Notation to File

NOTE TO THE FILE

SERIAL NUMBER:            90453311

DATE:                                07/20/2021

NAME:                               lfox

NOTE:         

Searched:                                                             
     Google                            
     Lexis/Nexis                       
     OneLook
     Wikipedia
     Acronym Finder                         Protest evidence reviewed
     Other:

Checked:                                                             
     Geographic significance          
     Surname                          
     Translation
     ID with ID/CLASS mailbox

     Checked list of approved Canadian attorneys and agents

Discussed file with
Attorney/Applicant via:
        phone                               Left message with
    X   email                               Attorney/Applicant

     Requested Law Library search       X   Issued Examiner’s Amendment
     for:                                   and entered changes in TRADEUPS

        PRINT        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

From: Pierce, Jonathan M. <JPierce@porterhedges.com>
Sent: Tuesday, July 20, 2021 7:32 AM
To: Fox, Lyal <Lyal.Fox@USPTO.GOV>
Cc: Trademark Mail <TrademarkMail@porterhedges.com>
Subject: RE: U.S. Trademark Application Nos. 9045331, ANCHOR, and 90453326, [design of anchor]

 

Good morning Attorney Fox,

 

The applicant agrees to your proposed amendments and to the deletion of Class 36 from both applications.  Please issue an examiner’s amendment, and approve the applications for publication.

 

Thank you for your assistance.

 

Jonathan

 

From: Fox, Lyal <Lyal.Fox@USPTO.GOV>
Sent: Friday, July 16, 2021 10:19 AM
To: Pierce, Jonathan M. <JPierce@porterhedges.com>; Trademark Mail <TrademarkMail@porterhedges.com>
Subject: RE: U.S. Trademark Application Nos. 9045331, ANCHOR, and 90453326, [design of anchor]

 

Good morning Attorney Jonathan Pierce,

 

The prior pending application is 88609951, ANCHOR, and the registration is Registration No. 3041213, ANCORA, which translates to ANCHOR from Italian. Moreover, I have reviewed the applicant’s website and I’m not sure they provide “commodity brokerage” services as intend by the identification. These services refer to financial trading services like those provided by Abbott Futures: http://www.cmegroup.com/tools-information/find-a-broker/abbott-futures.html. Therefore, the applicant may have issues proving they provide Class 036 services at the SOU phase even they were allowed to proceed in that class.

 

If you have any additional questions about any of the proposed changes please feel free to reach out to me at the number below.

 

Regards,

Lyal Fox III

Trademark Examining Attorney

Law Office 113

571-270-7884

 

From: Pierce, Jonathan M. <JPierce@porterhedges.com>
Sent: Friday, July 16, 2021 7:57 AM
To: Fox, Lyal <Lyal.Fox@USPTO.GOV>; Trademark Mail <TrademarkMail@porterhedges.com>
Subject: RE: U.S. Trademark Application Nos. 9045331, ANCHOR, and 90453326, [design of anchor]

 

Thank you for the email below.  Can you provide me with the application number of the prior pending you reference? 

Jonathan M. Pierce | Partner Porter Hedges LLP

1000 Main St, 36th Floor | Houston, TX 77002

t 713.226.6694    e JPierce@porterhedges.com

Bio • Web • V-Card

From: Fox, Lyal <Lyal.Fox@USPTO.GOV>
Sent: Thursday, July 15, 2021 4:42 PM
To: Trademark Mail <TrademarkMail@porterhedges.com>
Cc: Pierce, Jonathan M. <JPierce@porterhedges.com>
Subject: U.S. Trademark Application Nos. 9045331, ANCHOR, and 90453326, [design of anchor]

 

Hello Attorney Jonathan Pierce,

 

I am the attorney assigned to U.S. Trademark Application Nos. 9045331, ANCHOR, and 90453326, [design of anchor]. I have reviewed the applications and there are minor issues preventing approval.

 

First, the identification of services in the applications is indefinite. The following is recommended (edits in bold):

 

            036: Commodity brokerage in the field of crude oil; Financial evaluation of costs relating to crude oil

 

039: Storage, distribution and transportation of crude oil by barrel, truck and pipeline; oilfield and heavy haul transportation, namely, transport by barrel, truck and pipeline

 

Second, there is a registered and a prior pending mark that present a bar to Class 036 for Application No. 9045331, ANCHOR, only. This can be overcome by deleting this class of goods from the application and proceeding with Class 039 only.

 

Please respond to this email ASAP advising if the above changes are acceptable. If so, I will amend the application via examiner’s amendment and approve the mark for publication.

 

If you would like to call and discuss the application my direct line is listed below.

 

Please be aware that I will need to refuse the application if I have not received your response by Wednesday, July 21, 2021, at 5 p.m. EST.

 

Regards,

Lyal Fox III

Trademark Examining Attorney

Law Office 113

571-270-7884