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. 88083002 ISL (Stylized and/or with Design, see http://uspto.report/TM/88083002/mark.png) has been amended as follows:

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

In response to the Office Action dated September 17, 2018, having a response date of March 18, 2019, applicant has amended the application for registration as indicated below. A substitute specimen consisting of the introductory page of a User Guide is provided to support use of the mark in commerce with the goods in Class 009. Applicant hereby adopts the mark description suggested by the Trademark Examining Attorney. Registration of the mark in Classes 037 and 039 is not considered necessary. However, further revisions to the description of services in Classes 040 and 042, and application for registration of the mark in new Class 045 is requested to more clearly establish applicant?s scope of use for the mark.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Equipment for use as scientific, nautical, surveying, measuring, and signaling apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; data processing equipment; computer software
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged 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. The mark was first used at least as early as 04/01/1982 and first used in commerce at least as early as 04/01/1982 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Equipment for use as scientific, nautical, surveying, measuring, and signaling apparatus and instruments; Equipment for use as scientific, nautical, surveying, measuring, and signaling apparatus and instruments, namely, computer hardware, modelling and simulation, instrumentation and control, advanced signal processing, and advanced sensors; apparatus for recording, transmission or reproduction of sound or images; data processing equipment; data processors; computer software; computer software for modelling and simulation, quality assurance and traceability, nuclear waste management, and operating experience, in the fields of military defense, undersea warfare, intelligence, surveillance and reconnaissance, space exploration, energy, and cybersecurity.Class 009 for Equipment for use as scientific, nautical, surveying, measuring, and signaling apparatus and instruments, namely, computer hardware, modelling and simulation, instrumentation and control, advanced signal processing, and advanced sensors; apparatus for recording, transmission or reproduction of sound or images; data processors; computer software for modelling and simulation, quality assurance and traceability, nuclear waste management, and operating experience, in the fields of military defense, undersea warfare, intelligence, surveillance and reconnaissance, space exploration, energy, and cybersecurity.
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged 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. The mark was first used at least as early as 04/01/1982 and first used in commerce at least as early as 04/01/1982 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 009 . The specimen(s) submitted consists of A presentation of the mark on the introductory page of the User Guide for the goods. .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen]. Specimen File1

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 040 for Services provided for the development, maintenance, and operation of systems to classify, track, and manage nuclear waste as it is treated for disposal
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged 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. The mark was first used at least as early as 04/04/1989 and first used in commerce at least as early as 04/04/1989 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Services provided for the development, maintenance, and operation of systems to classify, track, and manage nuclear waste as it is treated for disposal; Nuclear waste treatment, namely, operation of systems to classify, track, and manage nuclear waste as it is treated for disposal; consultation in the field of energy production, energy usage management, and energy generation services.Class 040 for Nuclear waste treatment, namely, operation of systems to classify, track, and manage nuclear waste as it is treated for disposal; consultation in the field of energy production, energy usage management, and energy generation services.
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged 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. The mark was first used at least as early as 04/04/1989 and first used in commerce at least as early as 04/04/1989 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 040 . The specimen(s) submitted consists of A webpage screenshot showing the mark used in connection with textual statements describing the services, with the mark placed in the top, left corner of the page. .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen]. Specimen File1

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Services for consultation, research and analysis in the fields of defense, undersea warfare, surveillance, reconnaissance, space exploration, energy, and cybersecurity; hardware design and development in the fields of defense, undersea warfare, surveillance, reconnaissance, space exploration, energy, and cybersecurity; software and systems engineering services
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged 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. The mark was first used at least as early as 04/01/1982 and first used in commerce at least as early as 04/01/1982 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Services for consultation, research and analysis in the fields of defense, undersea warfare, surveillance, reconnaissance, space exploration, energy, and cybersecurity; Scientific consultation, research, development, analysis, engineering, and prototyping in the fields of military defense, undersea warfare, intelligence, surveillance and reconnaissance; hardware design and development in the fields of defense, undersea warfare, surveillance, reconnaissance, space exploration, energy, and cybersecurity; space exploration, energy, and cybersecurity; software and systems engineering services; custom manufacturing as a service for others in the fields of military defense, undersea warfare, intelligence, surveillance and reconnaissance; custom design and engineering of computer software applications and computer hardware systems; development of computer hardware and computer software for classifying, tracking, and managing nuclear waste as it is treated for disposal.Class 042 for Scientific consultation, research, development, analysis, engineering, and prototyping in the fields of military defense, undersea warfare, intelligence, surveillance and reconnaissance; space exploration, energy, and cybersecurity; custom manufacturing as a service for others in the fields of military defense, undersea warfare, intelligence, surveillance and reconnaissance; custom design and engineering of computer software applications and computer hardware systems; development of computer hardware and computer software for classifying, tracking, and managing nuclear waste as it is treated for disposal.
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged 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. The mark was first used at least as early as 04/01/1982 and first used in commerce at least as early as 04/01/1982 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 042 . The specimen(s) submitted consists of A webpage screenshot showing the mark used in connection with textual statements describing the services, with the mark placed in the top, left corner of the page. .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen]. Specimen File1

Applicant hereby adds the following class of goods/services to the application:
New: Class 045 for Consultation in the fields of military defense, undersea warfare, intelligence, surveillance, and reconnaissance, namely, tactics and strategies, conduct-of-operations, training, threats and vulnerabilities, and operational capabilities.
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged 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. The mark was first used at least as early as 04/01/1982 and first used in commerce at least as early as 04/01/1982 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 045 . The specimen(s) submitted consists of A webpage screenshot showing the mark used in connection with textual statements describing the services, with the mark placed in the top, left corner of the page. .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen]. Specimen File1

ADDITIONAL STATEMENTS
Description of mark
The mark consists of The mark consists of the letters "ISL" in stylized lettering whereby the letters I, S, and L are juxtaposed and separated from each other by diagonal spaces, wherein the space between I and S is at the respective bottom of the letters I and S, and the space between the S and the L is at the respective top of the letters S and L.

FEE(S)
Fee(s) in the amount of $400 is being submitted.

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Neil K. Nydegger/      Date: 03/18/2019
Signatory's Name: Neil K. Nydegger
Signatory's Position: Attorney
Signatory's Phone Number: 619-688-1300


Response Signature
Signature: /Neil K. Nydegger/     Date: 03/18/2019
Signatory's Name: Neil K. Nydegger
Signatory's Position: Attorney

Signatory's Phone Number: 619-688-1300

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.

        
RAM Sale Number: 88083002
RAM Accounting Date: 03/19/2019
        
Serial Number: 88083002
Internet Transmission Date: Mon Mar 18 16:56:53 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XXX-201903181656531
27507-88083002-620eabd2820ae544ecc733b2e
16b667162cf036c6995a513a64a356e53af16f49
e-CC-4386-20190318164122207281