Response to Office Action

OMRON

OMRON Corporation

Response to Office Action

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 86144840
LAW OFFICE ASSIGNED LAW OFFICE 109
MARK SECTION
MARK FILE NAME http://uspto.report/TM/86144840/mark.png
LITERAL ELEMENT OMRON
STANDARD CHARACTERS NO
USPTO-GENERATED IMAGE NO
COLOR(S) CLAIMED
(If applicable)
Color is not claimed as a feature of the mark.
DESCRIPTION OF THE MARK
(and Color Location, if applicable)
The mark consists of the stylized wording "omRon".
ARGUMENT(S)

-Applicant notes that the wording "speed measuring apparatus for photography" in International Class 9 was previously accepted by the USPTO in Registration No. 4004492.  Applicant respectfully requests that for the sake of consistency, this wording be allowed in the instant application.

-Applicant notes that the wording "analytical apparatus for medical purposes" in International Class 10 was previously accepted by the USPTO in Registration No. 3401980.  Applicant respectfully request that for the sake of consistency, this wording be allowed in the instant application.

EVIDENCE SECTION
DESCRIPTION OF EVIDENCE FILE Arguments in support of Applicant's amended identification.
GOODS AND/OR SERVICES SECTION (007)(current)
INTERNATIONAL CLASS 007
DESCRIPTION
Electric door openers and closers; self-regulating fuel pumps; power generators; emergency power generators; electrostatic eliminators; electrostatic eliminators by generating ion; cleaning apparatus for dust collection in buildings; apparatus for the removal of dust from buildings; dust removing installations for cleaning purposes; electric dust removing cleaning apparatus; compressors machines and their parts; pneumatic or hydraulic machines and instruments; blowing machines; centrifugal blower; rotary blowers; air suction machines; blowers for evacuating smoke fog; devices which automatically collect cigar ashes and cigarette butts and which are installed in game arcades including pachinko parlors; blowers for separating smoking area installed in game arcades including pachinko parlors; coin carrier devices for pachinko machines; paper money carrier devices for pachinko machines; printing or bookbinding machines and apparatus; starters for motors and engines; AC motors and DC motors not including those for land vehicles but including "parts" for any AC motors and DC motors; alternators; DC generators; machines and equipment for manufacturing printed circuit boards; machines and equipment for manufacturing and processing electronic printed circuit boards, namely, placing machines for mounting electrical components on printed circuit boards; machines and equipment which automatically mount semiconductors, diodes, condensers, resistors and other electronic parts on printed circuit boards; machines and equipment which automatically mount IC (integrated circuit) chips and other electronic parts on printed circuit boards; transmissions for machines
FILING BASIS Section 1(b)
FILING BASIS Section 44(d)
        FOREIGN APPLICATION NUMBER 2013-087501
       FOREIGN APPLICATION COUNTRY Japan
        FOREIGN FILING DATE 11/08/2013
FILING BASIS Section 44(e)
        FOREIGN REGISTRATION NUMBER 3162408
       FOREIGN REGISTRATION
       COUNTRY
Japan
       FOREIGN REGISTRATION
       DATE
06/28/1996
       FOREIGN EXPIRATION DATE 06/28/2016
GOODS AND/OR SERVICES SECTION (007)(proposed)
INTERNATIONAL CLASS 007
TRACKED TEXT DESCRIPTION
Electric door openers and closers; self-regulating fuel pumps; self-regulating fuel pumps for service stations; power generators; power generators, namely, electric power generators for indoor use, electric power generators for emergency use, and mobile electric power generators; emergency power generators; electrostatic eliminators; electrostatic eliminators by generating ion; cleaning apparatus for dust collection in buildings, namely, central vacuum cleaning installations, dust removing installations for cleaning purposes, and dust separators; cleaning apparatus for dust collection in buildings; compressors for machines and their parts; apparatus for the removal of dust from buildings; blowing machines, namely, power-operated blowers, centrifugal blowers for industrial purposes, rotary blowers for industrial purposes, air suction machines, and power-operated blowers for evacuating smoke fog; dust removing installations for cleaning purposes; automated machines for the disposal of cigar and cigarette ash and waste; electric dust removing cleaning apparatus; power-operated blowers for separating smoking areas installed in game arcades, including pachinko parlors; compressors machines and their parts; printing or bookbinding machines for industrial purposes; pneumatic or hydraulic machines and instruments; starters for motors and engines; blowing machines; AC motors and DC motors, and their parts, not including those for land vehicles; centrifugal blower; alternators; rotary blowers; DC generators; air suction machines; machines for manufacturing printed circuit boards; blowers for evacuating smoke fog; machines for manufacturing and processing electronic printed circuit boards, namely, placing machines for mounting electrical components on printed circuit boards; devices which automatically collect cigar ashes and cigarette butts and which are installed in game arcades including pachinko parlors; machines which automatically mount semiconductors, diodes, condensers, resistors and other electronic parts on printed circuit boards; blowers for separating smoking area installed in game arcades including pachinko parlors; machines which automatically mount IC (integrated circuit) chips and other electronic parts on printed circuit boards; coin carrier devices for pachinko machines; transmissions for machines; paper money carrier devices for pachinko machines; printing or bookbinding machines and apparatus; AC motors and DC motors not including those for land vehicles but including "parts" for any AC motors and DC motors; machines and equipment for manufacturing printed circuit boards; machines and equipment for manufacturing and processing electronic printed circuit boards, namely, placing machines for mounting electrical components on printed circuit boards; machines and equipment which automatically mount semiconductors, diodes, condensers, resistors and other electronic parts on printed circuit boards; machines and equipment which automatically mount IC (integrated circuit) chips and other electronic parts on printed circuit boards
