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. 88595436 MSI(Standard Characters, see http://uspto.report/TM/88595436/mark.png) has been amended as follows:

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

The instant application for the wordmark MSI has been rejected under Trademark Act Section 2(d) as having a likelihood of confusion with the marks in U.S. Registration Nos. 5179252 and 5365556 to the marks to the wordmark MSI and its associated logo. In view of the current amendments to the description of the goods/services of the instant application to "Engineering, design, and manufacturing services in the field of military graded vehicles, accessories, components, and uplifts", Applicant believes this likelihood of confusion issue has been traversed and therefore should be removed. Although both the applied for mark and the cited registered marks contain the wording MSI and both are registered in class 42, these registered marks are for "Engineering services in the field of medical devices, namely, balloon pleating and folding, catheter lamination, thermal and laser bonding, stent loading, stent crimping, marker band swaging, heart valve crimping, mandrel straightening, radial force and catheter simulated use and torque-testing equipment". Clearly these engineering services related to the medical device industry will be advertised and sold to sophisticated purchasers like medical device manufacturers, hospitals, doctors or others in the medical community. As such, the channels of trade for the registered marks are clearly different then the amended goods and services of "Engineering, design and manufacturing in the field of military graded vehicles, accessories, components, and uplifts" which will be advertised and sold to sophisticated purchasers in the need of military graded vehicles, accessories, components and uplifts. As such, there is clearly no issue of likelihood of confusion with the registered marks for MSI and the instant application for MSI as the services are not similar, are not commercially related, and are not sold in the same channels of trade. Applicant respectfully requests the Examiner to remove the rejection of the instant mark under Trademark Act Section 2(d) as having a likelihood of confusion.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Engineering; Engineering design services; Engineering services in the field of military vehicles and systems, namely, components, technology and processes, suspensions, mechanical design, electronic controls, mechatronics, CFD thermal analysis for full load cooling, whole vehicle development, non-standard commercial vehicles, suspension technologies, brake system design upgrade and testing, driveline upgrades and re-power efforts, and customer system integration; Consulting in the field of engineering; Mechanical engineering; Product development and engineering services for others
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 05/01/2012 and first used in commerce at least as early as 05/01/2012 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Engineering; Engineering, design, and manufacturing services in the field of military graded vehicles, accessories, components, and uplifts; Engineering design services; Engineering services in the field of military vehicles and systems, namely, components, technology and processes, suspensions, mechanical design, electronic controls, mechatronics, CFD thermal analysis for full load cooling, whole vehicle development, non-standard commercial vehicles, suspension technologies, brake system design upgrade and testing, driveline upgrades and re-power efforts, and customer system integration; Consulting in the field of engineering; Mechanical engineering; Product development and engineering services for othersClass 042 for Engineering, design, and manufacturing services in the field of military graded vehicles, accessories, components, and uplifts
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 05/01/2012 and first used in commerce at least as early as 05/01/2012 , and is now in use in such commerce.
SIGNATURE(S)
Response Signature
Signature: /jeffrey c watson/     Date: 01/24/2020
Signatory's Name: Jeffrey C. Watson
Signatory's Position: Attorney of Record, NC bar member

Signatory's Phone Number: 704-625-7747

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.

        
Serial Number: 88595436
Internet Transmission Date: Fri Jan 24 09:52:14 EST 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2020012409521493
5166-88595436-700acabc064305226e23fbace8
6109677d9743fd5b3cf38486d0b9d6d672ffdb1-
N/A-N/A-20200124094901377265