Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 77640424 has been amended as follows:

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

RESPONSE

            This paper is submitted in response to the Office Action sent from the U.S. Patent and Trademark Office on January 22, 2011 (the “Office Action”) in connection with Trademark Application No. 77/640,424, filed on behalf of the Applicant, The MITRE Corporation, for the mark TOPHAT in International Class 009 (“Applicant’s mark”).  Applicant’s response is below.

REMARKS

A.        Specimen Unacceptable

            The Office Action rejected the specimen as “not acceptable because it is an article that essentially consists of advertising material for goods.”  See the Office Action.  “Trademark Act Section 45 requires use of the mark ‘on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto.”  See the Office Action.

            Without acquiescing to the rejection and to further prosecution, Applicant submits a substitute specimen showing the TOPHAT mark used in commerce in connection with Applicant’s computer software goods.  More specifically, the specimen is a screen capture of the opening screen of the TopHat software.  The specimen shows the TOPHAT mark used on the goods (e.g., used on the computer software), as required by Section 45 of the Trademark Act.  15 U.S.C. § 1127.

            The Office Action states that Applicant must submit the following statement: “The substitute specimen was in use in commerce prior to the expiration of the deadline for filing the statement of use.”  Applicant has addressed this objection via the fillable-field feature of the Trademark Electronic Application System (“TEAS”) user interface.  For convenience, Applicant reproduces its response below.

The substitute specimen was in use in commerce prior to the expiration of the deadline for filing the statement of use.

            Applicant respectfully submits that the substitute specimen and statement, along with the remarks herein, address the issue raised in the Office Action and respectfully requests withdrawal thereof.

CONCLUSION

            Applicant respectfully requests reconsideration in light of the substitute specimen, statement and remarks above and submits the application is in condition for registration.  The Examining Attorney is cordially invited to call Applicant’s attorney of record at the phone number of record to discuss any further issues.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Computer software, namely, an application for hypothesis analysis of evidence in the field of evidence science; Computer software, namely, an application that accepts user-supplied information, evaluates hypotheses based on such user supplied information, and displays hypothesis analysis results indicative of strength of confirmation or disconfirmation of such hypotheses
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has 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. (15 U.S.C. Section 1051(b)).

In International Class 009, the mark was first used at least as early as 06/30/2010 and first used in commerce at least as early as 06/30/2010.

Proposed: Class 009 for Computer software, namely, an application for hypothesis analysis of evidence in the field of evidence science; Computer software, namely, an application that accepts user-supplied information, evaluates hypotheses based on such user supplied information, and displays hypothesis analysis results indicative of strength of confirmation or disconfirmation of such hypotheses

Deleted Filing Basis: 1(b)
In International Class 009, the mark was first used at least as early as 06/30/2010. and first used in commerce at least as early as 06/30/2010.

Applicant hereby submits a new specimen for Class 009. The specimen(s) submitted consists of a screen capture of the opening screen of the TopHat software.
"The substitute (or new, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use].
Original PDF file:
SPU0-1521785197-174043681_._MTR-601_Substitute_Specimen.pdf
Converted PDF file(s) (1 page)
Specimen File1

SIGNATURE(S)
Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant has 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); and/or the applicant has had a bona fide intention to exercise legitimate control over the use of the mark in commerce by its members. 37 C.F. R. Sec. 2.44. 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 and/or services listed in the application as of the application filing date or as of the date of any submitted allegation of use. 37 C.F.R. Secs. 2.34(a)(1)(i); and/or the applicant has exercised legitimate control over the use of the mark in commerce by its members. 37 C.F.R. Sec. 2.44. 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. Section 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. Section 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: /Julie A. Bowen/      Date: 07/20/2011
Signatory's Name: Julie A. Bowen
Signatory's Position: Associate General Counsel

Response Signature
Signature: /Rebecca N. Barnes/     Date: 07/20/2011
Signatory's Name: Rebecca N. Barnes
Signatory's Position: Attorney of Record, MA bar member

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: 77640424
Internet Transmission Date: Wed Jul 20 14:46:37 EDT 2011
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XX-2011072014463752
4430-77640424-4808aea6d24b713a53fa552e6d
d5631e9-N/A-N/A-20110719174043681217