Response to Office Action

PTO Form 1957 (Rev 9/2005)

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

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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. 85548785 MICROFLEX(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85548785) has been amended as follows:

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

The Examining Attorney has refused registration of Applicant’s mark based on cited Registration No. 2909194 which covers the mark MICROFLEX for “electronic controls and drives to operate brushless servo motors and stepper motors”. 

For the reasons set forth hereinafter, it is submitted that the cited registration should not be an obstacle to the registration of Applicant’s mark for the amended goods in the present application. 

The identification of goods has been amended to cover electrical wiring harnesses, not sold as land vehicle console parts, in Class 9 and electrical wiring harnesses, sold as land vehicle console parts in Class 12, wherein conductors and cables are organized into a customized flat ribbon configuration in accordance with a customer’s specific requirements.  The amended goods are significantly different from the electronic controls and drives to operate brushless servo motors and stepper motors in the cited registration. Secondly, Applicant’s goods would be purchased by sophisticated purchasers who would readily distinguish Applicant’s electrical wiring harnesses from the goods in the cited registration.  It is further noted that Applicant’s goods would be sold in different channels of trade and to different classes of purchasers than the goods in the cited registration, thereby further precluding any likelihood of confusion. 

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 017 for Electrical wiring harnesses

Applicant hereby adds the following class of goods/services to the application:
New: Class 009 (Original Class: 017 ) for ELECTRICAL WIRING HARNESSES, NOT SOLD AS LAND VEHICLE CONSOLE PARTS, WHEREIN CONDUCTORS AND CABLES ARE ORGANIZED INTO A CUSTOMIZED FLAT RIBBON CONFIGURATION IN ACCORDANCE WITH A CUSTOMER?S SPECIFIC REQUIREMENTS
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant hereby adds the following class of goods/services to the application:
New: Class 012 for ELECTRICAL WIRING HARNESSES, SOLD AS LAND VEHICLE CONSOLE PARTS, WHEREIN CONDUCTORS AND CABLES ARE ORGANIZED INTO A CUSTOMIZED FLAT RIBBON CONFIGURATION IN ACCORANCE WITH A CUSTOMER?S SPECIFIC REQUIREMENTS
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

ADDITIONAL STATEMENTS
Miscellaneous Statement
In response to the Examining Attorney's inquiry, the wording "MICROFLEX" has no significance in the electrical wiring harness trade or industry or as applied to the goods in the present application, and is not a "term of art" within Applicant's industry. The identification of goods has been amended generally in accordance with the suggestions of the Examining attorney and now includes goods in Classes 9 and 12. A filing fee of $325.00 is submitted herewith for the goods in International Class 12. In view of the above amendments and remarks, it is submitted that the present application should now be in condition for publication, and prompt passage to publication is earnestly solicited.


FEE(S)
Fee(s) in the amount of $325 is being submitted.

SIGNATURE(S)
Declaration Signature
I hereby elect to bypass the submission of a signed declaration, because I believe a declaration is not required by the rules of practice. I understand that the examining attorney could still, upon later review, require a signed declaration.
Response Signature
Signature: /fpp/     Date: 09/12/2012
Signatory's Name: Frank P. Presta
Signatory's Position: Attorney for Applicant

Signatory's Phone Number: 703-816-4041

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.

        
RAM Sale Number: 9994
RAM Accounting Date: 09/12/2012
        
Serial Number: 85548785
Internet Transmission Date: Wed Sep 12 10:51:49 EDT 2012
TEAS Stamp: USPTO/ROA-XXX.X.X.XXX-201209121051490932
03-85548785-49094b17fd0efc2546ca39f63a04
5b1a-CC-9994-20120912101221849481