| PTO- 1957 |
| Approved for use through 11/30/2023. OMB 0651-0050 |
| 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. |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88506273 |
| LAW OFFICE ASSIGNED | LAW OFFICE 126 |
| MARK SECTION | |
| MARK | mark |
| LITERAL ELEMENT | EOS |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
|
This filing is responsive to the Nonfinal Office Action issued August 31, 2020 (hereinafter the "Office Action"). Applicant requests consideration of the following remarks. SPECIMEN DOES NOT SHOW USE IN COMMERCE On August 5th, 2020, applicant submitted a Statement of Use for International Classes 006 and 019, along with a Specimen consisting of a Certificate of Conformance provided with goods upon shipment and bearing the EOS mark. The Office Action rejects the Specimen as failing to show use of the mark in commerce. In particular, the Office Action alleges 1) the Specimen is merely material used by applicant to conduct its internal business, and 2) the Specimen is merely advertising. Applicant respectfully submits that the submitted Specimen shows use of the mark in commerce because 1) such Specimen is essential to conducting external business, not internal business, and 2) such Specimen is not advertising. The following response addresses each of these points in turn. As an initial matter, applicant would like to clarify the nature of the Specimen. As noted above, the Specimen consists of a Certificate of Conformance bearing the mark and provided by the mark owner with goods upon shipment. The relevant goods are NUHOMS® EOS™ Horizontal Storage Module Systems for storing spent nuclear waste. The Certificate of Conformance certifies that the specific EOS™ systems (identified by serial number) comply with the applicable regulatory standards, e.g., U.S. Nuclear Regulatory Commission Certificate of Compliance Number 1042. Understandably, conformance of such goods with such standards is of the highest importance to public safety and to the mark owner's reputation. The NUHOMS® EOS™ Horizontal Storage Module Systems are goods under Classes 006 and 019. See Specimen at page 6 (CERTIFICATE OF CONFORMANCE SPENT FUEL STORAGE CASK NUHOMS® EOS™ 37PTH DRY SHIELD CANISTER (DSC)) and page 7 (EOS01-0105, Rev. 5 Procurement Specification for the NUHOMS® EOS-37PTH Dry Shielded Canisters) (EOS01-0108, Rev. 0 Procurement Specifications for the Metal Matrix Composite (MMC) Neutron Absorber Material for use in the Baskets of NUHOMS® EOS Dry Shield Canisters)(emphasis added). The Certificate of Conformance is provided to the customer for the customer's benefit, i.e., to assure the customer that the EOS™ nuclear waste containers will not fail. Thus, the Specimen serves a critical external function in commerce, i.e., it uses the EOS™ mark as a source indicator for spent nuclear waste systems that satisfy all applicable regulatory standards. The Specimen does not serve an internal function, as alleged by the Office Action. Indeed, the Certificate of Conformance is not any of the specific types of internal materials cited in the Office Action – it is not an invoice, nor a bill head, waybill, warranty, or business stationery. For these reasons, the regulatory provisions, cases, and T.M.E.P. sections cited by the Office Action do not apply to the Specimen. Further, the Specimen is neither advertising nor any other "Material Not Appropriate as Specimens for Trademarks" identified in T.M.E.P. § 904.04. In particular, the Specimen is not advertising for the simple reason that it does not solicit any purchase. Rather, it relates only to an already-consummated purchase, i.e., Dominion Energy Purchase Order #70333406. The Specimen does not provide any means by which a prospective customer could place a new order, such as a purchase form or even a sales contact. Indeed, a Quality Assurance Manager (not a salesperson) signed the Specimen. In contrast, the Specimen serves a unique source-identifying function that assures the customer (in this case, Dominion Energy) that the purchased EOS™ system will not fail. In this sense, the Specimen is analogous to a source-identifying label applied to the goods or commercial packaging for goods, which are expressly permitted as suitable specimens under T.M.E.P. §904.03(a) and (c). In addition, the inclusion of this Certificate of Conformance is required by Federal Law to accompany the product, not unlike a package insert for pharmaceutical preparations. For the foregoing reasons, applicant respectfully submits that the Specimen does show use in commerce of the applied-for goods. Applicant requests withdrawal of the refusal and issuance of the Certificate of Registration. If the Examining Attorney has any questions, please contact the Attorney of Record. |
|
| CORRESPONDENCE INFORMATION (current) | |
| NAME | Frances M. Jagla |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | efiling@cojk.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | frances.jagla@cojk.com |
| DOCKET/REFERENCE NUMBER | TRWI-2-58882 |
| CORRESPONDENCE INFORMATION (proposed) | |
| NAME | Frances M. Jagla |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | efiling@cojk.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | frances.jagla@cojk.com |
| DOCKET/REFERENCE NUMBER | TRWI-2-58882 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /fmjagla/ |
| SIGNATORY'S NAME | Frances M. Jagla |
| SIGNATORY'S POSITION | Attorney of Record, Washington State bar member |
| SIGNATORY'S PHONE NUMBER | 206 682 8100 |
| DATE SIGNED | 01/05/2021 |
| ROLE OF AUTHORIZED SIGNATORY | Authorized U.S.-Licensed Attorney |
| SIGNATURE METHOD | Sent to third party for signature |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Jan 06 12:29:58 ET 2021 |
| TEAS STAMP | USPTO/ROA-XX.XX.XXX.XX-20 210106122958344986-885062 73-7609aa66c4292b271e6c96 075ea15fe7f87b697df563023 bbafe4401a84657e6e76-N/A- N/A-20210105135359677564 |
| PTO- 1957 |
| Approved for use through 11/30/2023. OMB 0651-0050 |
| 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. |
This filing is responsive to the Nonfinal Office Action issued August 31, 2020 (hereinafter the "Office Action"). Applicant requests consideration of the following remarks.
