Response to Office Action

PTO Form 1957 (Rev 5/2006)

OMB No. 0651-0050 (Exp. 04/2009)

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PTO Form 1957 (Rev 5/2006)

OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 78701830 has been amended as follows:
Argument(s)
In response to the substantive refusal(s), please note the following:

1.  Identification of Goods.

The Examiner has objected to the classification of “marking machines” in Class 9.  Further, the Examiner has found Applicant’s use of commas to be confusing, specifically with reference to the software and its functions.  Applicant has therefore amended the identification of goods to adopt the Examining Attorney’s suggestions to the extent that they are accurate.  Specifically, Applicant has added Class 7 to the application and has moved “computer electronic interfaces” and “contactors” ahead of software in Class 9.

The amended identification of goods and services is believed to be proper in that it clarifies the original recitation of goods and services but introduces no new goods or services not already within the scope of the original recitation. 37 C.F.R §2.71(a); TMEP 1402.01 and 1402.03(a).

Should the Examining Attorney not deem the amended application to be allowable for any reason, the Applicant desires that the above amendment to the identification of goods not be made to the application as the Applicant does not wish to restrict the breadth of the original identification unless this amendment and response paces the application in condition for publication.

2.  Likelihood of Confusion.

Applicant wishes to notify the Examiner that pending application 78/572634, which was raised by the Examiner as a possible ground for refusal of registration should the application proceed to registration, has been expressly abandoned by its owner.

Applicant notes that the Examining Attorney found no similar registered mark that would bar registration under 15 U.S.C. Section 1052(d).  Accordingly, if there are no other outstanding issues or requirements, Applicant respectfully requests that this application be advanced to publication.

Classification and Listing of Goods/Services

Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 009 for electric, electromechanical and electronic components, namely relays, switches, sockets, counters, timers, circuit breakers, annunciators, sequence controllers, terminal blocks, sensors, connectors, programmable logic controllers, explosion proof controls, security controls, control panels and indicators, interconnectors, LED or incandescent illuminated display lights, pilot lights, LED illuminated pilot lights, fluid logic controls, power supplies, operator interfaces, software for managing programmable logic controllers, computer electronic user interfaces, and software for managing O/I operator interfaces, contactors, and marking machines, namely one-step, two color, precision printing machine for marking small electronic parts and devices including millimeter size transistors
Original Filing Basis: 1(b).
Proposed: Class 009 for electric, electromechanical and electronic components, namely relays, switches, sockets, counters, timers, circuit breakers, annunciators, sequence controllers, terminal blocks, sensors, connectors, programmable logic controllers, explosion proof controls, security controls, control panels and indicators, interconnectors, LED or incandescent illuminated display lights, pilot lights, LED illuminated pilot lights, fluid logic controls, power supplies, operator interfaces, computer electronic user interfaces, and contactors; software for managing programmable logic controllers; software for managing O/I operator interfaces
Applicant hereby adds the following class of goods/services to the application:
New:
Class 007 for marking machines, namely one-step, two color, precision printing machine for marking small electronic parts and devices including millimeter size transistors
Section 1(b), The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection withthe identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Fees
Fee(s) in the amount of $325 is being submitted.


Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii). If the applicant is seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date. 37 C.F.R. Secs. 2.34(a)(1)(i). The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true.

Signature: /Nicolas S. Gold/      Date: 03/29/2006
Signatory's Name: Nicolas S. Gold
Signatory's Position: Attorney for Applicant

Response Signature

Signature: /Nicolas S. Gold/     Date: 03/29/2006
Signatory's Name: Nicolas S. Gold
Signatory's Position: Attorney for Applicant
        
RAM Sale Number: 655
RAM Accounting Date: 03/30/2006
        
Serial Number: 78701830
Internet Transmission Date: Wed Mar 29 17:52:23 EST 2006
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2006032917522371
7046-78701830-3202c4dc027f531a760944732d
115c6dcb8-DA-655-20060328194704075445