NOTE TO THE FILE
`
`          Protest evidence reviewed
`
`SERIAL NUMBER:            
`
`88291615
`
`DATE:                               
`
`04/23/2019
`
`NAME:                              
`
`jgagliardi
`
`NOTE:         
`
`Searched:                                                                    Google                                   Lexis/Nexis                              OneLook
`
`      Wikipedia
`      Acronym Finder                 
`      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                      
` X    email                         
`
`   
`
`      Left message with
`      Attorney/Applicant
`
`      Requested Law Library search     
`     for:                                   and entered changes in TRADEUPS
`
` X    Issued Examiner’s Amendment
`
`DO NOT PRINT             Added design code in TRADEUPS
`PRINT          
`          
`      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:
`
`      OTHER:
`
`From: Cohen, Adam [mailto:Acohen@beckerlawyers.com]
`Sent: Friday, April 19, 2019 12:55 PM
`To: Gagliardi, Jeanine <Jeanine.Gagliardi@USPTO.GOV>; Cohen, Adam <Acohen@beckerlawyers.com>
`Cc: Cohen, Adam <Acohen@beckerlawyers.com>; Matlock, Mark <MMatlock@beckerlawyers.com>; Farkas, Rachel
`<RFarkas@beckerlawyers.com>
`Subject: RE: U.S. Trademark Application for BRAND LOBBYING (Serial No. 88291615) - clarification of applicant's entity
`type, disclaimer, amended identification of services
`
`Jeanine:
`
`Thank you very much for the email below. As a preliminary response, please see my comments to your email below in RED.
`Adam
`
`   
`  
` 
` 
`

`

`From: Gagliardi, Jeanine [mailto:Jeanine.Gagliardi@USPTO.GOV]
`Sent: Friday, April 19, 2019 9:25 AM
`To: acohen@beckerlawyers.com
`Subject: U.S. Trademark Application for BRAND LOBBYING (Serial No. 88291615) - clarification of applicant's entity type,
`disclaimer, amended identification of services
`
`Dear Counsel,
`
` I
`
` am examining the above-referenced trademark application.  There are several issues, and I am writing to see if we can resolve them by
`agreement.
`
`(1)   The applicant’s name includes the designation “P.A.”, but the entity type is set forth is a corporation. “P.A.” generally identifies
`a professional association rather than a corporation.  This inconsistency must be clarified.  If the applicant is a professional
`association, I can amend the entity type if you would let me know whether it is incorporated or unincorporated and provide its state
`
`of organization.  If the applicant is a corporation, please confirm that, in this case, corporation is the correct entity type.  
`The application is a professional services corporation. PLEASE SEE Section 621.12 of the Florida Statutes (emphasis added)
`which reads as follows:
`
`621.12 Identification with individual shareholders or individual members.—
`
`                 (1) The name of a corporation or limited liability company organized under this act may contain the last names of
`
`In the case of a professional corporation, the words “professional association” or the
`
`some or all of the individual shareholders or individual members and may contain the last names of retired or deceased former
`individual
`shareholders or individual members of the corporation, limited liability company, a predecessor corporation or limited liability
`company, or partnership.
`                (2) The name shall also contain:
`                                (a) The word “chartered”; or
`                                (b)
`                                                1.
`abbreviation “P.A .”; or
`                                                2. In the case of a professional limited liability company formed before January 1, 2014, the
`words “professional limited company” or “professional limited liability company,” the abbreviation “P.L.” or “P.L.L.C.” or the
`designation “PL” or “PLLC,” in lieu of the words “limited company” or “limited liability company,” or the abbreviation “L.C.”
`or “L.L.C.” or the designation “LC” or “LLC” as otherwise required under s. 605.0112 or former s. 608.406.
`                                                3. In the case of a professional limited liability company formed on or after January 1, 2014, the
`words “professional limited liability company,” the abbreviation “P.L.L.C.” or the designation “PLLC,” in lieu of the words
`“limited liability company,” or the abbreviation “L.L.C.” or the designation “LLC” as otherwise required under s. 605.0112.
`                (3) In the case of a corporation, the use of the word “company,” “corporation,” or “incorporated” or any other
`word, abbreviation, affix, or prefix indicating that it is a corporation in the corporate name of a corporation organized under this
`act, other than the word “chartered” or the words “professional association” or the abbreviation “P.A.,” is specifically
`prohibited.
`                (4) It shall be permissible, however, for the corporation or limited liability company to render professional services
`and to exercise its authorized powers under a name which is identical to its name or contains any one or more of the last
`names of any shareholder or member included in such name except that the word “chartered,” the words “professional
`association,” “professional limited company,” or “professional limited liability company,” the abbreviations “P.A.,” “P.L.,” or
`“P.L.L.C.,” or the designation “PL” or “PLLC” may be omitted, provided that the corporation or limited liability company has
`first registered the name to be so used in the manner required for the registration of fictitious names.”
`
`(2)   The application includes a disclaimer of all of the wording in the mark.  However, an entire mark may not be disclaimed.  The
`wording LOBBYING must be disclaimed for lobbying services, but the wording BRAND does not appear to be descriptive of
`lobbying services.  Accordingly, I would propose amending the disclaimer such that it is limited to LOBBYING.
`
`Agreed. Thank you for your input.
`
`(3)   The classification and identification of services must be amended.  The classification and identification in the application are:
`
`Class 045:        Providing legal and advocacy lobbying services at the local, state and federal levels of government
`
`The identification is overbroad because lobbying services are properly classified in International Class 035, and it is indefinite
`
` 
` 
` 
` 
` 
` 
` 
` 
` 
`

`

`because it does not specify the subject matter of the services.  
`I would propose the following amended identification (changes in bold):
`
`Class 035:        L
`
`obbying services, namely, promoting the interests of {indicate specific group, e.g., international
`businesses, real estate companies, nonprofit companies, etc.} at the local, state and federal levels of
`government in the fields of politics, legislation, and regulation
`
`Agreed.
`
`Since the client provides lobbying services for a variety of client, we suggest using the following:
`
`Class 035:        Lobbying services, namely, promoting the interests of natural persons, partnerships, domestic or
`foreign limited partnerships, domestic or foreign limited liability companies, domestic or foreign corporations, trusts,
`estates, associations or other similar business entities at the local, state and federal levels of government in the fields
`of politics, legislation, and regulation.
`
`Would you advise regarding the applicant’s entity type and let me know if you agree to entry of the amended disclaimer and amended
`identification of services?  If we are able to agree to amendments that resolve these issues by the end of the day on Wednesday, April 24, I
`can make the changes on my end so the application can proceed.
`
` I
`
` look forward to hearing from you.
`
`Very truly yours,
`Jeanine
`
` 
` 
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`