FINAL DESCRIPTION
Electric door openers and closers; self-regulating fuel pumps for service stations; power generators, namely, electric power generators for indoor use, electric power generators for emergency use, and mobile electric power generators; electrostatic eliminators; electrostatic eliminators by generating ion; cleaning apparatus for dust collection in buildings, namely, central vacuum cleaning installations, dust removing installations for cleaning purposes, and dust separators; compressors for machines and their parts; blowing machines, namely, power-operated blowers, centrifugal blowers for industrial purposes, rotary blowers for industrial purposes, air suction machines, and power-operated blowers for evacuating smoke fog; automated machines for the disposal of cigar and cigarette ash and waste; power-operated blowers for separating smoking areas installed in game arcades, including pachinko parlors; printing or bookbinding machines for industrial purposes; starters for motors and engines; AC motors and DC motors, and their parts, not including those for land vehicles; alternators; DC generators; machines for manufacturing printed circuit boards; machines for manufacturing and processing electronic printed circuit boards, namely, placing machines for mounting electrical components on printed circuit boards; machines which automatically mount semiconductors, diodes, condensers, resistors and other electronic parts on printed circuit boards; machines which automatically mount IC (integrated circuit) chips and other electronic parts on printed circuit boards; transmissions for machines
FILING BASIS Section 1(b)
FILING BASIS Section 44(d)
       FOREIGN APPLICATION NUMBER 2013-087501
       FOREIGN APPLICATION COUNTRY Japan
       FOREIGN FILING DATE 11/08/2013
FILING BASIS Section 44(e)
       FOREIGN REGISTRATION NUMBER 3162408
       FOREIGN REGISTRATION
       COUNTRY
Japan
       FOREIGN REGISTRATION
       DATE
06/28/1996
       FOREIGN EXPIRATION DATE 06/28/2016
GOODS AND/OR SERVICES SECTION (009)(current)
INTERNATIONAL CLASS 009
DESCRIPTION
Encoders; power controllers; regulating apparatus, electric; remote control apparatus; electrical control panels; light regulators; measuring devices; tachometers; accumulators for hours; measuring apparatus of calories; data loggers; switches, electric; photo electric switches; basic switches; detection switches; door switches; power switches; limit switches; safety switches; tactile switches; rocker switches; pushbutton switches; toggle switches; slide switches; DIP switches; thumbwheel switches; light switches; sound wave switches; micro switches; RF switches; intercommunication apparatus; thermometers not for medical purposes; electric apparatus for communication; relays, electric; diagnostic apparatus, not for medical purposes; detectors; detectors for electrical power outage; detectors for electric current; human detectors; water leak detectors; sensing apparatus; photomicrosensors; MEMS mechanical sensors; flow sensors; pressure sensors; thermal sensors; photovoltaic sensors; visual sensors; proximity sensors; vibrational sensors; inclination sensors; liquid leakage sensors; displacement sensors; length measuring sensors; ultrasonic wave sensors; sensors for measuring incidence of light from outside of car; image sensors; fiber sensors; temperature sensors; optical fibers; parking meters; testing apparatus not for medical use; testing apparatus for PCB and sheet; testing apparatus using x-ray CT; television apparatus; point of sales terminal and peripheral equipments; electrical terminals; computer terminals and link terminals; programmable terminals; safety I/O terminals; power supplies; optical communication devices; optical transceivers; optical transponders; optical sensing devices; transmitters of electronic signals; telegraph apparatus; high frequency apparatus; high frequency signal transmission cables; high frequency signal generators; electrical transformers; high-frequency relays; frequency meters; amplifiers; time recording apparatus; transmitting sets for telecommunication; capacitors; resistances, electric; electrical indicators; radiotelegraphy sets; radiotelephony sets; blinkers, namely, signalling lights; electrical inverters; reader writer; rotary converters; chargers for batteries; electric transformers; semiconductors; IC chips; optical discs; thermostats; abacuses; meters; digital panel meters; sound locating apparatus; sound wave sensors; sound and vibration diagnosis computer software; sound reproduction apparatus; sound transmitting apparatus; microphones; connectors, electric; lasers, not for medical purposes; radar apparatus; fiber optic cables; conductors, electric; photography enlarging apparatus; sockets, plugs and other contacts, namely, electric connections; sonars; counters; optical flex circuits; electric locks; electronic locks; electromagnetic solenoids in