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)

---

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. 88107126 IMPRESS(Standard Characters, see http://uspto.report/TM/88107126/mark.png) has been amended as follows:

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

The Examining Attorney has entered an initial refusal to register Applicant's mark IMPRESS under Section 2(e) (1), as merely descriptive. Applicant respectfully submits that its mark is suggestive and not merely descriptive of the underlying services. The term impress is not the term employed by those in the metal treatment industry. The term used is press or stamp. (See the attached Exhibit A wherein the definition and history of Metal Stamping is detailed but in which the term impress is never used.) The term of art in the industry is metal stamping or pressing not impress or impressing. The term impress outside of the metal industry may be defined as using a stamp or a seal or to imprint. But it also means to affect strongly and influence or to cause admiration and respect. Exhibit B. And Applicant has employed the term IMPRESS to suggest this causation of admiration by its customers while also suggesting its services. Nonetheless, to assist in the further prosecution of this case, Applicant has amended its application to seek registration on the Supplemental Register. Also, via eTeas, Applicant has amended its identification of services to that suggested by the Examining Attorney. The Examining Attorney is requested to contact the undersigned should further amendment or discussion be required.

EVIDENCE
Evidence in the nature of Exhibits A and B has been attached.
Original PDF file:
evi_7313466177-20190115161728053762_._EXHIBIT_A_Stamping__metalworking__-_Wikipedia.pdf
Converted PDF file(s) ( 5 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Original PDF file:
evi_7313466177-20190115161728053762_._EXHIBIT_B_Impress___Define_Impress_at_Dictionary.com.pdf
Converted PDF file(s) ( 14 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

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 040 for Treatment of materials using additive fabrication, in the aircraft, medical and automotive fields, namely, treatment and transformation of metals, blacksmithing, stamping, casting, tempering for parts that are metal, non-metallic or alloys, treatment of material by means of laser beams, treatment of material by means of 3D; providing information relating to the treatment of materials
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ France registration number 164305074 registered 10/06/2016 with a renewal date of __________ and an expiration date of 10/06/2026 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Treatment of materials using additive fabrication, in the aircraft, medical and automotive fields, namely, treatment and transformation of metals, blacksmithing, stamping, casting, tempering for parts that are metal, non-metallic or alloys, treatment of material by means of laser beams, treatment of material by means of 3D; Treatment of metal, non-metallic or metallic alloy parts using additive fabrication in the aircraft, medical and automotive fields, namely, blacksmithing, metal stamping, die casting, and tempering of metal and glass; providing information relating to the treatment of materials; treatment of material by means of laser beams; custom 3D printing; providing material treatment informationClass 040 for Treatment of metal, non-metallic or metallic alloy parts using additive fabrication in the aircraft, medical and automotive fields, namely, blacksmithing, metal stamping, die casting, and tempering of metal and glass; treatment of material by means of laser beams; custom 3D printing; providing material treatment information
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ France registration number 164305074 registered 10/06/2016 with a renewal date of __________ and an expiration date of 10/06/2026 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

ADDITIONAL STATEMENTS
Supplemental Register
The applicant seeks registration of the mark on the Supplemental Register (i.e., a change of the words 'Principal Register' to 'Supplemental Register').


SIGNATURE(S)
Response Signature
Signature: /jgr123/     Date: 01/15/2019
Signatory's Name: Janet G Ricciuti
Signatory's Position: Attorney of Record - PA

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: 88107126
Internet Transmission Date: Tue Jan 15 16:26:07 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2019011516260790
0132-88107126-6206a4c65887f56e75a2475401
c7b91969bda075ed5146f6a9e21742c5259c6699
-N/A-N/A-20190115161728053762