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. 88039736 MST(Standard Characters, see http://uspto.report/TM/88039736/mark.png) has been amended as follows:

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

Applicant respectfully submits that the specimen submitted is adequate to demonstrate use of the mark in commerce. The Office objects to the specimen on the basis that the letters "MST" are not separable from the wording "Multi Surface Technology" and that the consumer would view the letters as an abbreviation of such wording. However, Applicant respectfully notes that the letters "MST" are separated via use of parentheses. Applicant also respectfully submits that TMEP 807(12)(a)(i), cited to by the Office to support the refusal, specifically states that "Extraneous, non-distinctive punctuation that appears on the specimen may be omitted from the mark on the drawing, because an acceptable specimen may contain additional matter used with the mark on the drawing, so long as the mark on the drawing makes a separate and distinct commercial impression apart from the other matter." Here, Applicant respectfully submits that extraneous punctuation (parenthesis) may be omitted from the drawing, and there has been no showing that the acronym does not create a distinct commercial impression. Applicant may seek to trademark a portion of a composite mark. n re 1175856 Ontario Ltd., 81 USPQ2d 1446, 1448 (TTAB 2006). In this case, the lettering MST is visually offset, similar to other marks of Applicant, and therefore would be recognized by a consumer as an alternative way of identifying the product and its source. Applicant also respectfully disagrees that the previously submitted specimen is not acceptable as a display associated with the goods. The Office cites to In re Kohr Brothers, Inc., 121 USPQ2d 1793,1794 (TTAB 2017) in support of this position. However, in that case, among other things, the specimen submitted was a sign on display for low value goods (CONEY ISLAND BOARDWALK CUSTARD). Id. Applicant respectfully submits that the specimen submitted in this case contained adequate product information (including a picture of the product) and a sales telephone number to constitute a point of sale display. Moreover, the products of Applicant are somewhat complex and expensive, and orders are not taken over the Internet or through the mail; rather, orders are taken by telephone. This is done because the products are to be attached to customer enclosures in a multitude of circumstances (often including complex outdoor installations, e.g., electric charging stations for cars, etc.) and therefore technical consultation is necessary prior to any sale. Consequently, Applicant respectfully submits that specimen is adequate. TMEP 904.03(i)(C)(2) (stating: "In the rare case of specialized industrial goods for which technical assistance is required in selecting the product or determining the product specifications may present a special situation as to a telephone number showing the requisite ability to order. In such a special situation, the telephone number would suffice if product information is available on the web page or website and the evidentiary record adequately explains the specialized nature of the goods, the industry practice for ordering them, and the need to consult with sales staff over the telephone to place customized orders."). Applicant requests that the specimen refusal be withdrawn.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Ice Qube, Inc., a corporation of Pennsylvania, having an address of
      141 Wilson Avenue
      Greensburg, Pennsylvania 15601
      United States

Proposed: Ice Qube, Inc., a corporation of Pennsylvania, having an address of
      141 Wilson Avenue
      Greensburg, Pennsylvania 15601
      United States
      Email Address: XXXX

The owner's/holder's current attorney information: Andrew M Gabriel. Andrew M Gabriel of CAFARDI FERGUSON WYRICK WEIS & GABRIEL LLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      2605 NICHOLSON ROAD, 2201
      SEWICKLEY, Pennsylvania 15143
      United States
The docket/reference number is IQ_009T.
      The phone number is 412-515-8900.
      The email address is agabriel@cfwws.com

The owner's/holder's proposed attorney information: Andrew M Gabriel. Andrew M Gabriel of CAFARDI FERGUSON WYRICK WEIS & GABRIEL LLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      2605 NICHOLSON ROAD, 2201
      SEWICKLEY, Pennsylvania 15143
      United States
The docket/reference number is IQ_009T.
      The phone number is 412-515-8900.
      The email address is agabriel@cfwwg.com

Andrew M Gabriel 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.Correspondence Information (current):
      ANDREW M GABRIEL
      PRIMARY EMAIL FOR CORRESPONDENCE: agabriel@cfwws.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): agabriel@cfwwg.com

The docket/reference number is IQ_009T.
Correspondence Information (proposed):
      Andrew M Gabriel
      PRIMARY EMAIL FOR CORRESPONDENCE: agabriel@cfwwg.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): agabriel@cfwwg.com

The docket/reference number is IQ_009T.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /Andrew M Gabriel/     Date: 06/18/2020
Signatory's Name: Andrew M Gabriel
Signatory's Position: Attorney of record

Signatory's Phone Number: 4125158900

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.

Mailing Address:    ANDREW M GABRIEL
   CAFARDI FERGUSON WYRICK WEIS & GABRIEL LLC
   
   2605 NICHOLSON ROAD, 2201
   SEWICKLEY, Pennsylvania 15143
Mailing Address:    Andrew M Gabriel
   CAFARDI FERGUSON WYRICK WEIS & GABRIEL LLC
   2605 NICHOLSON ROAD, 2201
   SEWICKLEY, Pennsylvania 15143
        
Serial Number: 88039736
Internet Transmission Date: Thu Jun 18 22:37:32 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-202006182237325
44514-88039736-710646974f6d4636ea71389ab
cad7e6217981d1cb4dd81ee68a706033521bc772
ab-N/A-N/A-20200618220817485687