NOTE TO THE FILE
SERIAL NUMBER: 90453767
DATE: 06/22/2021
NAME: ekon
NOTE:
From: Gail I. Nevius Abbas <gneviusabbas@prangerlaw.com>
Sent: Monday, June 21, 2021 3:55 PM
To: Kon, Elissa Garber <ElissaGarber.Kon@USPTO.GOV>; Holly Pranger <hpranger@prangerlaw.com>; Ruhi Kumar Uberoi <RUberoi@prangerlaw.com>; Pranger Paralegal <paralegal@prangerlaw.com>; Trademark Pranger Law <trademark@prangerlaw.com>
Subject: Re: Re Trademark Applications for NYLON #90453767 and NYLON GUYS #90390838
CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before responding, clicking on links, or opening attachments.
Dear Elissa,
Yes, thank you, I can reply as to US TM App 90390838 NYLON GUYS. Will you please enter an Examiner's Amendment, to:
- revise the description to: Class 41: Providing on-line non-downloadable general feature magazines; Providing online non-downloadable electronic publications in the nature of magazines in the field of general interest, pop culture and fashion; providing on-line non-downloadable publications in the nature of general interest, pop culture and fashion magazines
and
- disclaim GUYS
I am still checking as to US TM App 90453767 for NYLON.
Sincerely,
Gail
Gail I. Nevius Abbas
Partner | Pranger Law PC
88 Guy Place, Suite 405 | San Francisco, California 94105
Tel +1 415-885-9800 Mobile: +1 650-787-1780
CONFIDENTIALITY NOTICE: If you are not the intended recipient, please delete and notify us asap. Distributing, copying or other use prohibited.
From: Kon, Elissa Garber <ElissaGarber.Kon@USPTO.GOV>
Sent: Monday, June 21, 2021 12:38 PM
To: Gail I. Nevius Abbas <gneviusabbas@prangerlaw.com>; Holly Pranger <hpranger@prangerlaw.com>; Ruhi Kumar Uberoi <RUberoi@prangerlaw.com>; Pranger Paralegal <paralegal@prangerlaw.com>; Trademark Pranger Law <trademark@prangerlaw.com>
Subject: Re Trademark Applications for NYLON #90453767 and NYLON GUYS #90390838
*EXTERNAL EMAIL*
Hi, Gail
Checking in to see whether you have heard back from your client. Thank you.
/Elissa Garber Kon/
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 106
phone: (571) 272-9181
email: elissagarber.kon@uspto.gov
Notice to applicants and attorneys: relevant e-mail communications will be uploaded to the official application record in accordance with 37 C.F.R. §2.191 and TMEP §§709.04 - .05.
From: Gail I. Nevius Abbas <gneviusabbas@prangerlaw.com>
Sent: Friday, June 18, 2021 1:34 PM
To: Kon, Elissa Garber <ElissaGarber.Kon@USPTO.GOV>; Holly Pranger <hpranger@prangerlaw.com>; Ruhi Kumar Uberoi <RUberoi@prangerlaw.com>; Pranger Paralegal <paralegal@prangerlaw.com>; Trademark Pranger Law <trademark@prangerlaw.com>
Subject: Re: Re Trademark Applications for NYLON #90453767 and NYLON GUYS #90390838
CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before responding, clicking on links, or opening attachments.
Dear Elissa,
Thank you - I shared this with our client today, but they are closed for Juneteenth. Likely I will hear from them next Monday / next week. If that is too long, please issue the office actions. Thank you for your patience.
Sincerely,
Gail
Gail I. Nevius Abbas
Partner | Pranger Law PC
88 Guy Place, Suite 405 | San Francisco, California 94105
Tel +1 415-885-9800 Mobile: +1 650-787-1780
CONFIDENTIALITY NOTICE: If you are not the intended recipient, please delete and notify us asap. Distributing, copying or other use prohibited.
From: Kon, Elissa Garber <ElissaGarber.Kon@USPTO.GOV>
Sent: Thursday, June 17, 2021 1:32 PM
To: Gail I. Nevius Abbas <gneviusabbas@prangerlaw.com>; Holly Pranger <hpranger@prangerlaw.com>; Ruhi Kumar Uberoi <RUberoi@prangerlaw.com>; Pranger Paralegal <paralegal@prangerlaw.com>; Trademark Pranger Law <trademark@prangerlaw.com>
Subject: Re Trademark Applications for NYLON #90453767 and NYLON GUYS #90390838
*EXTERNAL EMAIL*
Dear Gail
I’m checking in to see whether you have heard back from your client regarding the minor changes proposed below. Thank you.
/Elissa Garber Kon/
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 106
phone: (571) 272-9181
email: elissagarber.kon@uspto.gov
Notice to applicants and attorneys: relevant e-mail communications will be uploaded to the official application record in accordance with 37 C.F.R. §2.191 and TMEP §§709.04 - .05.
