NOTE TO THE FILE
SERIAL NUMBER: 90192136
DATE: 02/08/2021
NAME: dvandenabeelen
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:
From: Chris Casavale <chris.casavale@nelsonmullins.com>
Sent: Monday, February 8, 2021 9:36 AM
To: Van Den Abeelen, Derek <Derek.VanDenAbeelen@USPTO.GOV>
Cc: IP Mailbox Account <IP@nelsonmullins.com>
Subject: RE: Amendment to Trademark Application for BERKLEY JENSEN, #90192136
Dear Derek:
My client confirmed that the “Christmas garland; Christmas wreaths” claimed in the identification are artificial and my client agrees with your proposed amendments. Please proceed with an Examiner’s Amendment accordingly.
Best regards,
Chris
CHRISTOPHER D. CASAVALE ASSOCIATE
chris.casavale@nelsonmullins.com
LIBERTY CENTER | SUITE 600
151 MEETING STREET | CHARLESTON, SC 29401
T 843.534.4252 F 843.722.8700
101 CONSTITUTION AVENUE, NW | SUITE 900
WASHINGTON, D.C., 20001
T 202.689.2927 F 202.689.2860
From: Chris Casavale
Sent: Thursday, February 4, 2021 6:59 PM
To: Van Den Abeelen, Derek <Derek.VanDenAbeelen@uspto.gov>
Cc: IP Mailbox Account <IP@nelsonmullins.com>
Subject: Re: Amendment to Trademark Application for BERKLEY JENSEN, #90192136
Derek:
I confirm that you can enter the statement. I am following up with my client about the amendments and hope to have further instructions for you ASAP
Sent from my iPhone
On Feb 4, 2021, at 6:20 PM, Van Den Abeelen, Derek <Derek.VanDenAbeelen@uspto.gov> wrote:
◄External Email► - From: Derek.VanDenAbeelen@USPTO.GOV
Apologies, I forgot to add the following additional requirement:
Because it is not clear if the mark is the name of a person, the following statement must be added to record, consistent with applicant’s prior registrations:
The name(s), portrait(s), and/or signature(s) shown in the mark does not identify a particular living individual.
Please let me know if applicant agrees to add the above statement, as well as if applicant agrees to the changes discussed below.
Thanks,
Derek
/Derek van den Abeelen/
Trademark Examining AttorneyLaw Office 126
United States Patent & Trademark Office571-270-3997
From: Van Den Abeelen, Derek
Sent: Thursday, February 4, 2021 5:50 PM
To: ip@nelsonmullins.com
Cc: chris.casavale@nelsonmullins.com
Subject: Amendment to Trademark Application for BERKLEY JENSEN, #90192136
Hello Mr. Casavale,
I am the trademark examining attorney assigned to Trademark Application Serial No. 90192136. I have reviewed the application and I would like your permission to make the following suggested amendments:
- Identification of Goods – Some of the identified goods are indefinite or overbroad. Additionally, “Christmas garland; Christmas wreaths” should be classified in Class 29 if artificial or Class 31 if fresh cut. If accurate, the identification can be amended to:
Class 3: Cotton balls for cosmetic purposes; Dishwasher detergents; Shampoo; Hair conditioner; Anti-static dryer sheets; Laundry detergent; Pre-moistened cosmetic wipes, namely, makeup remover wipes
Class 5: (no change)
Class 6: (no change)
Class 8: (no change)
Class 10: Gloves for medical purposes; Vinyl gloves for medical purposes; Nitrile gloves for medical purposes
Class 11: Water filters; outdoor fixtures, namely, gas fire pits; Outdoor lighted Christmas-themed ornaments, namely, nativity sets
Class 16: (no change)
Class 18: Textile shopping bags; Reusable shopping bags
Class 20: (no change)
Class 21: Paper plates; Paper bowls; Paper cups; Foam plates; Foam bowls; Foam cups; Hinged Foam Compartment Container for household use; Aluminum Pans; Aluminum Pan Lids; Salad spinners; Glass food storage containers for household use sold empty; Reusable insulated bags for food or beverage for domestic use; Dental flossers; Dental floss; Heads for electric toothbrushes; toothbrushes; Bowl set; Pots; Sauce pan
Class 24: Plastic table covers; Mattress pads
Class 25: (no change)
Class 26: bows, not of paper, for wrapping; ribbon, not of paper, for wrapping; Artificial Christmas garland; Artificial Christmas wreaths
Class 27: (no change)
Class 28: Christmas tree ornaments; artificial Christmas tree; Christmas tree skirt;
Christmas garland; Christmas wreaths;Christmas stockings
If you agree, you may respond to this email and give me permission to make these amendments. If you have any questions or would like to discuss these amendments, please give me a call at my direct phone number below.
To expedite the examination process and to avoid the need for a formal Office action, please contact me by Tuesday, February 9th.
Thank you for your cooperation.
Regards,
/Derek van den Abeelen/
Trademark Examining AttorneyLaw Office 126
United States Patent & Trademark Office571-270-3997
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