Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 77111199 has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Claim under Section 2(f)

The Applicant generally maintains its traversal of the finding of descriptiveness, and in the alternative claims Section 2(f) distinctiveness.

In the Office Action dated January 9, 2008, the Trademark Office stated that the allegation of five years' use was insufficient to show acquired distinctiveness, and that additional evidence was needed.  This response provides additional evidence as requested.

As an initial matter, the Applicant direct's the Office's attention to the additional evidence already provided, namely the evidence of the 2000 Photonics Circle of Excellence Award as well as the R&D 100 award in 2001, both indicating the commercial success and industry recognition of the goods provided under the T-RAY mark.

The Applicant is also providing herewith additional evidence in the form of a Declaration from the President and General Manager of the Applicant.  The Declaration includes a significant amount of evidence regarding length and exclusivity of use of the T-RAY mark, the advertising activities of the Applicant; and Applicant's efforts to associate the T-RAY mark with the source of the goods.

In particular, the evidence in the Declaration includes:

• information regarding first use of the T-RAY mark at least as early as January 2000
  
• the substantially exclusive and continuous use of the mark since that time
  
• the extent of the sales of goods under the mark
  
• specimens of various goods bearing the mark
  
• a product brochure
• information regarding the quantity of advertising expeditures
• examples of the advertising
• a non-exhaustive list of over 50 exhibitions and conferences where the goods and mark have been marketed
  
• examples of the materials presented at the exhibitions and conferences
• industry awards received by the Applicant related to the goods and the mark
• examples of third party articles
• excerpts from industry leading books that positively identify Applicant's mark and goods

It is respectfully submitted that the continuous and substantially exclusive use of the mark by the Applicant for over eight (8) years, coupled with the awards, books, articles and other evidence of industry recognition associating the mark with the Applicant, as well as the strong sales, the sophisticated purchasers, and the extensive advertising and promotoion of the goods (including over 50 exhibitions, trade shows and conferences), establishes that the purchasing public has come to view the proposed mark as an indicator of origin, and has acquired distinctiveness.  Favorable consideration is respectfully requested.

Conclusion

In view of all of the foregoing, Applicant respectfully requests that the rejection be reconsidered and withdrawn, and that this mark be passed to publication.  If the Trademark Examining Attorney believes that personal communication will expedite prosecution of this application, the Examining Attorney is invited to telephone the undersigned at (734) 302-6000.  Attorneys for Applicant are available to discuss any questions or issues raised by this Response and to assist the Examining Attorney in any other way.

ADDITIONAL STATEMENTS
Section 2(f), based on Evidence
"The mark has become distinctive of the goods/services, as demonstrated by the attached evidence. "
Original PDF file:
E2F1-1521602567-164626615_._T-Ray_Trademark_Declaration_070908__signed_.pdf
Converted PDF file(s) (15 pages)
2(f) evidence-1
2(f) evidence-2
2(f) evidence-3
2(f) evidence-4
2(f) evidence-5
2(f) evidence-6
2(f) evidence-7
2(f) evidence-8
2(f) evidence-9
2(f) evidence-10
2(f) evidence-11
2(f) evidence-12
2(f) evidence-13
2(f) evidence-14
2(f) evidence-15

SIGNATURE(S)
Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii). If the applicant is seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date. 37 C.F.R. Secs. 2.34(a)(1)(i). The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true.

Signature: /Michael N. Spink/      Date: 07/09/2008
Signatory's Name: Michael N. Spink
Signatory's Position: Attorney for Applicant

Response Signature
Signature: /Michael N. Spink/     Date: 07/09/2008
Signatory's Name: Michael N. Spink
Signatory's Position: Attorney for Applicant

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 77111199
Internet Transmission Date: Wed Jul 09 17:12:42 EDT 2008
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XX-2008070917124294
3675-77111199-420298512bd6ccb274daad2341
552f4f47-N/A-N/A-20080709164626615484