the nature of valves; apparatus for processing of images; light guide plates; tags for Radio Frequency Identification; light emitting diodes; antennas; CCD (charge-coupled device) cameras; computer for traffic information processing; distance recording apparatus; distance measuring apparatus; automatic indicators of low pressure in vehicles tires; speed checking apparatus for vehicles; mileage recorders; electronic keys for vehicles; smart cards; integrated circuit cards; sirens; electric buzzers; alarms; theft prevention installations, electric; bells, namely, warning devices; monitoring apparatus, electric; tire pressure monitoring systems composed of tire pressure gauges and measurers for automobiles; standstill monitoring units; speed monitoring units; temperature monitoring units; speed measuring apparatus for photography; phototelegraphy apparatus; ticket dispensers; electronic publications; telephone receivers; telephone apparatus; signs, luminous; radios; punch card machines for offices; sound recording apparatus; ticket gates; electronic face authentication apparatus; ultrasonic vehicle detectors; weighing machines; pedometers; measuring apparatus for the amount of calorie consumption; physical activity measuring apparatus; activity monitors; exercise intensity measuring apparatus; sleep analyzers; computer software; PLC programming software; health management software; computer software for use in industrial automation; downloadable computer software for saving and management of data; downloadable computer software for capturing, organizing, searching, storing, synchronizing, recognizing, sharing and transmitting any number of typed, handwritten, or imaged notes or clippings on multiple computer and network platforms; downloadable computer software for optical character reading; computer software for language translation; computer software for measuring, monitoring and analyzing energy expenditure; computers; computer hardware; computer programs; computer operating program; computer programs for digital image processing; central processing units; computer peripheral devices; data processing apparatus; compact discs; encoded magnetic cards; data media; uninterruptible power supply; alternating-current power supply; stabilized power supply; energy expenditure measuring, monitoring and analyzing apparatus; power consumption measuring, monitoring and analyzing apparatus; remote monitoring and maintenance apparatus for solar power generating apparatus; power conditioners; solar batteries; solar power generating devices, namely, solar cells, photovoltaic solar modules for production of electricity, solar batteries, solar panels for production of electricity, wattmeters, electricity distribution boards, power conditioners and electricity junction boxes; ionization apparatus not for the treatment of air or water; ionization apparatus with electrostatic elimination function; air particle sensors; electrostatic sensors; programmable controllers
FILING BASIS Section 1(b)
FILING BASIS Section 44(d)
FILING BASIS Section 44(e)
GOODS AND/OR SERVICES SECTION (009)(proposed)
INTERNATIONAL CLASS 009
TRACKED TEXT DESCRIPTION
Encoders; power controllers; regulating apparatus, electric; regulating apparatus for electric current; remote control apparatus; remote control apparatus, namely, remote keyless entry fobs and sensors, and audio-visual component hand-held remote controls; electrical control panels; light regulators; measuring devices; measuring devices, namely, tachometers, accumulators for hours, and calorimeters; tachometers; electronic data loggers; accumulators for hours; electric switches; measuring apparatus of calories; switches for industrial purposes, namely, photo electric switches, basic switches, detection switches, door switches, power switches, limit switches, safety switches, tactile switches, rocker switches, pushbutton switches, toggle switches, slide switches, DIP (dual in-line package) electric switches, thumbwheel switches, light switches, ultra switches, micro switches, and RF (radio frequency) microwave switches; data loggers; intercommunication apparatus, namely, wireless intercoms, cell phones, headsets and microphones; switches, electric; thermometers not for medical purposes; photo electric switches; electric apparatus for communication, namely, signal transmitters, signal receivers, signal encoders and signal decoders; basic switches; electric relays; detection switches; diagnostic apparatus not for medical purposes, namely, in-line connectors, diagnostic sub-D connectors, and diagnostic meters for identifying network power, data errors, excessive bandwidth consumption and circuit problems; door switches; detectors, namely, detectors for electrical power outage, detectors for electric current, human detectors and water leak detectors; power switches; sensing apparatus, namely, photomicrosensors, MEMS (Microelectromechanical systems) mechanical sensors, flow sensors, pressure sensors, thermal sensors, photovoltaic sensors, visual sensors, proximity sensors, vibrational sensors, inclination sensors, liquid leakage sensors, displacement sensors, length measuring sensors, ultrasonic wave sensors, sensors for measuring incidence of light from outside of car, image sensors, fiber sensors, and temperature sensors; limit switches; optical fibers; safety switches; parking meters; tactile switches; testing apparatus not for medical use, namely, testing apparatus for PCB (printed circuit boards) and sheet, and testing apparatus using x-ray CT (computed tomography); rocker switches; television apparatus, namely, television sets; pushbutton switches; point of sales terminal and peripheral equipments, namely, cash drawers, column