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. 88162107 MPL LABORATORIES (Stylized and/or with Design, see http://uspto.report/TM/88162107/mark.png) has been amended as follows:

MARK
Applicant proposes to amend the mark as follows:
Current: MPL LABORATORIES (Stylized and/or with Design, see http://uspto.report/TM/88162107/mark.png)
Proposed: MPL LABORATORIES (Stylized and/or with Design, see mark)
The applicant is not claiming color as a feature of the mark.
The mark consists of a diamond shape with a microscope inside. To the right of the design appear the letters "MPL" over "LABORATORIES.".

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

This amendment replies to the November 26, 2018 Office Action.

 

It is noted that the Office’s search of its databases did not identify any pending or registered mark that provides a basis to refuse registration of Applicant’s mark.

 

The Office requires that the word “laboratories” be disclaimed. Without conceding to the Office’s rationale for this requirement, Applicant submits that this aspect of the mark is inherently distinctive for the services and requests withdrawal of the disclaimer requirement.

 

The Office raises several issues concerning the description of services that must be resolved. In this regard, Applicant is amending the description in a manner that is within the scope of the pending description to include descriptions that are specific and definite. The catchall phrase “and related services” is being deleted from the description. Applicant requests acceptance of the description, as amended.

 

A replacement drawing of the mark is provided. The replacement drawing does not include the “SM” designation. No other changes are made to the drawing, as originally filed.

 

An accurate description of the mark is provided that identifies the literal and design elements of the mark.

 

This amendment places the application in condition for acceptance for publication. An early action to this effect is earnestly solicited.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Laboratory testing services; analytical testing services; laboratory research in the field of microbiology; good manufacturing practices (GMP) laboratory testing and analytical services; testing services, namely, raw and finished goods testing for microbial analysis, organism identification, field sampling inspection services, and manufactured product testing; research services in the field of microbial testing for environmental and indoor air quality investigations and trending data, materials testing, microbial characterization, product development, orals, topicals, injectables, skin care, cosmetics, personal care and pharmaceutical products; microbial analysis of manufactured materials, medical devices, cosmetics, foods, personal care products, pharmaceutical products, environmental and processed water quality; personal care, pharmaceutical, food, and cosmetic laboratory research services and related services; product quality testing and evaluation; and related services
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: Laboratory testing services; analytical testing services; analytical testing services, namely, materials testing, composition testing, comparative testing; laboratory research in the field of microbiology; good manufacturing practices (GMP) laboratory testing and analytical services; testing services, namely, raw and finished goods testing for microbial analysis, organism identification, field sampling inspection services, and manufactured product testing; research services in the field of microbial testing for environmental and indoor air quality investigations and trending data, materials testing, microbial characterization, product development, orals, topicals, injectables, skin care, cosmetics, personal care and pharmaceutical products; microbial analysis of manufactured materials, medical devices, cosmetics, foods, personal care products, pharmaceutical products, environmental and processed water quality; personal care, pharmaceutical, food, and cosmetic laboratory research services and related services; product quality testing and evaluation; and related servicesClass 042 for Laboratory testing services; analytical testing services, namely, materials testing, composition testing, comparative testing; laboratory research in the field of microbiology; good manufacturing practices (GMP) laboratory testing and analytical services; testing services, namely, raw and finished goods testing for microbial analysis, organism identification, field sampling inspection services, and manufactured product testing; research services in the field of microbial testing for environmental and indoor air quality investigations and trending data, materials testing, microbial characterization, product development, orals, topicals, injectables, skin care, cosmetics, personal care and pharmaceutical products; microbial analysis of manufactured materials, medical devices, cosmetics, foods, personal care products, pharmaceutical products, environmental and processed water quality; personal care, pharmaceutical, food, and cosmetic laboratory research services and related services; product quality testing and evaluation
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.

SIGNATURE(S)
Response Signature
Signature: /Philip J. Foret/     Date: 05/28/2019
Signatory's Name: Philip J. Foret/
Signatory's Position: Attorney of record, Reg. No. 51689

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: 88162107
Internet Transmission Date: Tue May 28 14:53:46 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XX-2019052814534618
5125-88162107-6202aa672afe4baf081da361bb
67ff292a37df94951cca1bd4d12e0db98d76e2-N
/A-N/A-20190528144120529350