NOTE TO THE FILE
SERIAL NUMBER: 90479116
DATE: 08/05/2021
NAME: dbrookshire
NOTE:
Searched:
X Google
X Lexis/Nexis
X OneLook
Wikipedia
Acronym Finder Protest evidence reviewed
Other:Checked:
Geographic significance
X 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:Please issue the Examiner's Amendment and make those changes. We do not wish to add an additional class at this time.
Thank you for your help.
From: Brookshire, David <David.Brookshire@USPTO.GOV>
Sent: Thursday, August 5, 2021 1:09 PM
To: Debby Winters <dwinters@cascade-lg.com>
Subject: RE: BILBY - Trademark Application Serial No. 90479116
Dear Debby Winters,
Applicant would need to add Class 10 to the application and pay the appropriate fees to add masks for protection against viral infection. If you’d like to keep those goods I can issue a priority action instead of an examiner’s amendment that will allow you to add the class and pay the necessary fee. Would you prefer that?
Regards,
David Brookshire
Examining Attorney
Law Office 114
(571) 272-7991
The recipient(s) should note that any relevant e-mail communication sent to the examining attorney, including e-mail communications that the recipient(s) considers privileged or confidential, will be made part of the application record and will be viewable by any member of the general public.
From: Debby Winters <dwinters@cascade-lg.com>
Sent: Thursday, August 5, 2021 2:00 PM
To: Brookshire, David <David.Brookshire@USPTO.GOV>
Subject: Re: BILBY - Trademark Application Serial No. 90479116
CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before responding, clicking on links, or opening attachments.
Hi, Examiner Brookshire.
Thank you for your email. The description you have written looks good. We also wanted to include face mask like the ones used now for Covid, not medical ones, but ones made from material and sold by many clothing manufacturers. How can we add that?
Best,
Debby
From: Brookshire, David <David.Brookshire@USPTO.GOV>
Sent: Thursday, August 5, 2021 12:40 PM
To: Debby Winters <dwinters@cascade-lg.com>
Subject: BILBY - Trademark Application Serial No. 90479116
Dear Debby Winters,
I am the trademark examiner assigned to the mark BILBY in Trademark Application Serial No. 90479116. There are some minor issues with the identification of goods that need to be addressed before the application can proceed.
First, the wording “Clothing, footwear, and headgear, namely…” creates ambiguity as to what wording is limited by the wording “namely”. Second, the wording “masks for the face” is overbroad. Masks are generally classified based on their functionality or use. For instance, sanitary and medical masks fall into Class 10 while masks ski masks and other masks worn as clothing fall into Class 25. Therefore we’ll need to revise the wording and classify it appropriately. Finally, I’d like to delete the repeated wording “balaclavas”. Applicant could adopt the following, if accurate:
Clothing, namely, shirts, t-shirts, long and short sleeve shirts, sweatshirts, pullovers, jackets, tank tops, shorts, pants, sweatpants, tights, belts, shoes, sandals, hats, beanies, balaclavas, gaiters; sun masks for the face, and ski masks
Please let me know how you’d like to address these issues as soon as possible and I can enter the changes into the record for you at which point the application should be in condition for publication.
Regards,
David Brookshire
Examining Attorney
Law Office 114
(571) 272-7991