receipt printers, barcode scanners, printer cables, and printer ribbons; toggle switches; electrical terminals, namely, computer terminals, link terminals, programmable terminals, and safety I/O (input output) terminals; slide switches; power supplies; DIP switches; optical communication devices, namely, optical transceivers, and optical transponders; thumbwheel switches; optical sensors; light switches; transmitters of electronic signals; sound wave switches; automatic telegraph apparatus; micro switches; high frequency apparatus, namely, high frequency signal transmission cables, high frequency signal generators, electrical transformers, high frequency signal connectors, and high-frequency electric relays; RF switches; frequency meters; intercommunication apparatus; amplifiers; time recording apparatus; electric apparatus for communication; transmitting sets for telecommunication, namely, telecommunication transmitters; relays, electric; capacitors; diagnostic apparatus, not for medical purposes; electric resistances; detectors; electronic indicators, namely, digital displays and panel meters; detectors for electrical power outage; radiotelegraphy sets; detectors for electric current; radiotelephony sets; human detectors; blinkers, namely, automobile indicator lights; water leak detectors; electrical inverters; sensing apparatus; reader writer, namely, apparatus for reading and writing data used in radio frequency identification (RFID) repeating exchange machines; photomicrosensors; rotary converters; MEMS mechanical sensors; chargers for batteries; flow sensors; electric transformers; pressure sensors; semiconductors; thermal sensors; IC (integrated circuit) chips, namely, tags for Radio Frequency Identification (RFID); photovoltaic sensors; thermostats; visual sensors; abacuses; proximity sensors; meters, namely, digital panel meters, namely, an electronic instrument that displays an input signal in either a digital or analog form; vibrational sensors; sound locating apparatus, namely, sound wave sensors, and sound and vibration diagnosis computer software; inclination sensors; sound wave sensors; liquid leakage sensors; sound and vibration diagnosis computer software; displacement sensors; sound reproduction apparatus; length measuring sensors; sound transmitting apparatus; ultrasonic wave sensors; microphones; sensors for measuring incidence of light from outside of car; electric connectors; image sensors; lasers, not for medical purposes; fiber sensors; radar apparatus; temperature sensors; fiber optic cables; electric conductors; photography enlarging apparatus, namely, photograph processing enlargers; testing apparatus not for medical use; sockets, plugs and other contacts, namely, electric connections; testing apparatus for PCB and sheet; sonars; testing apparatus using x-ray CT; counters, namely, industrial automation controls; television apparatus; electronic components in the nature of control components, namely, counters, preset counters, totalizing counters, time counters, and electromagnetic counters; point of sales terminal and peripheral equipments; optical flex circuits, namely, fiber optic circuitry; electrical terminals; electric locks; computer terminals and link terminals; electronic locks; programmable terminals; electromagnetic solenoids in the nature of valves; safety I/O terminals; apparatus for processing of images; light guide plates, namely, backlight unit (BLU) for use with televisions, personal computers, tablets, mobile phones, and digital cameras; optical communication devices; light emitting diodes (LEDs); optical transceivers; antennas; optical transponders; CCD (charge-coupled device) cameras; optical sensing devices; computer for traffic information processing; distance recording apparatus; telegraph apparatus; distance measuring apparatus; high frequency apparatus; automatic indicators of low pressure in vehicles tires; high frequency signal transmission cables; speed checking apparatus for vehicles; high frequency signal generators; mileage recorders; electrical transformers; electronic keys for vehicles; high-frequency relays; blank smart cards; blank integrated circuit cards; sirens; electric buzzers; transmitting sets for telecommunication; alarms, namely, fire alarms and gas alarms; electric theft prevention installations; resistances, electric; bells, namely, warning devices; electrical indicators; electric monitoring apparatus, namely, tire pressure monitoring systems composed of tire pressure gauges and measurers for automobiles, standstill monitoring units, speed monitoring units, and temperature monitoring units; speed measuring apparatus for photography; phototelegraphy apparatus; blinkers, namely, signalling lights; electronic apparatus, namely, train ticket dispensers; downloadable electronic publications, namely, magazines, articles, newsletters, brochures, leaflets, pamphlets, handbooks, booklets, instruction manuals, reports and pictures in the fields of industrial automation, health care, electronic components, automotive electronics, and social systems recorded on computer media; reader writer; telephone receivers; telephone apparatus; luminous signs; radios; punch card machines for offices in the nature of punch clocks; IC chips; sound recording apparatus; optical discs; automated railway ticket gates; electronic face authentication apparatus; ultrasonic object detectors for use on vehicles; meters; weighing machines; digital panel meters; measuring apparatus for the amount of calorie consumption; sound locating apparatus; physical activity measuring apparatus, namely, pedometers; electronic apparatus, namely, devices for recording and analyzing sleep patterns, not for