NOTE TO THE FILE
SERIAL NUMBER: 90357505
DATE: 06/08/2021
NAME: smcnamara
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:Dear Shana,
The client has approved the disclaimer and the proposed revisions to the description of services.
Thank you,
Maya
Maya L. Tarr
Special Trademark Counsel
Proskauer
Eleven Times Square
New York, NY 10036-8299
d 212.969.3305
f 212.969.2900
mtarr@proskauer.com
greenspaces
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From: McNamara, Shana <Shana.McNamara@uspto.gov>
Sent: Tuesday, June 8, 2021 12:05 PM
To: Tarr, Maya L. <MTarr@proskauer.com>
Cc: Pan, Yuming (Staci) <ypan@proskauer.com>
Subject: RE: Official USPTO Correspondence regarding Trademark Application 90357505 – THE NECESSITY RETAIL REIT, Docket No. 12536-243
This email originated from outside the Firm.
Hi Maya,
I wanted to check in to see if you were able to speak about this disclaimer with your client. I can give you an extension until this Thursday, June 10, 2021. If you will require additional time, I will have to send out an Office Action.
I look forward to your response,
Shana
From: Tarr, Maya L. <MTarr@proskauer.com>
Sent: Wednesday, June 2, 2021 12:10 PM
To: McNamara, Shana <Shana.McNamara@uspto.gov>
Cc: Pan, Yuming (Staci) <ypan@proskauer.com>
Subject: RE: Official USPTO Correspondence regarding Trademark Application 90357505 – THE NECESSITY RETAIL REIT, Docket No. 12536-243
CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before responding, clicking on links, or opening attachments.
Thank you, Ms. McNamara. We are checking with the client and will get back to you as soon as possible.
Maya L. Tarr
Special Trademark Counsel
Proskauer
Eleven Times Square
New York, NY 10036-8299
d 212.969.3305
f 212.969.2900
mtarr@proskauer.com
greenspaces
Please consider the environment before printing this email.
From: McNamara, Shana <Shana.McNamara@uspto.gov>
Sent: Tuesday, June 1, 2021 8:57 PM
To: Tarr, Maya L. <MTarr@proskauer.com>
Cc: TradeMark <trademark@proskauer.com>
Subject: Official USPTO Correspondence regarding Trademark Application 90357505 – THE NECESSITY RETAIL REIT, Docket No. 12536-243
This email originated from outside the Firm.
Good Afternoon,
I am the trademark examining attorney assigned to review the application for Serial No. 90357505 – THE NECESSITY RETAIL REIT.
I have reviewed the application, and it looks good. There are just two outstanding issues with this application that I was hoping to resolve with you by issuing an Examiner’s Amendment. An Examiner’s Amendment is a tool I can use to expedite the trademark application process. To do so, I need your authorization to make the following amendments to the application.
Specifically, the wording “Alternative investment services” in the identification of services must be clarified to more specifically describe the nature of the services. Applicant may substitute the following identification, if accurate: “alternative investment advisory services”.
Additionally, the wording “RETAIL REIT” must be disclaimed because it is descriptive of the user of the applied-for services. A disclaimer statement simply acknowledges that you are not claiming the exclusive right to use the word RETAIL REIT in connection with the applied-for services. It does not delete this wording from your trademark. The following disclaimer statement is proposed:
No claim is made to the exclusive right to use the wording “RETAIL REIT” apart from the mark as shown.
Please let me know if you agree to the proposed disclaimer and identification by phone or email by end of business on Thursday, June 3, 2021, and I can enter it into the record by Examiner’s Amendment and approve the mark for publication. Please do not hesitate to contact me if you have any questions.
Thanks,
Shana McNamara
Shana McNamara
Examining Attorney, Trademarks
United States Patent and Trademark Office
Law Office 125
(571) 270-0927