NOTE TO THE FILE
SERIAL NUMBER: 90238629
DATE: 03/11/2021
NAME: ssnabb
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 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: Snabb, Sandra
Sent: Thursday, March 4, 2021 9:11 PM
To: BAnderson@perkinscoie.com
Cc: pctrademarks@perkinscoie.com
Subject: Examiner's Amendments suggested - U.S. Trademark Application Serial Nos. 90238629 ("PETRA"), 90240804 ("PETRA"), 90240811 ("PETRA"), 90240824 ("PETRA"), and 90240835 ("PETRA")
Dear Mr. Anderson,
I have reviewed Serial Nos. 90238629 ("PETRA"), 90240804 ("PETRA"), 90240811 ("PETRA"), 90240824 ("PETRA"), and 90240835 ("PETRA") and will be able to approve the applications for publication, if you authorize Examiner’s Amendments for the following:
For Serial Nos. 90240804 ("PETRA"), 90240811 ("PETRA"), 90240824 ("PETRA"), and 90240835 ("PETRA")
The description of the mark must be amended to include the triangle design elements. The following is suggested, if accurate:
The mark consists of the term "PETRA" with a circle design located to the left of the term. The circle design consists of three sets of circles, with a vertical line dividing the design. The inner circle includes a shaded triangle at the upper right end of the circle and a shaded triangle at the bottom left end of the circle.
For Serial Nos. 90238629 (“PETRA”) and 90240824 ("PETRA")
The identification of services must be clarified.
Specifically, “electrical transmission construction services” must be clarified because “electrical transmission” is not clear as to the type of structure that is to be constructed.
Additionally “leasing of tunnels, rights to subsurface real estate, and underground structures” is considered indefinite and broad. “Leasing services” classification depends, in principle, on the services provided by means of the leased goods, e.g., leasing of construction equipment is in Class 37, leasing of telephones is in Class 38, and leasing of motor vehicles are in Class 39. See TMEP 1401.02(a). Further, “leasing of real property” is classified in International Class 036 and the leasing of rights is considered a legal service in International Class 045 (see analogous ID Manual entries TERM ID 045-2571, 045-2572, 045-1177, 045-1012, and 045-806).
The following is suggested, if accurate:
International Class 036: Leasing of real property in the nature of tunnels and underground structures
International Class 037: Construction services, namely, underground drilling of tunnels, utility lines, and underground structures; construction of utility lines;
electrical transmission construction servicesconstruction of electrical transmission towers; Construction management of tunnels and underground structures for others; leasing of tunnels, rights to subsurface real estate, and underground structures
International Class 045: Leasing of property rights to subsurface real estate
If applicant wishes to add one or more classes to the application, applicant will have to comply with the multiple-class application requirements, including additional class fees. If applicant wishes to add classes to the applications, I can issue joint Priority Action / Examiner Amendments to make the identification amendments and require the outstanding fees.
Please respond by close of business on Wednesday, March 10, 2021 and let me know if you authorize Examiner’s Amendments for any or all of the above. Please specifically note how you would like to proceed with the identification issue.
I have just approved for publication the co-pending applications Serial Nos. 90238617 (“PETRA”), 90238620 (“PETRA”), and 90238632 (“PETRA”).
Please contact me if you have any questions.
Best,
Sandra
/Sandra Snabb/
Examining Attorney
Law Office 120
571-272-4633
Please note that all relevant email communications will be placed in the official application record; however, an email communication will not be accepted as a response to an Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §2.191; TMEP §§304.01-.02; 709.04-.05.