medical purposes; computer software, namely, programmable logic controller (PLC) programming software, health management software, computer software for use in industrial automation, downloadable computer software for saving and management of data, downloadable computer software for capturing, organizing, searching, storing, synchronizing, recognizing, sharing and transmitting any number of typed, handwritten, or imaged notes or clippings on multiple computer and network platforms, downloadable computer software for optical character reading, computer software for language translation, and computer software for measuring, monitoring and analyzing energy expenditure; computers; computer hardware; computer programs, namely, computer operating programs, and computer programs for digital image processing; connectors, electric; central processing units (CPU); computer peripheral devices; data processing apparatus; magnetic encoded cards, namely, credit cards; conductors, electric; data medias, namely, blank optical discs, blank memory cards, blank magnetic tapes, blank magnetic discs, and blank compact discs; photography enlarging apparatus; uninterruptible electrical power supply; alternating-current power supply; voltage stabilized power supply; counters; energy expenditure measuring, monitoring and analyzing apparatus, namely, electric control devices for energy management; optical flex circuits; electric power consumption measuring, monitoring and analyzing apparatus; remote monitoring and maintenance apparatus for solar power generating apparatus in the nature of computer hardware, solar power monitoring software, data processing apparatus, and warning devices; power line conditioners; solar batteries; solar power generating devices, namely, solar cells, photovoltaic solar modules for production of electricity, solar batteries, solar panels for production of electricity, wattmeters, electricity distribution boards, power conditioners and electricity junction boxes; light guide plates; coin counting or sorting machines, namely, coin carrier devices for pachinko machines; tags for Radio Frequency Identification; money counting and sorting machines, namely, paper money carrier devices for pachinko machines; light emitting diodes; ionization apparatus not for the treatment of air or water; ionization apparatus with electrostatic elimination function not for the treatment of air or water; air particle sensors; electrostatic sensors; programmable logic controller (PLC); smart cards; integrated circuit cards; alarms; theft prevention installations, electric; monitoring apparatus, electric; tire pressure monitoring systems composed of tire pressure gauges and measurers for automobiles; standstill monitoring units; speed monitoring units; temperature monitoring units; ticket dispensers; electronic publications; signs, luminous; punch card machines for offices; ticket gates; ultrasonic vehicle detectors; pedometers; physical activity measuring apparatus; activity monitors; exercise intensity measuring apparatus; sleep analyzers; computer software; PLC programming software; health management software; computer software for use in industrial automation; downloadable computer software for saving and management of data; downloadable computer software for capturing, organizing, searching, storing, synchronizing, recognizing, sharing and transmitting any number of typed, handwritten, or imaged notes or clippings on multiple computer and network platforms; downloadable computer software for optical character reading; computer software for language translation; computer software for measuring, monitoring and analyzing energy expenditure; computer programs; computer operating program; computer programs for digital image processing; central processing units; compact discs; encoded magnetic cards; data media; uninterruptible power supply; stabilized power supply; energy expenditure measuring, monitoring and analyzing apparatus; power consumption measuring, monitoring and analyzing apparatus; remote monitoring and maintenance apparatus for solar power generating apparatus; power conditioners; ionization apparatus with electrostatic elimination function; programmable controllers
FINAL DESCRIPTION
Encoders; power controllers; regulating apparatus for electric current; remote control apparatus, namely, remote keyless entry fobs and sensors, and audio-visual component hand-held remote controls; electrical control panels; light regulators; measuring devices, namely, tachometers, accumulators for hours, and calorimeters; electronic data loggers; electric switches; switches for industrial purposes, namely, photo electric switches, basic switches, detection switches, door switches, power switches, limit switches, safety switches, tactile switches, rocker switches, pushbutton switches, toggle switches, slide switches, DIP (dual in-line package) electric switches, thumbwheel switches, light switches, ultra switches, micro switches, and RF (radio frequency) microwave switches; intercommunication apparatus, namely, wireless intercoms, cell phones, headsets and microphones; thermometers not for medical purposes; electric apparatus for communication, namely, signal transmitters, signal receivers, signal encoders and signal decoders; electric relays; diagnostic apparatus not for medical purposes, namely, in-line connectors, diagnostic sub-D connectors, and diagnostic meters for identifying network power, data errors, excessive bandwidth consumption and circuit problems; detectors, namely, detectors for electrical power outage, detectors for electric current, human detectors and water leak detectors; sensing apparatus, namely, photomicrosensors, MEMS (Microelectromechanical