| 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) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88199165 |
| LAW OFFICE ASSIGNED | LAW OFFICE 115 |
| MARK SECTION | |
| MARK FILE NAME | http://uspto.report/TM/88199165/mark.png |
| LITERAL ELEMENT | COMPOSECURE SECURITY INNOVATION DURABILITY |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| ARGUMENT(S) | |
|
Applicant thanks the Office for the indication that the specimen is accepted in class 9. The Office refuses registration in class 16, asserting (erroneously) that “the specimen shows two magnetically encoded cards.” Applicant agrees with the Office’s characterization that the “gold card features a visible magnetic stripe” and with acceptance of this specimen in support of class 9. The Office urges, however, that the “black card specifically states ‘Magnetic Stripe & EMV Chip Compatible’” in support for the Office’s position that “neither of the cards is a Class 16 ‘[card] without magnetic or electronic coding for personalization and use as credit cards, debit cards, gift cards, loyalty cards, identification cards, membership cards, retail cards, check cards, transaction cards, or casino cards’ or either of the other goods listed in the Class 16 identification.” Applicant respectfully disagrees. The term “compatible” means “able to exist together with something else” (See, e.g., http://www.dictionary.com/browse/compatible), meaning that the printed statement on the back of the black card as depicted without a magnetic stripe or an EMV chip will be interpreted by the relevant consumers as an indication that the card is able to be supplied with one or both of these options. “Able” in this usage means “having necessary power, skill, resources, or qualifications.” See, e.g., http://www.dictionary.com/browse/able. Being “able” or technically qualified to support a magnetic stripe or EMV chip means only that a magnetic stripe and EMV chip are options available for the depicted card (as is an option without either feature, as the card is literally depicted). Thus, the display specimen may be provided to potential customers looking to purchase cards that fall within either class 9 or class 16. The specimen as depicted in the photograph has no visible magnetic stripe or EMV chip, and therefore literally falls within class 16, as depicted. Accordingly, the Office’s assertion that the “specimen shows two magnetically encoded cards” is literally and technically incorrect. Printing on the back of a card that it is compatible with features that would place the card in class 9, if and when those features are actually present, does not make the specimen as depicted a class 9 specimen (e.g. stating a card is compatible with a magnetic stripe, does not change the fact that the card as actually depicted has no such magnetic stripe). In fact, Applicant included the now-accepted class 9 specimen of the gold card with the magnetic stripe out of concern that the Office might take the position that merely printing “Magnetic Stripe & EMV Chip Compatible” on the back of a card having no such stripe or chip might be characterized as “advertising” insufficient to render the specimen acceptable for class 9. While Applicant has no quarrel with a determination by the Office that the “black card” photo would be an acceptable specimen for class 9 as well, Applicant respectfully submits the Office’s refusal to accept the same specimen for class 16 is in error. Nothing in the rules or the law prohibits a single specimen from supporting registration in multiple classes, especially here, where Applicant expressly submitted the specimen in connection with class 16. Applicant respectfully requests reconsideration of the refusal in class 16 and acceptance of the specimen as submitted. |
|
| CORRESPONDENCE INFORMATION (current) | |
| NAME | Rex A. Donnelly |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | tmde@ratnerprestia.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | tmde@ratnerprestia.com |
| DOCKET/REFERENCE NUMBER | CSEC-137US |
| CORRESPONDENCE INFORMATION (proposed) | |
| NAME | Rex A. Donnelly |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | tmde@ratnerprestia.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | NOT PROVIDED |
| DOCKET/REFERENCE NUMBER | CSEC-137US |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /RexADonnelly/ |
| SIGNATORY'S NAME | Rex A Donnelly |
| SIGNATORY'S POSITION | Attorney of record, Delaware Bar member |
| SIGNATORY'S PHONE NUMBER | 3027782500 |
| DATE SIGNED | 07/20/2020 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Jul 20 17:25:52 ET 2020 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XXX.XXX -20200720172552802211-881 99165-740aa22f669c5b9ffa3 b984bfc9a972fcd416abf5c5c 2ed8ee08c6a28d3c4c42-N/A- N/A-20200720171523932867 |
| 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) |
Applicant thanks the Office for the indication that the specimen is accepted in class 9. The Office refuses registration in class 16, asserting (erroneously) that “the specimen shows two magnetically encoded cards.” Applicant agrees with the Office’s characterization that the “gold card features a visible magnetic stripe” and with acceptance of this specimen in support of class 9.
The Office urges, however, that the “black card specifically states ‘Magnetic Stripe & EMV Chip Compatible’” in support for the Office’s position that “neither of the cards is a Class 16 ‘[card] without magnetic or electronic coding for personalization and use as credit cards, debit cards, gift cards, loyalty cards, identification cards, membership cards, retail cards, check cards, transaction cards, or casino cards’ or either of the other goods listed in the Class 16 identification.” Applicant respectfully disagrees.
The term “compatible” means “able to exist together with something else” (See, e.g., http://www.dictionary.com/browse/compatible), meaning that the printed statement on the back of the black card as depicted without a magnetic stripe or an EMV chip will be interpreted by the relevant consumers as an indication that the card is able to be supplied with one or both of these options. “Able” in this usage means “having necessary power, skill, resources, or qualifications.” See, e.g., http://www.dictionary.com/browse/able. Being “able” or technically qualified to support a magnetic stripe or EMV chip means only that a magnetic stripe and EMV chip are options available for the depicted card (as is an option without either feature, as the card is literally depicted). Thus, the display specimen may be provided to potential customers looking to purchase cards that fall within either class 9 or class 16. The specimen as depicted in the photograph has no visible magnetic stripe or EMV chip, and therefore literally falls within class 16, as depicted. Accordingly, the Office’s assertion that the “specimen shows two magnetically encoded cards” is literally and technically incorrect. Printing on the back of a card that it is compatible with features that would place the card in class 9, if and when those features are actually present, does not make the specimen as depicted a class 9 specimen (e.g. stating a card is compatible with a magnetic stripe, does not change the fact that the card as actually depicted has no such magnetic stripe). In fact, Applicant included the now-accepted class 9 specimen of the gold card with the magnetic stripe out of concern that the Office might take the position that merely printing “Magnetic Stripe & EMV Chip Compatible” on the back of a card having no such stripe or chip might be characterized as “advertising” insufficient to render the specimen acceptable for class 9. While Applicant has no quarrel with a determination by the Office that the “black card” photo would be an acceptable specimen for class 9 as well, Applicant respectfully submits the Office’s refusal to accept the same specimen for class 16 is in error. Nothing in the rules or the law prohibits a single specimen from supporting registration in multiple classes, especially here, where Applicant expressly submitted the specimen in connection with class 16.
Applicant respectfully requests reconsideration of the refusal in class 16 and acceptance of the specimen as submitted.