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. 88348355 SOIL MECHANIX(Standard Characters, see http://uspto.report/TM/88348355/mark.png) has been amended as follows:

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

Registration of SOIL MECHANIX has been refused based on the proposition that the mark it immediately describes the basic purpose of the service namely: Agricultural testing, namely soil nutrient analysis for golf courses and sports turf fields The word ?MECHANIX ?is not a real word and thus by definition is fanciful and not descriptive. It has been used as a trademark for high performance work gloves. (appendix tab a) and cross-gym (appendix tab b). No customer could feasibly be able to understand the services it provides just by looking at the mark SOIL MECHANIX. This in view of the prior usage a consumer might conclude the mark relates to gardening gloves. The combination of the words does not create any kind of novel or incongruous commercial impression; nor does the combination somehow alter the meaning any of the individual terms. It is proper to take notice of the extent to which it has been used by others on such goods or services. Where others in the industry do not use the term as a descriptive reference, this is evidence that the term is neither a natural nor obvious way to describe the goods. Firestone Tire & Rubber Co. v. Goodyear Tire & Rubber Co., 186 U.S.P.Q. 557 (T.T.A.B. 1975), aff'd, 189 U.S.P.Q. 348 (C.C.P.A. 1976). It is asserted that the made-up word MECHANIX suggests the term ?Mechanics? INTELLIGENCE GUIDED SURGERY cannot describe the function or purpose of Applicant's goods with any degree of precision, because "intelligence " has a multiplicity of meanings and usages. For example, MECHANICS is a bank with location throughout the United States. . Appendix Tab C The term ?mechanics? has 3 possible definition in Merriam-Webster dictionary. Definition of mechanics 1: a branch of physical science that deals with energy and forces and their effect on bodies 2: the practical application of mechanics to the design, construction, or operation of machines or tools 3: mechanical or functional details or procedure the mechanics of the brain. Yet none of these definitions of the term relate to nutrient analysis. The term ?soil mechanics? is ?the study of the physical properties and utilization of soils, especially used in planning foundations for structures and subgrades for highways? Soil mechanics, by examination of the subgrade of roads and highways, helps to determine which type of pavement (rigid or flexible) will last longer. The study of soil characteristics is also used to decide the most suitable method for excavating underground tunnels. http://www.britannica.com/science/soil-mechanics The tern ?soil mechanics? does not apprise a reasonable consumer of the nature of the testing namely soil nutrient analysis for golf courses and sports turf fields. To be deemed merely descriptive, a mark must directly provide the consumer with reasonably accurate knowledge of the characteristics of the product or service in connection with which it is used. If the information about the product or service is indirect or vague, then the mark is considered suggestive, not descriptive. See J. McCarthy, McCarthy on Trademarks and Unfair Competition ?11.19, at 11-26 (4th ed. 1998). Applying these principles, Applicant's mark is not descriptive, because SOIL MECHANIX does not immediately convey to one encountering it the nature of Applicant's goods. See TMEP ? 1209.01(a) ("a descriptive term? immediately tells something about the goods or services"). Applicant's mark is in fact suggestive because "imagination, thought, or perception is required to reach a conclusion on the nature of the goods or services." In re Quik-Print Shops, Inc. 616 F.2d 523, 525, 205 U.S.P.Q. 505, 507 (C.C.P.A. 1980).

EVIDENCE
Evidence in the nature of screenshots has been attached.
Original PDF file:
evi_7391178112-20190827133812090515_._appendixtabA.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_7391178112-20190827133812090515_._appendixtabb.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_7391178112-20190827133812090515_._appendixtabC.pdf
Converted PDF file(s) ( 1 page)
Evidence-1

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Agricultural testing, namely, agricultural soil testing and soil nutrient analysis for golf courses and sports turf fields
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 01/31/2019 and first used in commerce at least as early as 01/31/2019 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Agricultural testing, namely, agricultural soil testing and soil nutrient analysis for golf courses and sports turf fields; Agricultural testing, namely, soil nutrient analysis for golf courses and sports turf fieldsClass 042 for Agricultural testing, namely, soil nutrient analysis for golf courses and sports turf fields
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 01/31/2019 and first used in commerce at least as early as 01/31/2019 , and is now in use in such commerce.
The applicant's current attorney information: Susan Fentress. Susan Fentress of Veritay Group, IP PLLC, is located at

      20 Dudley St. no. 601
      Memphis, Tennessee 38103
      US
The docket/reference number is 12559.00021.

The phone number is 9013716664.

The email address is sfentress@veritaygroup.com

The applicants proposed attorney information: Susan Fentress. Susan Fentress of Veritay Group, IP PLLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      20 Dudley St. no. 601
      Memphis, Tennessee 38103
      United States
The docket/reference number is 12559.00021.

The phone number is 9013716664.

The email address is sfentress@veritaygroup.com

Susan Fentress submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: Susan Fentress. Susan Fentress of Veritay Group, IP PLLC, is located at

      20 Dudley St. no. 601
      Memphis, Tennessee 38103
      US
The docket/reference number is 12559.00021.

The phone number is 9013716664.

The fax number is 901-221-1160.

The email address is sfentress@veritaygroup.com; bhughes@floratine.com

The applicants proposed correspondence information: Susan Fentress. Susan Fentress of Veritay Group, IP PLLC, is located at

      20 Dudley St. no. 601
      Memphis, Tennessee 38103
      United States
The docket/reference number is 12559.00021.

The phone number is 9013716664.

The email address is sfentress@veritaygroup.com; cfentress@veritaygroup.com

SIGNATURE(S)
Response Signature
Signature: /susan fentress/     Date: 08/27/2019
Signatory's Name: susan fentress
Signatory's Position: Attorney of record, TN bar member

Signatory's Phone Number: 9013716664

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); 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.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    Susan Fentress
   Veritay Group, IP PLLC
   
   20 Dudley St. no. 601
   Memphis, Tennessee 38103
Mailing Address:    Susan Fentress
   Veritay Group, IP PLLC
   20 Dudley St. no. 601
   Memphis, Tennessee 38103
        
Serial Number: 88348355
Internet Transmission Date: Tue Aug 27 13:45:00 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2019082713450015
6566-88348355-6108f68fddfe184a3a1438bc15
93ed75b2b1c5785e6773e9ffe69020e4fee6371f
-N/A-N/A-20190827133812090515