NOTE TO THE FILE
Sent to TICRS as Serial Number: 90231215SERIAL NUMBER: 90201048
DATE: 12/07/2020
NAME: jlee6
NOTE:
Searched:
X Google
X Lexis/Nexis
X OneLook
Wikipedia
Acronym Finder Protest evidence reviewed
X Other: Google Translate, Columbia GazetteerChecked:
X Geographic significance
X Surname
X 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 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: Email
Hi Ms. Lee,
Thank you very much for your follow-up email this evening.
You are correct that we need more time for the two subject VERAX trademark applications because of the international nature of the DSM. Sorry about your extra effort. We agree with you that it is best to proceed with Priority Actions for the two subject cases, and we also agree with your proposed trademark description for the Verax and design trademark, which you can include in an Examiner's Amendment.
Thank you very much for your efforts and patience.
Kind regards,
Duane
/dmb/
US attorney of record, active member of the Virginia bar
Duane M. Byers
Nixon & Vanderhye P.C.
901 N. Glebe Road, 11th Floor
Arlington, VA 22203 USA
Phone: 1-703-786-7421
From: Lee, Janet <janet.lee6@USPTO.GOV>
Sent: Monday, December 7, 2020 7:14 PM
To: Duane M. Byers
Cc: Virginia Hamel
Subject: RE: US Trademark Applications Owned by DSM IP Assets B.V. / NV refs 4662-4063, -4072, -4055, -4074
Hello, Mr. Byers.
I am just following up regarding the two VERAX marks.
Due to the international nature of your client, I understand if you are not able to get a response from them in such a short notice.
If I do not hear back from you by close of business tomorrow, would it be ok to issue Priority Actions instead?
Further, would you agree to at least the amended mark description for the mark with the design? If you do, I would issue a combined Examiner’s Amendment/Priority Action for that application.
Thank you.
Sincerely,
/Janet H. Lee/
Janet H. Lee
United States Patent & Trademark Office (USPTO)
600 Dulany St.
Alexandria, VA 22314
(571) 272-1053
From: Duane M. Byers <dmb@nixonvan.com>
Sent: Thursday, December 3, 2020 11:08 PM
To: Lee, Janet <janet.lee6@USPTO.GOV>
Cc: Duane M. Byers <dmb@nixonvan.com>; Virginia Hamel <VHamel@nixonvan.com>
Subject: Re: US Trademark Applications Owned by DSM IP Assets B.V. / NV refs 4662-4063, -4072, -4055, -4074
Hi Ms. Lee,
Thank you for your detailed email concerning four US trademark applications owned by DSM.
I hope that you will be pleased to know that we can take care of two of the four applications at this time, as indicated by:
1. In reply to your statements "For Serial No. 90203550 (LIFE’S OMEGA with design), the wording “OMEGA†in the mark implies that the goods contain omega fatty acids. If the goods do not contain omega fatty acids, the mark would be refused for being deceptive under Section 2(a). If the goods do contain omega fatty acids, the wording “OMEGA†must be disclaimed, and the wording “containing omega fatty acids†must be added to each of the items in the identification of goods," we agree with the disclaimer of "OMEGA," and we agree with your amendment to the identification of goods -- or feel free to add this phrase at the end of the existing wording: "; all of the foregoing containing omega fatty acids" -- like we used in US Registration No. 5541182. Please feel free to proceed with an Examiner's Amendment to reflect these items so that the application can be passed to publication.
2. In reply to your statements "For Serial No. 90223568 (AZO DUAL PROTECTION), the wording “DUAL PROTECTION†must be disclaimed because the wording indicates that the supplements provide protection from harm in two ways," we agree with the disclaimer of "DUAL PROTECTION." Please feel free to proceed with an Examiner's Amendment to reflect this item so that the application can be passed to publication.
We will be back in touch about the other two applications. We understand that you need to know by Monday.
Have a nice and safe weekend.
Kind regards,
Duane
/dmb/
Duane M. Byers, attorney of record and active member of the Virginia bar
Nixon & Vanderhye P.C.
901 N. Glebe Road, 11th Floor
Arlington, VA 22203 USA
Phone: 1-703-786-7421
From: Lee, Janet <janet.lee6@USPTO.GOV>
Sent: Thursday, December 3, 2020 10:41 PM
To: Duane M. Byers
Cc: NIXONPTOMAIL
Subject: Trademark Applications Owned by DSM IP Assets B.V.
Hello, Mr. Byers,
My name is Janet Lee and I am the examining attorney for Trademark Application Serial Nos. 90201048 (VERAX in standard characters), 90231215 (VERAX with design), 90203550 (LIFE’S OMEGA with design), and 90223568 (AZO DUAL PROTECTION). These applications have relatively simple issues that I hope we can resolve by examiner’s amendments.
In both applications Serial Nos. 90201048 and 90231215 (VERAX standard character and with design), the function of the software is vague and unclear in both classes. Specifically, it is unclear what it means to be for “animal managementâ€. Is it for tracking the animals? Is it for automation of feeding the animals? Could you further specify the function of the software in both classes?
For Serial No. 90231215 (VERAX with design), in addition to the issue regarding the identification of goods and services, the description of the mark must be amended because it is currently incomplete. I would like to suggest the following: The mark consists of an incomplete, single-line, orange triangle where the left side is curved into the triangle to overlap with the upper right side and three orange circles extending from the end of the curved line. To the right of the design is the wording VERAX in purple.
For Serial No. 90203550 (LIFE’S OMEGA with design), the wording “OMEGA†in the mark implies that the goods contain omega fatty acids. If the goods do not contain omega fatty acids, the mark would be refused for being deceptive under Section 2(a). If the goods do contain omega fatty acids, the wording “OMEGA†must be disclaimed, and the wording “containing omega fatty acids†must be added to each of the items in the identification of goods.
For Serial No. 90223568 (AZO DUAL PROTECTION), the wording “DUAL PROTECTION†must be disclaimed because the wording indicates that the supplements provide protection from harm in two ways.
I would greatly appreciate a response as soon as possible, but no later than close of business Monday, December 7.
Please feel free to contact me by email or phone (571-272-1053).
Thank you.
Sincerely,
/Janet H. Lee/
Janet H. Lee
United States Patent & Trademark Office (USPTO)
600 Dulany St.
Alexandria, VA 22314
(571) 272-1053