PTO Form 1957 (Rev 9/2005) |
OMB No. 0651-0050 (Exp. 07/31/2017) |
Response to Office Action
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
85676548 |
LAW OFFICE ASSIGNED |
LAW OFFICE 105 |
MARK SECTION |
MARK |
http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85676548 |
LITERAL ELEMENT |
NANOMET |
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. |
GOODS AND/OR SERVICES SECTION (current) |
INTERNATIONAL CLASS |
006 |
DESCRIPTION |
Ferrous alloys; other irons and steels |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
2012-42598 |
FOREIGN APPLICATION COUNTRY |
Japan |
FOREIGN FILING DATE |
05/29/2012 |
GOODS AND/OR SERVICES SECTION (proposed) |
INTERNATIONAL CLASS |
006 |
TRACKED TEXT DESCRIPTION |
Ferrous alloys; other irons and steels; irons and steels |
FINAL DESCRIPTION |
Ferrous alloys; irons and steels |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
2012-42598 |
FOREIGN APPLICATION COUNTRY |
Japan |
FOREIGN FILING DATE |
05/29/2012 |
ADDITIONAL STATEMENTS SECTION |
SIGNIFICANCE OF MARK |
NANOMET appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as applied to the
goods/services listed in the application, or any geographical significance. |
MISCELLANEOUS STATEMENT |
Upon receipt from the applicant of a copy of the corresponding Japanese registration (Japanese Trademark Registration No. 5536978, registered
on November 16, 2012), the undersigned will file a copy of the same and amend the filing basis of the present application to 44(e) with a request that the present application proceed to registration
on the amended the 44(e) filing basis. |
SIGNATURE SECTION |
RESPONSE SIGNATURE |
/Leonard Holtz/ |
SIGNATORY'S NAME |
Leonard Holtz |
SIGNATORY'S POSITION |
Attorney of record, New York bar member |
SIGNATORY'S PHONE NUMBER |
212-319-4900 |
DATE SIGNED |
01/25/2013 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Fri Jan 25 11:32:55 EST 2013 |
TEAS STAMP |
USPTO/ROA-XX.XX.XXX.XX-20
130125113255879290-856765
48-490da2e93be2d94994c3a6
e79982062e757-N/A-N/A-201
30125103850775966 |
PTO Form 1957 (Rev 9/2005) |
OMB No. 0651-0050 (Exp. 07/31/2017) |
Response to Office Action
To the Commissioner for Trademarks:
Application serial no.
85676548 NANOMET(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85676548) has been amended as follows:
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 006 for Ferrous alloys; other irons and steels
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.
Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority
based upon a foreign application.
For a certification 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 authorized users in connection with the identified goods/services, 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 or services that meet the certification standards of the
applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Japan application number 2012-42598 filed 05/29/2012]. 15 U.S.C.Section
1126(d), as amended.
Proposed:
Tracked Text Description: Ferrous alloys;
other irons and steels;
irons and steelsClass 006
for Ferrous alloys; irons and steels
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.
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority
based upon a foreign application.
For a certification 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 authorized users in connection with the identified goods/services, 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 or services that meet the certification standards of the
applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Japan application number 2012-42598 filed 05/29/2012]. 15 U.S.C.Section
1126(d), as amended.
ADDITIONAL STATEMENTS
Significance of wording, letter(s), or numeral(s)
NANOMET appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as applied to the goods/services listed in the application, or any geographical
significance.
Miscellaneous Statement
Upon receipt from the applicant of a copy of the corresponding Japanese registration (Japanese Trademark Registration No. 5536978, registered on November 16, 2012), the undersigned will file a copy
of the same and amend the filing basis of the present application to 44(e) with a request that the present application proceed to registration on the amended the 44(e) filing basis.
SIGNATURE(S)
Response Signature
Signature: /Leonard Holtz/ Date: 01/25/2013
Signatory's Name: Leonard Holtz
Signatory's Position: Attorney of record, New York bar member
Signatory's Phone Number: 212-319-4900
The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and
other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.
attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a
signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney
appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this
matter.
Serial Number: 85676548
Internet Transmission Date: Fri Jan 25 11:32:55 EST 2013
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20130125113255879
290-85676548-490da2e93be2d94994c3a6e7998
2062e757-N/A-N/A-20130125103850775966