systems) mechanical sensors, flow sensors, pressure sensors, thermal sensors, photovoltaic sensors, visual sensors, proximity sensors, vibrational sensors, inclination sensors, liquid leakage sensors, displacement sensors, length measuring sensors, ultrasonic wave sensors, sensors for measuring incidence of light from outside of car, image sensors, fiber sensors, and temperature sensors; optical fibers; parking meters; testing apparatus not for medical use, namely, testing apparatus for PCB (printed circuit boards) and sheet, and testing apparatus using x-ray CT (computed tomography); television apparatus, namely, television sets; point of sales terminal and peripheral equipments, namely, cash drawers, column receipt printers, barcode scanners, printer cables, and printer ribbons; electrical terminals, namely, computer terminals, link terminals, programmable terminals, and safety I/O (input output) terminals; power supplies; optical communication devices, namely, optical transceivers, and optical transponders; optical sensors; transmitters of electronic signals; automatic telegraph apparatus; high frequency apparatus, namely, high frequency signal transmission cables, high frequency signal generators, electrical transformers, high frequency signal connectors, and high-frequency electric relays; frequency meters; amplifiers; time recording apparatus; transmitting sets for telecommunication, namely, telecommunication transmitters; capacitors; electric resistances; electronic indicators, namely, digital displays and panel meters; radiotelegraphy sets; radiotelephony sets; blinkers, namely, automobile indicator lights; electrical inverters; reader writer, namely, apparatus for reading and writing data used in radio frequency identification (RFID) repeating exchange machines; rotary converters; chargers for batteries; electric transformers; semiconductors; IC (integrated circuit) chips, namely, tags for Radio Frequency Identification (RFID); thermostats; abacuses; meters, namely, digital panel meters, namely, an electronic instrument that displays an input signal in either a digital or analog form; sound locating apparatus, namely, sound wave sensors, and sound and vibration diagnosis computer software; sound wave sensors; sound and vibration diagnosis computer software; sound reproduction apparatus; sound transmitting apparatus; microphones; electric connectors; lasers, not for medical purposes; radar apparatus; fiber optic cables; electric conductors; photography enlarging apparatus, namely, photograph processing enlargers; sockets, plugs and other contacts, namely, electric connections; sonars; counters, namely, industrial automation controls; electronic components in the nature of control components, namely, counters, preset counters, totalizing counters, time counters, and electromagnetic counters; optical flex circuits, namely, fiber optic circuitry; electric locks; electronic locks; electromagnetic solenoids in the nature of valves; apparatus for processing of images; light guide plates, namely, backlight unit (BLU) for use with televisions, personal computers, tablets, mobile phones, and digital cameras; light emitting diodes (LEDs); antennas; CCD (charge-coupled device) cameras; computer for traffic information processing; distance recording apparatus; distance measuring apparatus; automatic indicators of low pressure in vehicles tires; speed checking apparatus for vehicles; mileage recorders; electronic keys for vehicles; blank smart cards; blank integrated circuit cards; sirens; electric buzzers; alarms, namely, fire alarms and gas alarms; electric theft prevention installations; bells, namely, warning devices; electric monitoring apparatus, namely, tire pressure monitoring systems composed of tire pressure gauges and measurers for automobiles, standstill monitoring units, speed monitoring units, and temperature monitoring units; speed measuring apparatus for photography; phototelegraphy apparatus; electronic apparatus, namely, train ticket dispensers; downloadable electronic publications, namely, magazines, articles, newsletters, brochures, leaflets, pamphlets, handbooks, booklets, instruction manuals, reports and pictures in the fields of industrial automation, health care, electronic components, automotive electronics, and social systems recorded on computer media; telephone receivers; telephone apparatus; luminous signs; radios; punch card machines for offices in the nature of punch clocks; sound recording apparatus; automated railway ticket gates; electronic face authentication apparatus; ultrasonic object detectors for use on vehicles; weighing machines; measuring apparatus for the amount of calorie consumption; physical activity measuring apparatus, namely, pedometers; electronic apparatus, namely, devices for recording and analyzing sleep patterns, not for medical purposes; computer software, namely, programmable logic controller (PLC) programming software, health management software, computer software for use in industrial automation, downloadable computer software for saving and management of data, downloadable computer software for capturing, organizing, searching, storing, synchronizing, recognizing, sharing and transmitting any number of typed, handwritten, or imaged notes or clippings on multiple computer and network platforms, downloadable computer software for optical character reading, computer software for language translation, and computer software for measuring, monitoring and analyzing energy expenditure; computers; computer hardware; computer programs, namely, computer operating programs, and computer programs for digital image processing; central processing units (CPU); computer peripheral devices; data