TEAS Request Reconsideration after FOA

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 1960 (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 1960 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 88016924 NDT(Standard Characters, see http://uspto.report/TM/88016924/mark.png) has been amended as follows:

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

The instant application stands refused for registration due to alleged mere descriptiveness. The refusal is respectfully traversed. To begin with, Applicant thanks the Examiner for the courtesy of a brief telephonic interview to discuss the issues remaining in the case. At that time it was agreed that perhaps an Applicant-initiated amendment restricting the goods and services so as to facilitate discussion that such restriction might lead to differentiation between possibly descriptive terms (which could then survive examination by proving use and amending the registration basis to supplemental ) and generic terms (which would then require deletion). Applicant's further research, however, leads to the conclusion that such discussions are premature in in view of other existing registrations with virtually the same issue that have led to an opposite conclusion. Notably, US Reg No. 4,116,468 for the mark NDT Non-Destructive Testing currently resides on the supplemental register as used in connection with a magazine section regarding non-destructive testing, which Applicant submits both (1) demonstrates the Office's prior position that NDT Non-Destructive Testing could be supplementally registered while further distinctiveness is acquired (and therefore is not generic), and (2) would also be avoided as a blocking reference under Section 2(d) because the recitation in the prior reference is not concerned with training and certification and the like as is the case in the instant application. Similarly, US Reg. No. 5,337,308 for the mark NDT Handbook as used in connection with a handbook relating to non-destructive testing, which Applicant submits both (1) demonstrates the Office's prior position that NDT Handbook could be supplementally registered while further distinctiveness is acquired (and therefore is not generic), and (2) would also be avoided as a blocking reference under Section 2(d) because the recitation in the prior reference is not concerned with training and certification and the like as is the case in the instant application Since these two registrations each contain elements that are at minimum merely descriptive pending acquired distinctiveness, Applicants submits that in fairness it should be the Office rather than Applicant that states which goods and services, if any are deemed generic and therefore unsuitable for the supplemental register, so that Applicant does not unilaterally surrender anything in its registration that would limit the scope thereof. Further review and reconsideration on such grounds is respectfully requested.

The applicant's current attorney information: Raymond R. Ferrera. Raymond R. Ferrera of ADAMS AND REESE LLP, is located at

      1221 MCKINNEY ST., STE. 4400
      HOUSTON, Texas 77010
      US
The docket/reference number is 22792-1.

The phone number is 713-308-0127.

The email address is trademarks@arlaw.com

The applicants proposed attorney information: Raymond R. Ferrera. Raymond R. Ferrera of ADAMS AND REESE LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      1221 MCKINNEY ST., STE. 4400
      HOUSTON, Texas 77010
      United States
The docket/reference number is 22792-1.

The phone number is 713-308-0127.

The email address is trademarks@arlaw.com

Raymond R. Ferrera submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: RAYMOND R. FERRERA. RAYMOND R. FERRERA of ADAMS AND REESE LLP, is located at

      1221 MCKINNEY ST., STE. 4400
      HOUSTON, Texas 77010
      US
The docket/reference number is 22792-1.

The phone number is 713-308-0127.

The email address is trademarks@arlaw.com; hong.do@arlaw.com; juliana.gaige@arlaw.com

The applicants proposed correspondence information: Raymond R. Ferrera. Raymond R. Ferrera of ADAMS AND REESE LLP, is located at

      1221 MCKINNEY ST., STE. 4400
      HOUSTON, Texas 77010
      United States
The docket/reference number is 22792-1.

The phone number is 713-308-0127.

The email address is trademarks@arlaw.com

SIGNATURE(S)
Request for Reconsideration Signature
Signature: /Raymond R. Ferrera/     Date: 11/25/2019
Signatory's Name: Raymond R. Ferrera
Signatory's Position: Attorney of record

Signatory's Phone Number: 7133080127

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); 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.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

The applicant is not filing a Notice of Appeal in conjunction with this Request for Reconsideration.

Mailing Address:    RAYMOND R. FERRERA
   ADAMS AND REESE LLP
   
   1221 MCKINNEY ST., STE. 4400
   HOUSTON, Texas 77010
Mailing Address:    Raymond R. Ferrera
   ADAMS AND REESE LLP
   1221 MCKINNEY ST., STE. 4400
   HOUSTON, Texas 77010
        
Serial Number: 88016924
Internet Transmission Date: Mon Nov 25 17:00:02 EST 2019
TEAS Stamp: USPTO/RFR-XX.XXX.XXX.XX-2019112517000294
0776-88016924-7006076bb58fcbfda439a1acb3
e75f83b3c05f8573e1f42ebb9c0cfc84b5c6db2-
N/A-N/A-20191125164710032660