NOTE TO THE FILE
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` Protest evidence reviewed
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`SERIAL NUMBER:
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`90975958
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`DATE:
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`01/18/2022
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`NAME:
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`vcerda
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`NOTE:
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`Searched: Google Lexis/Nexis OneLook
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` Wikipedia
` Acronym Finder
` Other:
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`Checked: Geographic significance
` Surname
` Translation
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` ID with ID/CLASS mailbox
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` Checked list of approved Canadian attorneys and agents
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`Discussed file with
`Attorney/Applicant via:
` X phone
` email
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` Left message with
` Attorney/Applicant
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`From: LeeJen@gtlaw.com <LeeJen@gtlaw.com>
`Sent: Sunday, January 16, 2022 8:39 PM
`To: Cerda, Victor <Victor.Cerda@USPTO.GOV>
`Cc: 201518.020102.ACTIVE@DMS-NACOM.gtlaw.com
`Subject: RE: SHIAWASE BUTTER- US Serial Nos 90289722 and 90975958
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`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before responding, clicking on
`links, or opening attachments.
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`Dear Mr. Cerda:
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`Thank you very much for your e-mail! As tomorrow is a holiday, I will give you a call around 10am (ET) on Tuesday (11/18).
`Please let me know if this day/time doesn’t work for you.
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`Have a great rest of the weekend!
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`Best regards,
`Jennice
`
`Sang Eun "Jennice" Lee
`Associate
`
`Greenberg Traurig LLP
`2200 Ross Avenue, Suite 5200 | Dallas, TX 75201
`T +1 214.665.3712 | F +1 214 665 3601
`LeeJen@gtlaw.com | www.gtlaw.com | View GT Biography
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`From: Cerda, Victor <Victor.Cerda@USPTO.GOV>
`Sent: Sunday, January 16, 2022 7:31 PM
`To: Lee, Sang Eun Jennice (Assoc-DAL-IP-Tech) <LeeJen@gtlaw.com>
`Subject: RE: SHIAWASE BUTTER- US Serial Nos 90289722 and 90975958
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`*EXTERNAL TO GT*
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`Good evening:
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`Please call me at your convenience to discuss further. During the week is fine. A short conversation lends itself better to the
`resolution of your inquiry.
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`Best regards,
`
`Victor Cerda
`Trademark Examining Attorney – Law Office 123
`United States Patent & Trademark Office
`(571) 270-1280 | victor.cerda@uspto.gov
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`All informal e-mail communications relevant to this application will be placed in the official application record.
`
`From: LeeJen@gtlaw.com <LeeJen@gtlaw.com>
`Sent: Sunday, January 16, 2022 8:13 PM
`To: Cerda, Victor <Victor.Cerda@USPTO.GOV>
`Cc: 201518.020102.ACTIVE@DMS-NACOM.gtlaw.com
`Subject: SHIAWASE BUTTER- US Serial Nos 90289722 and 90975958
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before responding, clicking on
`links, or opening attachments.
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`Dear Mr. Cerda:
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`We represent Calbee, Inc. regarding the above-noted applications for SHIAWASE BUTTER in Japanese Characters. On
`October 27, 2021, we filed a Request to Divide as well as Statement of Use and Extension Request for relevant goods
`(Please refer to the prosecution history for the original application US Serial No. 90289722). We just received the attached
`Office Action for the child application US Serial No. 90975958.
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`We believe that the Serial Nos. were incorrectly designated to the original and child applications after the Request to Divide
`was filed. Specifically, pursuant to the attached Notice regarding Request to Divide, the followings should be the correct goods
`identified under each Serial Nos. (which are different from the current goods identified under each Serial Nos.):
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`US Serial No. 90289722 (Use-Based): Potato chips and potato-based snack foods flavored with butter; Potato chips,
`potato crisps, potato-based snack foods
`US Serial No. 90975958 (Intent-to-Use): French fried potatoes; Potato puffs; Potato snacks in the form of sticks; Potato
`snacks in the form of chips; Processed potatoes, cooked potatoes, namely, potato skins, baked potatoes, mashed
`potatoes; Purple sweet potato chips, purple sweet potato crisps; vegetable chips that are shrimp flavored; Vegetable
`based snack food; Vegetable based snack food, namely, sweet potato based snack food; Bean based snack food; Pea
`based snack food; Fruit based snack food; Vegetable based snack foods that are onion flavored; Roasted edamame
`beans and soybeans; Fried potatoes in the form of chips and sticks; Vegetable chips
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`For your reference, we are attaching the Statement of Use and specimens we filed for “Potato chips and potato-based snack
`foods flavored with butter; Potato chips, potato crisps, potato-based snack foods” on October 27, 2021, which are also in the
`prosecution history for US Serial No. 90289722.
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`Lastly, we are attaching the email that we sent to the USPTO regarding this issue right after the attached Notice regarding
`Request to Divide was issued, which we believe was not addressed yet.
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`In light of the above, please let us know if you would need further information to proceed or would like to discuss.
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`Best regards,
`Jennice
`
`Sang Eun "Jennice" Lee
`Associate
`
`Greenberg Traurig LLP
`2200 Ross Avenue, Suite 5200 | Dallas, TX 75201
`T +1 214.665.3712 | F +1 214 665 3601
`LeeJen@gtlaw.com | www.gtlaw.com | View GT Biography
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`If you are not an intended recipient of confidential and privileged information in this email, please delete it, notify us immediately at
`postmaster@gtlaw.com, and do not use or disseminate the information.
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` Sent to TICRS as Serial Number: 90289722
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