processing apparatus; magnetic encoded cards, namely, credit cards; data medias, namely, blank optical discs, blank memory cards, blank magnetic tapes, blank magnetic discs, and blank compact discs; uninterruptible electrical power supply; alternating-current power supply; voltage stabilized power supply; energy expenditure measuring, monitoring and analyzing apparatus, namely, electric control devices for energy management; electric power consumption measuring, monitoring and analyzing apparatus; remote monitoring and maintenance apparatus for solar power generating apparatus in the nature of computer hardware, solar power monitoring software, data processing apparatus, and warning devices; power line conditioners; solar batteries; solar power generating devices, namely, solar cells, photovoltaic solar modules for production of electricity, solar batteries, solar panels for production of electricity, wattmeters, electricity distribution boards, power conditioners and electricity junction boxes; coin counting or sorting machines, namely, coin carrier devices for pachinko machines; money counting and sorting machines, namely, paper money carrier devices for pachinko machines; ionization apparatus not for the treatment of air or water; ionization apparatus with electrostatic elimination function not for the treatment of air or water; air particle sensors; electrostatic sensors; programmable logic controller (PLC)
FILING BASIS Section 1(b)
FILING BASIS Section 44(d)
FILING BASIS Section 44(e)
GOODS AND/OR SERVICES SECTION (010)(current)
INTERNATIONAL CLASS 010
DESCRIPTION
Analytical apparatus for medical purposes; arterial blood pressure measuring apparatus; cuffs for blood pressure monitors; blood testing apparatus; body fat analyzers and monitors; diagnostic apparatus for medical purposes; electrocardiographs; electrodes for medical use; hearing aids for the deaf; inhalers; nebulizers; low frequency treatment apparatus; electrotherapy devices for providing transcutaneous electrical nerve stimulation; massage apparatus and instruments; sprayers for medical purposes; thermoelectric therapeutic instruments; thermometers for medical purposes; body composition monitors; fever thermometers; anesthesia monitoring apparatus; pulse wave monitors; expired-gas monitors; respirometers; oximeters; vital signs monitors; medical devices for performing vascular testing; sensors for monitoring blood glucose level as part of blood glucose meters; heart rate monitors; pulse rate monitors; peak flow meters; stethoscopes; oxygen breathing apparatus; oxygen inhalers; medical apparatus and instruments, namely, remote data collecting apparatus and instruments for use in sleeping disorder analysis; medical apparatus and instruments for diabetes monitoring; blood glucose meters; lancet; lancing devices; medical diagnostic test strips for blood analysis; medical sleep analyzers, namely, a device for recording disturbances while asleep and analyzing one's sleep patterns, for monitoring sleep conditions, and/or for measuring sleeping time by measuring movement of one's chest, change of position and snore; blood glucose sensors; apparatus for drawing or sampling blood for purposes of diabetes monitoring; blood glucose monitoring systems including blood glucose meters and test strips; oral cleaning apparatus; infrared radiation therapeutic apparatus; defibrillators
FILING BASIS Section 1(b)
FILING BASIS Section 44(d)
FILING BASIS Section 44(e)
GOODS AND/OR SERVICES SECTION (010)(proposed)
INTERNATIONAL CLASS 010
TRACKED TEXT DESCRIPTION
Analytical apparatus for medical purposes; arterial blood pressure measuring apparatus; cuffs for blood pressure monitors; blood testing apparatus; body fat analyzers and monitors; diagnostic apparatus for medical purposes; diagnostic apparatus for medical purposes, namely, X-ray diagnostic apparatus and ultrasonograph; electrocardiographs; electrodes for medical use; hearing aids for the deaf; inhalers; inhalers for medical use; nebulizers; nebulizers for respiration therapy; low frequency treatment apparatus; low frequency electronic treatment apparatus; electrotherapy devices for providing transcutaneous electrical nerve stimulation; massage apparatus and instruments; sprayers for medical purposes; thermoelectric therapeutic instruments, namely, thermotherapy apparatus for medical purposes; thermoelectric therapeutic instruments; thermometers for medical purposes; body-fat composition monitors; body composition monitors; fever thermometers; anesthesia monitoring apparatus; pulse wave monitors; patient medical monitors for critical care, namely, expired-gas monitors; expired-gas monitors; medical apparatus and instruments for monitoring respiratory events, namely, respirometers; respirometers; medical devices, namely, pulse oximeters; oximeters; vital signs monitors; medical devices for performing vascular testing; sensors for monitoring blood glucose level as part of blood glucose meters; heart rate monitors; pulse rate monitors; peak flow meters, namely, medical devices for measuring peak expiratory flow; peak flow meters; stethoscopes; oxygen inhalers for medical purposes sold empty; oxygen breathing apparatus; medical apparatus and instruments, namely, remote data collecting apparatus and instruments for use in sleeping disorder analysis; oxygen inhalers; medical apparatus and instruments for diabetes monitoring; blood glucose meters; lancing devices, namely, lancets for medical purposes; medical sleep analyzers, namely, a device for recording disturbances while asleep and analyzing one's sleep patterns, for monitoring sleep conditions, and/or for measuring sleeping time by measuring movement of one's chest, change of position and snore; lancet; blood glucose sensors; lancing devices; apparatus for drawing or sampling blood for purposes of diabetes monitoring; medical diagnostic test strips for blood analysis; blood glucose monitoring systems including blood glucose meters and test strips sold together as a unit; dental instruments, namely, oral cleaning apparatus, namely, oral irrigators; infrared radiation therapeutic apparatus; defibrillators; blood glucose monitoring systems including blood glucose meters and test strips; oral cleaning apparatus
