Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

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

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

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

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 87104392 MITRE SIMEX(Standard Characters, see http://uspto.report/TM/87104392/mark.png) has been amended as follows:

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

Registration of the mark MITRE SIMEX has been refused on the ground that the mark as applied for "designing and providing...tools...” is likely to be confused with the mark CYMEX of U.S. Registration No. 2,280,791 as registered for services in Class 42, i.e., computer software design for others. Although Applicant disputes such a likelihood of confusion, Applicant has amended its services to avoid any overlap between Applicant’s services and the Class 42 services of the registration for the CYMEX mark.  In view of this amendment, Applicant requests that the Examining Attorney reconsider and withdraw the refusal under Section 2(d). 

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 035 for Designing, hosting and/or conducting simulations; providing operationally realistic environments to enable the investigation of new concepts, technologies, platforms, systems, tactics, techniques, and procedures; providing operationally realistic environments for the testing of systems and technologies in the defense, security, and other fields; designing and providing simulation models, tools, and scenarios for various industries including, but not limited to, defense and security; designing and conducting experiments for the testing of systems and technologies in the defense, security, and other fields; computer software for controlling and executing simulation programs and/or training simulators

Applicant hereby adds the following class of goods/services to the application:
New: Class 042 (Original Class: 035 ) for Designing and conducting experiments in the nature of simulations of new concepts for others; experimentation and laboratory services to enable the investigation of new concepts, technologies, platforms, systems, tactics, techniques, and procedures; experimentation and laboratory services for the testing of systems and technologies in the defense, security, and other industries; designing and developing simulation tactics and responses, models, tools in the nature of military and civilian event simulators and detection and reaction simulators featuring planned scenarios for various industries including, but not limited to, defense and security; designing and conducting experiments for the testing of systems and technologies in the defense, security, and other industries; designing and conducting experiments to test and evaluate responses and reactions to planned and crisis action scenarios in the defense, security, and other industries; experimentation and laboratory services for the simulation, testing, and evaluation of response and reaction systems and technologies in the defense, security and other industries; experimentation and laboratory services having command and control systems, simulated weapons and sensors, and military and civilian operators to execute, test, and evaluate responses to planned and crisis action scenarios in the defense, security, and other industries; computer software for controlling and executing simulation programs and training simulators
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
Claim of Active Prior Registration(s)
The applicant claims ownership of active prior U.S. Registration Number(s) 0739181 and 3668701.


Significance of wording, letter(s), or numeral(s)
SIMEX appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as used in connection with the goods/services/collective membership organization listed in the application, or any geographical significance. The word(s) SIMEX has no meaning in a foreign language.


SIGNATURE(S)
Response Signature
Signature: /Tracy Durkin/     Date: 05/01/2017
Signatory's Name: Tracy-Gene G. Durkin
Signatory's Position: Attorney of Record, Washington, DC Bar Member

Signatory's Phone Number: (202) 371-2600

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 owner's/holder'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 owner/holder in this matter: (1) the owner/holder 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 owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder'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: 87104392
Internet Transmission Date: Mon May 01 17:27:43 EDT 2017
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20170501172743
094541-87104392-590fc61e6f9506f94384ba34
1914212e44029b8a43d2b48cc3a66231e44325-N
/A-N/A-20170430174737643788