Notation to File

CORIAN

CACI INTERNATIONAL INC

RE: CORIAN & Design - 88293053 Thank you for the email. I will review the file and respond this week. Sincerely, /Sarah E. Kunkleman/ Trademark Examining Attorney U.S. Patent and Trademark Office Law Office 105 (571) 272-6151 sarah.kunkleman@uspto.gov Please note that all relevant e-mail communications will be placed in the official application record. Although the trademark examining attorney may provide additional explanation pertaining to the application, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§709.05, 709.06 From: Hofstatter, Rachel [mailto:rhofstatter@steptoe.com] Sent: Thursday, July 18, 2019 3:19 PM To: Kunkleman, Sarah <Sarah.Kunkleman@USPTO.GOV> Subject: CORIAN & Design - 88293053 Hi Sarah, The CORIAN & Design mark has an office action that issued in April with a prior pending application notice and a requirement to amend the description of the mark. Would you be able to enter an examiner’s amendment to update the description of the mark as you proposed in the office action and then suspend the application while we wait to see whether the applicant for the prior pending application responds (or not) to its own office action? I am also curious to know what in the VINCORION application led to the notification in this application and the suspension for the CORIAN word mark application (Serial No. 88293051). The marks look different, sound different and do not have the same meaning (I am not aware of a meaning ascribed to either mark). The VINCORION mark seems to be in the area of mechatronic engineering, whereas CORIAN products are different kinds of devices that are meant to detect remote controlled aircraft like drones. Given that both entities are in the defense area, their customers are about the most sophisticated there are out there, and confusion between these marks would be highly unlikely, if they were even encountered by the same customers. It would be even better if we could move forward to publication, but if there are particular goods in the VINCORION application that are concerning and that you would like to discuss, I’d be happy to do so (though I note that there are extensive changes required to the description of the VINCORION mark if the applicant there does timely respond to its office action). Thanks, Rachel Rachel M. Hofstatter Of Counsel rhofstatter@steptoe.com Steptoe +1 202 429 3903 direct +1 202 429 3902 fax Steptoe & Johnson LLP 1330 Connecticut Avenue, NW Washington, DC 20036 www.steptoe.com

NOTE TO THE FILE

SERIAL NUMBER: 88293053

DATE:    07/26/2019

NAME: skunkleman

NOTE:

Discussed file with
Attorney via:
    X   phone

    X   Issued Examiner’s Amendment  and entered changes in TRADEUPS

From: Kunkleman, Sarah
Sent: Tuesday, July 23, 2019 5:52 PM
To: Hofstatter, Rachel <rhofstatter@steptoe.com>
Subject: RE: CORIAN & Design - 88293053

Thank you for the email. I will review the file and respond this week.

Sincerely,

/Sarah E. Kunkleman/

Trademark Examining Attorney

U.S. Patent and Trademark Office

Law Office 105

(571) 272-6151

sarah.kunkleman@uspto.gov

Please note that all relevant e-mail communications will be placed in the official application record. Although the trademark examining attorney may provide additional explanation pertaining to the application, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§709.05, 709.06

From: Hofstatter, Rachel [mailto:rhofstatter@steptoe.com]
Sent: Thursday, July 18, 2019 3:19 PM
To: Kunkleman, Sarah <Sarah.Kunkleman@USPTO.GOV>
Subject: CORIAN & Design - 88293053

Hi Sarah,

The CORIAN & Design mark has an office action that issued in April with a prior pending application notice and a requirement to amend the description of the mark.

Would you be able to enter an examiner’s amendment to update the description of the mark as you proposed in the office action and then suspend the application while we wait to see whether the applicant for the prior pending application responds (or not) to its own office action?

I am also curious to know what in the VINCORION application led to the notification in this application and the suspension for the CORIAN word mark application (Serial No. 88293051). The marks look different, sound different and do not have the same meaning (I am not aware of a meaning ascribed to either mark). The VINCORION mark seems to be in the area of mechatronic engineering, whereas CORIAN products are different kinds of devices that are meant to detect remote controlled aircraft like drones. Given that both entities are in the defense area, their customers are about the most sophisticated there are out there, and confusion between these marks would be highly unlikely, if they were even encountered by the same customers. It would be even better if we could move forward to publication, but if there are particular goods in the VINCORION application that are concerning and that you would like to discuss, I’d be happy to do so (though I note that there are extensive changes required to the description of the VINCORION mark if the applicant there does timely respond to its office action).

Thanks,

Rachel

Rachel M. Hofstatter

Of Counsel

rhofstatter@steptoe.com

Steptoe

+1 202 429 3903 direct

+1 202 429 3902 fax

Steptoe & Johnson LLP

1330 Connecticut Avenue, NW

Washington, DC 20036

www.steptoe.com

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