From: Gail I. Nevius Abbas <gneviusabbas@prangerlaw.com>
Sent: Tuesday, June 15, 2021 3:22 PM
To: Kon, Elissa Garber <ElissaGarber.Kon@USPTO.GOV>; Holly Pranger <hpranger@prangerlaw.com>; Ruhi Kumar Uberoi <RUberoi@prangerlaw.com>; Pranger Paralegal <paralegal@prangerlaw.com>; Trademark Pranger Law <trademark@prangerlaw.com>
Subject: Re: Re Trademark Applications for NYLON #90453767 and NYLON GUYS #90390838
CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before responding, clicking on links, or opening attachments.
Dear Ms. Kon,
Yes, received, thank you! I will share the communication with our client, and write again as soon as possible. If you have a short turn-around time remaining, please issue the office action and we'll go from there.
Sincerely,
Gail
Gail I. Nevius Abbas
Partner | Pranger Law PC
88 Guy Place, Suite 405 | San Francisco, California 94105
Tel +1 415-885-9800 Mobile: +1 650-787-1780
CONFIDENTIALITY NOTICE: If you are not the intended recipient, please delete and notify us asap. Distributing, copying or other use prohibited.
From: Kon, Elissa Garber <ElissaGarber.Kon@USPTO.GOV>
Sent: Tuesday, June 15, 2021 11:10 AM
To: Holly Pranger <hpranger@prangerlaw.com>; Gail I. Nevius Abbas <gneviusabbas@prangerlaw.com>; Ruhi Kumar Uberoi <RUberoi@prangerlaw.com>; Pranger Paralegal <paralegal@prangerlaw.com>; Trademark Pranger Law <trademark@prangerlaw.com>
Subject: Re Trademark Applications for NYLON #90453767 and NYLON GUYS #90390838
*EXTERNAL EMAIL*
Good afternoon
Would you kindly reply to my email below so I know it has been received? Please let me know whether we can resolve these issues by examiner’s amendment. Thank you!
/Elissa Garber Kon/
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 106
phone: (571) 272-9181
email: elissagarber.kon@uspto.gov
Notice to applicants and attorneys: relevant e-mail communications will be uploaded to the official application record in accordance with 37 C.F.R. §2.191 and TMEP §§709.04 - .05.
From: Kon, Elissa Garber
Sent: Thursday, June 10, 2021 1:38 PM
To: hpranger@prangerlaw.com; gabbas@prangerlaw.com; ruberoi@prangerlaw.com; paralegal@prangerlaw.com; trademark@prangerlaw.com
Subject: Re Trademark Applications for NYLON #90453767 and NYLON GUYS #90390838
Dear Ms. Prager and/or Ms. Abbas
I am the trademark examining attorney to whom these applications have been assigned. There are minor issues that we can resolve by examiner's amendment, based on your reply to this email or a phone call.
Re NYLON GUYS, SN 90390838:
1) The applicant must disclaim the descriptive term GUYS because these online publications are broad enough to include publications about or directed toward guys, or men. The applicant disclaimed GUYS in related marks, in Reg. Nos. 4668158, 4672359 and 3238939. The statement should read as follows:
No claim is made to the exclusive right to use "GUYS" apart from the mark as shown.
2) The applicant must amend the ID to indicate that the online publications at the end are nondownloadable, to keep them in Class 41. If they are downloadable, then they would be in Class 9. For Class 41, I propose the following:
Class 41: Providing on-line non-downloadable general feature magazines; Providing online non-downloadable electronic publications in the nature of magazines in the field of general interest, pop culture and fashion; providing on-line, non-downloadable publications in the nature of general interest, pop culture and fashion magazines
Re NYLON, 90453767
The applicant must amend the ID to indicate that the publications are printed, to keep them in Class 16. If they are downloadable, then they would be in Class 9, and if they are online, non-downloadable, then they would be in Class 41. For Class 16, I propose the following:
Class 16: printed general feature magazines; printed magazines in the fields of general interest, pop culture and fashion; printed books in the fields of fashion, beauty, music, entertainment and/or culture
If the applicant wishes to amend either application to include downloadable publications in Class 9, or any other classes noted above, then please let me know and I can provide instructions for doing so.
I would be happy to enter these amendments for you, and move the application forward. Please tell me how you want to proceed or if you have questions. There is no fee due for my making these changes for you.
Thank you.
/Elissa Garber Kon/
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 106
phone: (571) 272-9181
email: elissagarber.kon@uspto.gov
Notice to applicants and attorneys: relevant e-mail communications will be uploaded to the official application record in accordance with 37 C.F.R. §2.191 and TMEP §§709.04 - .05.