TEAS Request Reconsideration after FOA

PTO Form 1960 (Rev 9/2007)

OMB No. 0651-0050 (Exp. 07/31/2017)

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PTO Form 1960 (Rev 9/2007)

OMB No. 0651-0050 (Exp. 07/31/2017)

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 85973526 SUPERIOR(Standard Characters, see http://uspto.report/TM/85973526/mark.png) has been amended as follows:

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

The Application is amended to register on the Supplemental Register.  The refusal to register based on the mark being merely descriptive is rendered moot.  An Allegation of Use will be submitted.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Controller systems comprising a processor for industrial equipment; controller systems comprising a processor used for semiconductor manufacturing systems; electrical controllers; electronic controllers used for semiconductor manufacturing systems; electronic controllers for industrial equipment; configurable electronic controllers for industrial equipment; electronic input/output controllers for industrial equipment; configurable electronic input/output controllers for industrial equipment; electronic control systems for machines in industrial equipment; electronic input/output control systems for industrial equipment; embedded systems, namely, computer hardware and software for machine control, sold as a component part of controller systems; interface modules for embedded machine control applications in industrial equipment; remote interface modules for embedded machine control applications in industrial equipment; control modules for embedded machine control applications in industrial equipment
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: Controller systems comprising a processor for industrial equipment; Controller systems comprising a micro processor for industrial equipment; controller systems comprising a processor used for semiconductor manufacturing systems; controller systems comprising a micro processor used for semiconductor manufacturing systems; electrical controllers; electronic controllers used for semiconductor manufacturing systems; electronic controllers for industrial equipment; electronic controllers for industrial equipment in the field of semiconductor manufacturing; configurable electronic controllers for industrial equipment; configurable electronic controllers for industrial equipment in the field of semiconductor manufacturing; electronic input/output controllers for industrial equipment; electronic input/output controllers for industrial equipment in the field of semiconductor manufacturing; configurable electronic input/output controllers for industrial equipment; configurable electronic input/output controllers for industrial equipment in the field of semiconductor manufacturing; electronic control systems for machines in industrial equipment; electronic input/output control systems for industrial equipment; electronic input/output control systems for machines in industrial equipment; embedded systems, namely, computer hardware and software for machine control, sold as a component part of controller systems; embedded systems, namely, computer hardware and software for machine control, sold as a component part of controller systems used for semiconductor manufacturing; interface modules for embedded machine control applications in industrial equipment; remote interface modules for embedded machine control applications in industrial equipment; control modules for embedded machine control applications in industrial equipmentClass 009 for Controller systems comprising a micro processor for industrial equipment; controller systems comprising a micro processor used for semiconductor manufacturing systems; electrical controllers; electronic controllers used for semiconductor manufacturing systems; electronic controllers for industrial equipment in the field of semiconductor manufacturing; configurable electronic controllers for industrial equipment in the field of semiconductor manufacturing; electronic input/output controllers for industrial equipment in the field of semiconductor manufacturing; configurable electronic input/output controllers for industrial equipment in the field of semiconductor manufacturing; electronic control systems for machines in industrial equipment; electronic input/output control systems for machines in industrial equipment; embedded systems, namely, computer hardware and software for machine control, sold as a component part of controller systems used for semiconductor manufacturing; interface modules for embedded machine control applications in industrial equipment; remote interface modules for embedded machine control applications in industrial equipment; control modules for embedded machine control applications in industrial equipment
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.

ADDITIONAL STATEMENTS
Supplemental Register
The applicant seeks registration of the mark on the Supplemental Register (i.e., a change of the words 'Principal Register' to 'Supplemental Register'). NOTE: The applicant has separately filed an Allegation of Use, to change the basis of this application from Section 1(b), intent-to-use, to Section 1(a), use in commerce.


SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or amendment to allege use (AAU) unsigned, all statements in the application or AAU and this submission based on the signatory's own knowledge are true, and all statements in the application or AAU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AAU: If the applicant filed an unsigned application under 15 U.S.C. Section 1051(a) or AAU under 15 U.S.C. Section 1051(c), the signatory additionally believes that: the applicant is the owner of the trademark/service mark sought to be registered; the applicant or the applicant's related company or licensee is using the mark in commerce and has been using the mark in commerce as of the filing date of the application or AAU on or in connection with the goods/services in the application or AAU, and such use by the applicant's related company or licensee inures to the benefit of the applicant; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AAU on or in connection with the goods/services in the application or AAU; and to the best of the signatory's knowledge and belief, no other person has the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. Section 1051(b), Section 1126(d), and/or Section 1126(e), the signatory additionally believes that: the applicant is entitled to use the mark in commerce; the applicant has a bona fide intention and has had a bona fide intention as of the application filing date to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the goods/services in the application; and to the best of the signatory's knowledge and belief, no other person has the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion or mistake, or to deceive.

Signature: /Daryl A. Gault/      Date: 11/10/2014
Signatory's Name: Daryl A. Gault
Signatory's Position: President
Signatory's Phone Number: 831.461.5747


Request for Reconsideration Signature
Signature: /Edward B. Weller/     Date: 11/10/2014
Signatory's Name: Edward B. Weller
Signatory's Position: Attorney of record, California bar member

Signatory's Phone Number: 408.871.0371

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.

The applicant is not filing a Notice of Appeal in conjunction with this Request for Reconsideration.

        
Serial Number: 85973526
Internet Transmission Date: Mon Nov 10 15:53:33 EST 2014
TEAS Stamp: USPTO/RFR-XX.XXX.XXX.XXX-201411101553332
10990-85973526-500acd2892b9e478587fb5c22
3956f622854d7ae3eab3c7394f9be848d4ae9293
9-N/A-N/A-20141107181019309236