NOTE TO THE FILE
SERIAL NUMBER: 90358976
DATE: 03/23/2021
NAME: ehastykuzudisli
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: Hasty, Mary Beth
Sent: Tuesday, March 23, 2021 9:41 PM
To: Shane Cortesi <shane.cortesi@cortesilaw.com>
Subject: RE: USPTO Examiner's Amendment Request - SN 90358976 - REVHD
Dear Mr. Cortesi:
Thanks for your instructions. We will enter an Examiner’s Amendment and the application is expected to proceed towards publication thereafter. Have a good night.
Kind Regards,
/Mary Beth Hasty/
Trademark Examining Attorney
United States Patent & Trademark Office
Law Office 126
(571) 272-1596
From: Shane Cortesi <shane.cortesi@cortesilaw.com>
Sent: Tuesday, March 23, 2021 9:39 PM
To: Hasty, Mary Beth <marybeth.hasty@uspto.gov>
Subject: Re: USPTO Examiner's Amendment Request - SN 90358976 - REVHD
Thank you for your email
Your proposed description is acceptable
On Tue, Mar 23, 2021 at 8:35 PM Hasty, Mary Beth <marybeth.hasty@uspto.gov> wrote:
Dear Attorney Cortesi:
Thanks for your attention to this. Regrettably, the wording “drain pans for draining oil from wheel ends” would exceed the scope of “wheel replacement parts and accessories” and “parts and accessories for vehicle wheels” because these pans are not specifically parts and accessories made for vehicle wheels but rather have a separate and complementary use of being pans for draining oil. Additionally, “pans for draining oil” would be classified in either International Class 6 if made of metal, or International Class 20 if nonmetal.
As such, we can accept the below proposed modified identification:
Wheel replacement parts and accessories for heavy duty trucks and trailers, namely, wheel seals; Vehicle wheel seals; Parts and accessories for vehicle wheels, namely, wheel seals
Please let us have your instructions as to the proposed amended identification above.
Kind Regards,
/Mary Beth Hasty/
Trademark Examining Attorney
United States Patent & Trademark Office
Law Office 126
(571) 272-1596
From: Shane Cortesi <shane.cortesi@cortesilaw.com>
Sent: Tuesday, March 23, 2021 12:29 PM
To: Hasty, Mary Beth <marybeth.hasty@uspto.gov>
Subject: Re: USPTO Examiner's Amendment Request - SN 90358976 - REVHD
Thanks for your email.
I have spoken with my client. RevHD sells at least the following products under the mark:
Wheel Seals
Hub Caps
Drain Pans for draining the oil from wheel end
Hub caps are already covered in our earlier registration (Reg. No. 4816497)
I suggest amending the ID to read:
Wheel replacement parts and accessories for
vehicles, namely,heavy duty trucks and trailers, namely, wheel seals and drain pans for draining oil from wheel ends; Vehicle wheel seals; Parts and accessories for vehicle wheels, namely, wheel seals and drain pans for draining oil from wheel ends
We are open to other suggestions. I’m also available if you’d like to discuss on the phone
Note New Address & Office Phone
Shane V. Cortesi
Registered Patent Attorney
The Law Office of Shane V. Cortesi
Email: shane.cortesi@cortesilaw.com
Office Phone: 615-651-7401
Mobile: 703-725-0817 (Emergency Cases)
Website: www.cortesilaw.com
Notice: This email was sent by an attorney and may contain information that is confidential and protected by attorney-client privilege and the work product doctrine. If you received this message in error, please contact Shane at the address above and delete all copies of this message and any attachments.
From: "Hasty, Mary Beth" <marybeth.hasty@uspto.gov>
Date: Monday, March 22, 2021 at 5:07 PM
To: "shane.cortesi@cortesilaw.com" <shane.cortesi@cortesilaw.com>
Subject: USPTO Examiner's Amendment Request - SN 90358976 - REVHD
Dear Mr. Cortesi:
I am the examining attorney at the U.S. Patent and Trademark Office assigned to SN 90358976 for “REVHD”. I have reviewed the application, and there is one minor issue that can be corrected without the need for an Office Action.
IDENTIFICATION OF GOODS
We require an amended identification of the goods in International Class 12. The wording “wheel replacement parts and accessories” and “parts and accessories for vehicle wheels” is indefinite and must be clarified as to the specific items offered for sale. Further, while applicant used namely to modify which vehicles the replacement parts and accessories are sold for, the heavy duty trucks and trailers, the appropriate specification is for the products themselves. As such, please see the below revisions which clarify that the parts and accessories are being sold for trucks and trailers, but also include the namely to specify which products are being sold. Please see the proposed language below.
The following amended Identification of Goods is suggested, if accurate, with additions in bold and deletions in
strike through text:Class 12:
Wheel replacement parts and accessories for
vehicles, namely,heavy duty trucks and trailers, namely {hub caps and spindles for land vehicles}; Vehicle wheel seals; Parts and accessories for vehicle wheels, namely, {specify, e.g. vehicle wheel rims and structural parts therefor}Applicant is advised that amendments to the goods are permitted only if they clarify or limit them; amendments that add to or broaden the scope of the goods and/or services are not permitted. 37 C.F.R. §2.71(a).
Please let me know as soon as possible, ideally by close of business tomorrow, March 23, 2021 if you approve of the proposed amendments as described. If you agree, I can make the change for you via Examiner’s Amendment, and the application may proceed toward registration. If I don’t hear from you, an Office Action will be issued. Please let me know if you have any questions.
Best regards,
/Mary Beth Hasty/
Trademark Examining Attorney
United States Patent & Trademark Office
Law Office 126
(571) 272-1596
--
Note New Address & Office Phone
Shane V. Cortesi
Registered Patent Attorney
The Law Office of Shane V. Cortesi
424 Church Street, Suite 2000
Nashville, TN 37219
Email: shane.cortesi@cortesilaw.com
Office Phone: 615-651-7401
Mobile: 703-725-0817 (Emergency Cases)
Website: www.cortesilaw.com
Notice: This email was sent by an attorney and may contain information that is confidential and protected by attorney-client privilege and the work product doctrine. If you received this message in error, please contact Shane at the address above and delete all copies of this message and any attachments.