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 09/20/2020)

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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 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 87691071 NANO (Stylized and/or with Design, see http://uspto.report/TM/87691071/mark.png) has been amended as follows:

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

Please see the actual argument text attached within the Evidence section.

EVIDENCE
Evidence in the nature of Arguments; exhibits A-C as listed in the arguments. has been attached.
Original PDF file:
evi_96755085-20180914154223903532_._NANO_arguments.pdf
Converted PDF file(s) ( 6 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Original PDF file:
evi_96755085-20180914154223903532_._Exhibit_A_NANOTECH_Excerpt.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_96755085-20180914154223903532_._Exhibit_B_Nano-___Definition_of_Nano-_by_Merriam-Webster.pdf
Converted PDF file(s) ( 9 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Original PDF file:
evi_96755085-20180914154223903532_._Ex._C.pdf
Converted PDF file(s) ( 27 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15
Evidence-16
Evidence-17
Evidence-18
Evidence-19
Evidence-20
Evidence-21
Evidence-22
Evidence-23
Evidence-24
Evidence-25
Evidence-26
Evidence-27

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Management and compilation of computerized databases; arranging of subscriptions for the on-line publications of others; providing subscriptions to journals and reviews; compilation and systemization of data in computer database
Original Filing Basis:
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.

Proposed:
Tracked Text Description: Management and compilation of computerized databases; arranging of subscriptions for the on-line publications of others; providing subscriptions to journals and reviews; arranging of subscriptions for the publications of others in the nature of journals and reviews; compilation and systemization of data in computer databaseClass 035 for Management and compilation of computerized databases; arranging of subscriptions for the on-line publications of others; arranging of subscriptions for the publications of others in the nature of journals and reviews; compilation and systemization of data in computer database
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 proposes to amend the following class of goods/services in the application:
Current: Class 041 for Providing educational information and services; providing of training; arranging and conducting of colloquiums, workshops, congresses, conferences, and symposiums in the fields of science, technology and medicine; publishing services; providing electronic publications; publication of research materials online; providing on-line educational information from a computer database or the internet
Original Filing Basis:
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.

Proposed:
Tracked Text Description: Providing educational information and services; Providing educational information in the academic fields of science, technology and medicine for the purpose of academic study; providing of training; providing of training in the fields of science, technology and medicine; arranging and conducting of colloquiums, workshops, congresses, conferences, and symposiums in the fields of science, technology and medicine; arranging and conducting of colloquiums, workshops, congresses, conferences, and symposiums for educational purposes in the fields of science, technology and medicine; publishing services; publishing of books, journals, articles and electronic publications; providing electronic publications; providing non-downloadable electronic publications in the nature of books, journals and articles in the fields of science, technology and medicine; publication of research materials online; publication of on-line research materials namely on-line books, journals and articles; providing on-line educational information from a computer database or the internet; providing on-line educational information from a computer database in the academic fields of science, technology, and medicine for the purpose of academic studyClass 041 for Providing educational information in the academic fields of science, technology and medicine for the purpose of academic study; providing of training in the fields of science, technology and medicine; arranging and conducting of colloquiums, workshops, congresses, conferences, and symposiums for educational purposes in the fields of science, technology and medicine; publishing of books, journals, articles and electronic publications; providing non-downloadable electronic publications in the nature of books, journals and articles in the fields of science, technology and medicine; publication of on-line research materials namely on-line books, journals and articles; providing on-line educational information from a computer database in the academic fields of science, technology, and medicine for the purpose of academic study
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 proposes to amend the following class of goods/services in the application:
Current: Class 042 for Providing on-line, searchable databases in the fields of science, technology and medicine; scientific, medical and technological research and design services; hosting of digital content on the internet; maintenance of databases for others; hosting platforms on the Internet for educational purposes; providing online searchable databases containing information on scientific, technological and medicine research and development; providing on-line information in the field of scientific, technological and medical research from a computer database or the internet; providing online database information indexing and abstracting software tools; providing online database search tools
Original Filing Basis:
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.

Proposed:
Tracked Text Description: Providing on-line, searchable databases in the fields of science, technology and medicine; Providing an on-line, searchable database in the fields of science, technology and medicine for scientific research purposes; scientific, medical and technological research and design services; scientific, medical and technological services, namely, research and design in the fields of science, technology and medicine; hosting of digital content on the internet; maintenance of databases for others; hosting platforms on the Internet for educational purposes; providing a web hosting for scientific research purposes; providing online searchable databases containing information on scientific, technological and medicine research and development; providing on-line information in the field of scientific, technological and medical research from a computer database or the internet; providing online database information indexing and abstracting software tools; providing a website featuring on-line non-downloadable software tools for database indexing and abstracting; providing online database search tools; providing online database search tools, namely, provision of Internet search engines for searching online databasesClass 042 for Providing an on-line, searchable database in the fields of science, technology and medicine for scientific research purposes; scientific, medical and technological services, namely, research and design in the fields of science, technology and medicine; hosting of digital content on the internet; maintenance of databases for others; providing a web hosting for scientific research purposes; providing online searchable databases containing information on scientific, technological and medicine research and development; providing on-line information in the field of scientific, technological and medical research from a computer database or the internet; providing a website featuring on-line non-downloadable software tools for database indexing and abstracting; providing online database search tools, namely, provision of Internet search engines for searching online databases
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
Description of mark
The mark consists of the stylized wording "NANO". The letter "N" consisting of a geometric design of intersecting circles appears to the left of "NANO".

SIGNATURE(S)
Response Signature
Signature: /jmh/     Date: 09/14/2018
Signatory's Name: Jennifer M. Hetu
Signatory's Position: Attorney of record, Michigan bar member

Signatory's Phone Number: 248-566-8452

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: 87691071
Internet Transmission Date: Fri Sep 14 15:49:41 EDT 2018
TEAS Stamp: USPTO/ROA-XX.XX.XX.XX-201809141549418427
60-87691071-61032e0da2156df53ccecdf2daf7
5983fcf5d66af95c551bed711486469325346-N/
A-N/A-20180914154223903532