Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

---

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 79122807 SOLUTION (Stylized and/or with Design, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=79122807) has been amended as follows:

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

Argument for Refusal to Register Under Section 2(d)

 

The Examining Attorney has noted the potential refusal of registration of Applicant's mark under Section 2(d) of the Trademark Act, citing a possible likelihood of confusion with U.S. Application No. 85264826 for SOLUCION. Applicant respectfully notes that this application is now registered as U.S. Reg. No. 4332362, but that during prosecution the applicant for the cited application deleted Class 40, so that the cited mark is now only registered for Class 35.   Applicant therefore submits that this mark is no longer an obstacle to registration of Applicant’s mark, and respectfully requests that the mark be passed for publication.

 

Information Request

 

The Examining Attorney has requested sample advertising or promotional materials.  Applicant submits with this response a brochure that showcases the nature of Applicant’s goods and services, which relate primarily to plastic molding (as a service offered to third parties) and to products produced through its long-standing plastic molding expertise. 

 

The Examining Attorney has also posed two specific questions:

 

1. Is applicant providing or seeking answers to questions or problems posed by its customers?

Applicant responds:  No, no more than any other business.  Applicant is not a consultant, but rather provides plastic molding services based on specifications provided by its customers.  Applicant’s expertise centers on creating metal molds that will produce the plastic products needed by its customers, but Applicant does not teach these molding techniques to its customers.

 

2. Is applicant developing, testing, or analyzing solutions for the treatment or manufacture of plastics?

Applicant responds:  No.  Applicant does not treat or manufacture plastic.  Applicant rather uses raw plastic as an input for creation of finished goods ordered by its customers.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 007 for Moulds, parts of machines; injection moulds; moulds for moulding of thermoplastic materials; moulds for moulding plastics products, parts of machines; moulds for injection moulding tools; forging moulds; injectors and injection systems for plastic and thermoplastic materials; injection moulding machines; injection plastic moulding machines; injection presses; metal stamping presses
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Moulds, parts of machines; Machine parts, namely, molds for use in the manufacture of molded plastic products, tools, seminconductors; injection moulds; machine parts, namely, injection molds for use in the manufacture of molded plastic products, tools, seminconductors; moulds for moulding of thermoplastic materials; molds for molding of thermoplastic materials for use in the manufacture of a wide variety of plastic products in the field of automotive, household products, air conditioning equipment, defense, construction, household electrical appliances, electronics, plumbing, medical devices, optics, packaging materials, sporting equipment; moulds for moulding plastics products, parts of machines; machine parts, namely, injection moulds for use in the manufacture of molded plastic products, tools, seminconductors; moulds for injection moulding tools; forging moulds; injectors and injection systems for plastic and thermoplastic materials; injection moulding machines; injection plastic moulding machines; injection presses; metal stamping pressesClass 007 for Machine parts, namely, molds for use in the manufacture of molded plastic products, tools, seminconductors; machine parts, namely, injection molds for use in the manufacture of molded plastic products, tools, seminconductors; molds for molding of thermoplastic materials for use in the manufacture of a wide variety of plastic products in the field of automotive, household products, air conditioning equipment, defense, construction, household electrical appliances, electronics, plumbing, medical devices, optics, packaging materials, sporting equipment; machine parts, namely, injection moulds for use in the manufacture of molded plastic products, tools, seminconductors

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 040 for Custom manufacture of molds for use in industry, treatment of plastic materials to produce plastic mouldings, moulding of thermoplastics, treating for stamping of metal, metal stamping, engraving of molds, custom assembling of materials for others
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Custom manufacture of molds for use in industry, treatment of plastic materials to produce plastic mouldings, moulding of thermoplastics, treating for stamping of metal, metal stamping, engraving of molds, custom assembling of materials for others; Custom manufacture of molds for use in industry, treatment in the nature of custom molding of plastic materials to produce plastic moldings for others, custom molding of thermoplastics for others, treating for stamping of metal, metal stamping, engraving of molds, custom assembling of materials for othersClass 040 for Custom manufacture of molds for use in industry, treatment in the nature of custom molding of plastic materials to produce plastic moldings for others, custom molding of thermoplastics for others, treating for stamping of metal, metal stamping, engraving of molds, custom assembling of materials for others

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Computer aided part and mould design services, design of moulds for casting of metal, designing, production and testing of models and prototypes, design of 3D mathematical models, consulting in the field of mechanical design, technical testing services, technical consultancy relating to testing, research and development of new products for others, research services in the field of engineering, industrial analysis and research services, technological analysis services, analysis and evaluation of materials
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Computer aided part and mould design services, design of moulds for casting of metal, designing, production and testing of models and prototypes, design of 3D mathematical models, consulting in the field of mechanical design, technical testing services, technical consultancy relating to testing, research and development of new products for others, research services in the field of engineering, industrial analysis and research services, technological analysis services, analysis and evaluation of materials; Computer aided part and mold design services, design of molds for casting of metal, product design and development, namely, designing, production and testing of models and prototypes, and design of 3D mathematical models, consulting in the field of mechanical design, technical testing services, namely, testing in the field of machinery design, technical consultancy relating to testing, research and development of new products for others, research services in the field of engineering, industrial scientific and product industrial analysis and research services, technological scientific analysis services, namely, analysis and evaluation of materials being product researchClass 042 for Computer aided part and mold design services, design of molds for casting of metal, product design and development, namely, designing, production and testing of models and prototypes, and design of 3D mathematical models, consulting in the field of mechanical design, technical testing services, namely, testing in the field of machinery design, technical consultancy relating to testing, research and development of new products for others, research services in the field of engineering, industrial scientific and product industrial analysis and research services, technological scientific analysis services, namely, analysis and evaluation of materials being product research

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

ADDITIONAL STATEMENTS
Significance of wording, letter(s), or numeral(s)
SOLUTION appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as applied to the goods/services listed in the application, or any geographical significance.


SIGNATURE(S)
Response Signature
Signature: /Nicholas Wells/     Date: 07/05/2013
Signatory's Name: Nicholas D. Wells
Signatory's Position: Attorney of record, New York bar member

Signatory's Phone Number: 801-444-7143

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: 79122807
Internet Transmission Date: Fri Jul 05 18:15:02 EDT 2013
TEAS Stamp: USPTO/ROA-XX.XX.XX.XXX-20130705181502441
699-79122807-500e0476d91f143c10aad05e9f3
9b98bde04c4b2f578c3f77289692ebcf3e-N/A-N
/A-20130705181224092178