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. 88359830 SCALESOL(Standard Characters, see http://uspto.report/TM/88359830/mark.png) has been amended as follows:

EVIDENCE
Evidence in the nature of In the Office Action, the Examining Attorney refused registration for the applied-for-mark SCALESOL under Trademark Act Section 2(d) for alleged likelihood of confusion with respect to the registered mark SCALESOLV, Reg. No. 3615040. Respectfully, Applicant traverses this rejection based on the following remarks and amendment. In particular, the terms "SOLV" in SCALESOLV and "SOL" in SCALESOL both sound and look different. Specifically, the pronunciation of the last consonant letter "V" in SCALESOLV is much different than the pronunciation of the last consonant letter "L" in SCALESOL. Further, "SOLV" appears to be a short form abbreviation of the term "solvent." In addition, Applicant submits that the purchaser of either the Applicant's or the Registrant's goods would be a sophisticated buyer, thus minimizing any confusion. Hence, Applicant submits that there is no likelihood of confusion and respectfully requests the Examiner to withdraw the Section 2(d) rejection. has been attached.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 001 for Scale inhibitor additive
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: Scale inhibitor additive; Chemical additives, namely, additives for inhibiting scale accumulation.Class 001 for Chemical additives, namely, additives for inhibiting scale accumulation.
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.

The applicant's current attorney information: Sam Sokhansanj. Sam Sokhansanj of LAW OFFICE OF SAM SOKHANSANJ PLLC, is located at

      2101 CEDAR SPRINGS RD., SUITE 1050
      DALLAS, Texas 75201
      US

The phone number is 214-988-5454.

The fax number is 2149885450.

The email address is sam@attorneysam.com

The applicants proposed attorney information: Sam Sokhansanj. Sam Sokhansanj of LAW OFFICE OF SAM SOKHANSANJ PLLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      2101 CEDAR SPRINGS RD., SUITE 1050
      DALLAS, Texas 75201
      United States

The phone number is 214-988-5454.

The fax number is 2149885450.

The email address is sam@attorneysam.com

Sam Sokhansanj 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: SAM SOKHANSANJ. SAM SOKHANSANJ of LAW OFFICE OF SAM SOKHANSANJ PLLC, is located at

      2101 CEDAR SPRINGS RD., SUITE 1050
      DALLAS, Texas 75201
      US

The phone number is 214-988-5454.

The fax number is 2149885450.

The email address is sam@attorneysam.com; sam@attorneysam.com

The applicants proposed correspondence information: Sam Sokhansanj. Sam Sokhansanj of LAW OFFICE OF SAM SOKHANSANJ PLLC, is located at

      2101 CEDAR SPRINGS RD., SUITE 1050
      DALLAS, Texas 75201
      United States

The phone number is 214-988-5454.

The fax number is 2149885450.

The email address is sam@attorneysam.com

SIGNATURE(S)
Response Signature
Signature: /Sam Sokhansanj/     Date: 12/16/2019
Signatory's Name: Sam Sokhansanj
Signatory's Position: Attorney of Record, TX Bar Member

Signatory's Phone Number: 2149885454

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:    SAM SOKHANSANJ
   LAW OFFICE OF SAM SOKHANSANJ PLLC
   
   2101 CEDAR SPRINGS RD., SUITE 1050
   DALLAS, Texas 75201
Mailing Address:    Sam Sokhansanj
   LAW OFFICE OF SAM SOKHANSANJ PLLC
   2101 CEDAR SPRINGS RD., SUITE 1050
   DALLAS, Texas 75201
        
Serial Number: 88359830
Internet Transmission Date: Mon Dec 16 20:46:36 EST 2019
TEAS Stamp: USPTO/ROA-XXXX:XXXX:XXXX:XXXX:XXXX:XXXX:
XXXX:XXXX-20191216204636709546-88359830-
700f79b27d7234f9cb8f315fa0794e12bcedfcda
3a62b56724b3baa9140a7b220-N/A-N/A-201912
16202131683664