NOTE TO THE FILE
Sent to TICRS as Serial Number: 88293051SERIAL NUMBER: 88293053
DATE: 03/09/2020
NAME: skunkleman
NOTE:
Discussed file with
Attorney via:
X email
From: Kunkleman, Sarah
Sent: Monday, March 9, 2020 3:22 PM
To: Hofstatter, Rachel <rhofstatter@steptoe.com>
Subject: RE: Status Check re CORIAN - 88293051 and CORIAN & Design - 88293053
Ms. Hofstatter:
I cannot take action until the other application is abandoned or is otherwise processed by the Examiner handling that application. You may wish to check the status in another couple of weeks.
Thank you,
Sarah
Sincerely,
/Sarah E. Kunkleman/
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 105
(571) 272-6151
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 <rhofstatter@steptoe.com>
Sent: Monday, March 9, 2020 2:44 PM
To: Kunkleman, Sarah <Sarah.Kunkleman@USPTO.GOV>
Subject: FW: Status Check re CORIAN - 88293051 and CORIAN & Design - 88293053
Sarah,
I see that no response was filed to date with respect to the Office Action that issued for the cited VINCORION mark. The office action issued on September 7, 2019, so I was expecting a response by March 7, 2020. The applicant’s deadline will move to today because March 7 was a Saturday, but I was wondering if you could have a look this week and potentially move our application on if no response gets filed today in the VINCORIAN file.
Thanks,
Rachel
Rachel M. Hofstatter
Of Counsel
Steptoe
+1 202 429 3903 direct
+1 202 429 3902 fax
Steptoe & Johnson LLP
1330 Connecticut Avenue, NW
Washington, DC 20036
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_____________________________________________
From: Hofstatter, Rachel
Sent: Monday, September 23, 2019 9:56 AM
To: Kunkleman, Sarah <Sarah.Kunkleman@USPTO.GOV>
Subject: RE: Status Check re CORIAN - 88293051 and CORIAN & Design - 88293053
Thanks, Sarah. Hopefully the other party will file its response soon.
Best regards,
Rachel
From: Kunkleman, Sarah <Sarah.Kunkleman@USPTO.GOV>
Sent: Saturday, September 21, 2019 10:34 AM
To: Hofstatter, Rachel <rhofstatter@steptoe.com>
Subject: RE: Status Check re CORIAN - 88293051 and CORIAN & Design - 88293053
Thank you for your email.
I have reviewed the amendments made in the prior-filed application and while based on the current wording in the application the potential conflict may be resolved, the identification has not been accepted and applicant may still amend the identification. Based on the previous broad wording in the application, I cannot withdraw the cite until the identification in the application has been accepted to one that obviates the refusal.
Sincerely,
/Sarah E. Kunkleman/
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 105
(571) 272-6151
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 <rhofstatter@steptoe.com>
Sent: Tuesday, September 10, 2019 1:21 PM
To: Kunkleman, Sarah <Sarah.Kunkleman@USPTO.GOV>
Subject: Status Check re CORIAN - 88293051 and CORIAN & Design - 88293053
Hi Sarah,
I wanted to touch base with you on the CORIAN and CORIAN & Design applications by CACI, Serial Nos. 88293051 and 88293053. We spoke awhile back about them ,and they are currently suspended while we wait to see what happens with the VINCORION trademark application by JENOPTIK Advanced Systems GmbH. I noticed that JENOPTIK submitted a response to its office action on August 26 and that a new office action issued a few days ago. In the office action response, JENOPTIK amended its goods in Class 9 to:
Class 009 for Apparatus and instruments for conducting, switching, transforming, accumulating, regulating and controlling electricity, namely, energy storage modules for using in electrical hybrid generators, portable power management moduls, cable sets for using with frequency converter units, ice protection control units, windshield de-icing controllers;blank CD-ROMs; for sound or video recording; blank recordable DVD-Rs; computer hardware; display devices, namely, floor temperature setting panels, temperature selector units; communications equipment, namely, remote control units for hoists; electric accumulators; electric couplings; electrical control devices, namely, alternators voltage regulation units for using in elctrical generators, frequency converter units, flywheel energy storage converter units, electrical hybrid generators; apparatus for recording, transmission and reproduction of sound and images; blank magnetic data carriers, blank recordable optical discs;; ; scientific and technical apparatus, namely, optical mirrors for target detection for use on rifles; optical amplifiers; photovoltaic installations apparatus, namely, solar modules for production of electricity using solar energy; radomes, namely, adapted antenna and radar displays for use in aircrafts; electric sensors; downloadable computer software for tilt simulation and control of rail vehicles; voltage regulators for vehicles; electric voltage transformers; power supplies; electric power converters charging stations for electric vehicles, electrical charge controllers for charging energy storage modules for using in electrical generators, in portable power management modules, in flexible micro grid for mobile infrastructures, battery charging devices for motor vehicles
The new office action does require additional specificity. From the current office action (http://tsdr.gov.uspto.report/documentviewer?caseId=sn79250112&docId=OOA20190907141214#docIndex=0&page=1):
Apparatus and instruments for conducting, switching, transforming, accumulating, regulating and controlling electricity, namely, __ [specify common commercial name or further describe nature of “energy storage modules”] for using in electrical hybrid generators, __ [specify common commercial name or further describe nature of “portable power management moduls”], __ [specify primary components of “cable sets”] for using with frequency converter units, __ [specify primary components of “ice protection control units”], windshield de-icing electrical controllers; blank CD-ROMs for sound or video recording; blank recordable DVD-Rs; computer hardware; display devices, namely, __ [specify common commercial name or further describe nature of “floor temperature setting panels, temperature selector units”]; communications equipment, namely, remote control units consisting primarily of controls for hoists; electric accumulators; electric couplings; electrical control devices, namely, alternating current voltage regulators for using in elctrical generators, frequency converter units consisting primarily of converters, flywheel energy storage converter units consisting primarily of converters, apparatus for recording, transmission and reproduction of sound and images; blank magnetic data carriers, blank recordable optical discs; scientific and technical apparatus, namely, optical mirrors for target detection for use on rifles; optical semiconductor amplifiers; photovoltaic installations apparatus, namely, solar modules for production of electricity using solar energy; radomes, namely, adapted antenna and radar displays for use in aircrafts; electric sensors; downloadable computer software for tilt simulation and control of rail vehicles; voltage regulators for vehicles; electric voltage transformers; power supplies; electric power converters; charging stations for electric vehicles; electrical controllers for use in charging energy storage modules in electrical generators, in portable power management modules, and in flexible micro grid for mobile infrastructures; battery charging devices for motor vehicles
The CORIAN description for both applications is “Electronic device for detecting, identifying, locating, and tracking both remote controlled aircraft and vehicles and their operators using the passive receipt and exploitation of radio frequency energy and the ability to mitigate these threats by providing radio frequency transmissions which override remote control aircraft and vehicle communications around a defined geographical location.”
The revised description for VINCORION in Class 9 does not appear to me to be similar to CACI’s CORIAN product that is meant for signals processing and overriding threats from remote control aircrafts (i.e., drones), especially when you take into account the very sophisticated consumers of CORIAN products. The VINCORION products do not appear related at all to what CORIAN is or does.
Please let me know if you can review the current VINCORION record and allow the CORIAN applications move to publication.
Best regards,
Rachel
Rachel M. Hofstatter
Of Counsel
Steptoe
+1 202 429 3903 direct
+1 202 429 3902 fax
Steptoe & Johnson LLP
1330 Connecticut Avenue, NW
Washington, DC 20036