SPECIMEN DOES NOT SHOW USE IN COMMERCE
On August 5th, 2020, applicant submitted a Statement of Use for International Classes 006 and 019, along with a Specimen consisting of a Certificate of Conformance provided with goods upon shipment and bearing the EOS mark.
The Office Action rejects the Specimen as failing to show use of the mark in commerce. In particular, the Office Action alleges 1) the Specimen is merely material used by applicant to conduct its internal business, and 2) the Specimen is merely advertising.
Applicant respectfully submits that the submitted Specimen shows use of the mark in commerce because 1) such Specimen is essential to conducting external business, not internal business, and 2) such Specimen is not advertising. The following response addresses each of these points in turn.
As an initial matter, applicant would like to clarify the nature of the Specimen. As noted above, the Specimen consists of a Certificate of Conformance bearing the mark and provided by the mark owner with goods upon shipment. The relevant goods are NUHOMS® EOS™ Horizontal Storage Module Systems for storing spent nuclear waste. The Certificate of Conformance certifies that the specific EOS™ systems (identified by serial number) comply with the applicable regulatory standards, e.g., U.S. Nuclear Regulatory Commission Certificate of Compliance Number 1042. Understandably, conformance of such goods with such standards is of the highest importance to public safety and to the mark owner's reputation.
The NUHOMS® EOS™ Horizontal Storage Module Systems are goods under Classes 006 and 019. See Specimen at page 6 (CERTIFICATE OF CONFORMANCE SPENT FUEL STORAGE CASK NUHOMS® EOS™ 37PTH DRY SHIELD CANISTER (DSC)) and page 7 (EOS01-0105, Rev. 5 Procurement Specification for the NUHOMS® EOS-37PTH Dry Shielded Canisters) (EOS01-0108, Rev. 0 Procurement Specifications for the Metal Matrix Composite (MMC) Neutron Absorber Material for use in the Baskets of NUHOMS® EOS Dry Shield Canisters)(emphasis added).
The Certificate of Conformance is provided to the customer for the customer's benefit, i.e., to assure the customer that the EOS™ nuclear waste containers will not fail. Thus, the Specimen serves a critical external function in commerce, i.e., it uses the EOS™ mark as a source indicator for spent nuclear waste systems that satisfy all applicable regulatory standards. The Specimen does not serve an internal function, as alleged by the Office Action. Indeed, the Certificate of Conformance is not any of the specific types of internal materials cited in the Office Action – it is not an invoice, nor a bill head, waybill, warranty, or business stationery.
For these reasons, the regulatory provisions, cases, and T.M.E.P. sections cited by the Office Action do not apply to the Specimen.
Further, the Specimen is neither advertising nor any other "Material Not Appropriate as Specimens for Trademarks" identified in T.M.E.P. § 904.04. In particular, the Specimen is not advertising for the simple reason that it does not solicit any purchase. Rather, it relates only to an already-consummated purchase, i.e., Dominion Energy Purchase Order #70333406. The Specimen does not provide any means by which a prospective customer could place a new order, such as a purchase form or even a sales contact. Indeed, a Quality Assurance Manager (not a salesperson) signed the Specimen.
In contrast, the Specimen serves a unique source-identifying function that assures the customer (in this case, Dominion Energy) that the purchased EOS™ system will not fail. In this sense, the Specimen is analogous to a source-identifying label applied to the goods or commercial packaging for goods, which are expressly permitted as suitable specimens under T.M.E.P. §904.03(a) and (c). In addition, the inclusion of this Certificate of Conformance is required by Federal Law to accompany the product, not unlike a package insert for pharmaceutical preparations.
For the foregoing reasons, applicant respectfully submits that the Specimen does show use in commerce of the applied-for goods. Applicant requests withdrawal of the refusal and issuance of the Certificate of Registration.
If the Examining Attorney has any questions, please contact the Attorney of Record.