/2020
NAME: shopkins
NOTE:
Searched:
X Google
Lexis/Nexis
X OneLook
X Wikipedia
X 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:From: Kristen.Traina@shell.com <Kristen.Traina@shell.com>
Sent: Thursday, November 12, 2020 2:04 PM
To: Hopkins, Sarah <Sarah.Hopkins@USPTO.GOV>
Cc: Wendy.M.Wilson@shell.com
Subject: RE: Response Requested: Possible Examiner's Amendment for STUDIO X SN 90070244 (TMH3888)
Hi Sarah,
Thanks for your note. We are amenable to the disclaimer, kindly make the change via Examiner’s Amendment.
Best,
Kristen
Kristen Traina
Legal Counsel – Trademarks
Shell Oil Company
Telephone: (832) 337-8369
Email: Kristen.traina@shell.com
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From: Wilson, Wendy SHLOIL-LSIP/B <Wendy.M.Wilson@shell.com>
Sent: Tuesday, November 10, 2020 3:59 PM
To: Traina, Kristen SHLOIL-LSIP/B <Kristen.Traina@shell.com>
Subject: FW: Response Requested: Possible Examiner's Amendment for STUDIO X SN 90070244 (TMH3888)
From: Hopkins, Sarah <Sarah.Hopkins@USPTO.GOV>
Sent: Tuesday, November 10, 2020 3:37 PM
To: Trademarks SHLOIL SITI-ITSS-EUC <Trademarks-T@shell.com>
Subject: Response Requested: Possible Examiner's Amendment for STUDIO X SN 90070244 (TMH3888)
Think Secure. This email is from an external source.
Dear Kristen Traina,
I am the trademark examining attorney at the United States Patent and Trademark Office and I would like to discuss the following issue with you.
Disclaimer Required: The word “studio” in the applied-for mark is merely descriptive of a feature of the goods and services and the provider of the goods and services as a studio is a “worker’s workroom”. Terms that describe the provider of a product or service may also be merely descriptive of the product and/or service. See In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1301, 102 USPQ2d 1217, 1220 (Fed. Cir. 2012) (affirming Board’s finding that NATIONAL CHAMBER was merely descriptive of online service providing directory information for local and state chambers of commerce and business and regulatory data analysis services to promote the interest of businessmen and businesswomen); In re Major League Umpires, 60 USPQ2d 1059, 1060 (TTAB 2001) (holding MAJOR LEAGUE UMPIRE merely descriptive of clothing, face masks, chest protectors and shin guards); TMEP §1209.03(q).
Therefore, the applicant must enter the following disclaimer statement.
No claim is made to the exclusive right to use “STUDIO” apart from the mark as shown.
If the above is acceptable, and with your confirmed consent, I can enter the change via Examiner’s Amendment. Unfortunately, I will need to hear from you no later than 4pm on November 14, 2020 or I will need to issue the Office Action requiring the change.
Sincerely,
/Sarah Hopkins/
Examining Attorney
Trademark Law Office 123
(571) 270-0942