FINAL DESCRIPTION
Analytical apparatus for medical purposes; arterial blood pressure measuring apparatus; cuffs for blood pressure monitors; blood testing apparatus; body fat analyzers and monitors; diagnostic apparatus for medical purposes, namely, X-ray diagnostic apparatus and ultrasonograph; electrocardiographs; electrodes for medical use; hearing aids for the deaf; inhalers for medical use; nebulizers for respiration therapy; low frequency electronic treatment apparatus; electrotherapy devices for providing transcutaneous electrical nerve stimulation; massage apparatus and instruments; thermoelectric therapeutic instruments, namely, thermotherapy apparatus for medical purposes; thermometers for medical purposes; body-fat composition monitors; fever thermometers; anesthesia monitoring apparatus; pulse wave monitors; patient medical monitors for critical care, namely, expired-gas monitors; medical apparatus and instruments for monitoring respiratory events, namely, respirometers; medical devices, namely, pulse oximeters; vital signs monitors; medical devices for performing vascular testing; sensors for monitoring blood glucose level as part of blood glucose meters; heart rate monitors; pulse rate monitors; peak flow meters, namely, medical devices for measuring peak expiratory flow; stethoscopes; oxygen inhalers for medical purposes sold empty; medical apparatus and instruments, namely, remote data collecting apparatus and instruments for use in sleeping disorder analysis; medical apparatus and instruments for diabetes monitoring; blood glucose meters; lancing devices, namely, lancets for medical purposes; medical sleep analyzers, namely, a device for recording disturbances while asleep and analyzing one's sleep patterns, for monitoring sleep conditions, and/or for measuring sleeping time by measuring movement of one's chest, change of position and snore; blood glucose sensors; apparatus for drawing or sampling blood for purposes of diabetes monitoring; blood glucose monitoring systems including blood glucose meters and test strips sold together as a unit; dental instruments, namely, oral cleaning apparatus, namely, oral irrigators; infrared radiation therapeutic apparatus; defibrillators
FILING BASIS Section 1(b)
FILING BASIS Section 44(d)
FILING BASIS Section 44(e)
GOODS AND/OR SERVICES SECTION (011)(current)
INTERNATIONAL CLASS 011
DESCRIPTION
Light-emitting diodes (LED) lighting apparatus; electric lamps and other lighting apparatus; steam boilers, other than parts of machines; boilers, other than parts of machines; air-conditioning apparatus; air purifying apparatus and machines; industrial air purifiers; industrial dust collectors for air cleaning; ionization apparatus for the treatment of air or water; fans, namely, parts of air-conditioning installations; air cleaning apparatus and machines; air cleaning filters, namely, parts of air cleaning machines or installations; air filtering apparatus and installations; air filters for use as dust extractors; apparatus for collecting dust from the air; installations for separating and removing dust; apparatus for extracting dust for ventilation; dust extraction installations for ventilation; dust removing installations for ventilation; flares
FILING BASIS Section 1(b)
FILING BASIS Section 44(d)
FILING BASIS Section 44(e)
GOODS AND/OR SERVICES SECTION (011)(proposed)
INTERNATIONAL CLASS 011
TRACKED TEXT DESCRIPTION
Light-emitting diodes (LED) lighting apparatus; Light-emitting diodes (LED) lighting apparatus, namely, light fixtures, and lighting installations; electric lamps and other lighting apparatus; electric lamps; steam boilers, other than parts of machines; boilers, other than parts of machines; electric boilers, other than parts of machines; air-conditioning apparatus; air purifying apparatus and machines; industrial air purifiers; industrial dust collectors for air cleaning; ionization apparatus for the treatment of air or water; fans, namely, parts of air-conditioning installations; air cleaning units; air cleaning apparatus and machines; air cleaning filters, namely, parts of air cleaning machines or installations for industrial installations; air cleaning filters, namely, parts of air cleaning machines or installations; air filtering installations; air filtering apparatus and installations; industrial air filter machines; air filters for use as dust extractors; apparatus for collecting dust from the air, namely, air filters for industrial installations, apparatus for extracting dust for ventilation, and ventilators for industrial use; apparatus for collecting dust from the air; flares; installations for separating and removing dust; apparatus for extracting dust for ventilation; dust extraction installations for ventilation; dust removing installations for ventilation
FINAL DESCRIPTION
Light-emitting diodes (LED) lighting apparatus, namely, light fixtures, and lighting installations; electric lamps; steam boilers, other than parts of machines; electric boilers, other than parts of machines; air-conditioning apparatus; air purifying apparatus and machines; industrial air purifiers; ionization apparatus for the treatment of air or water; fans, namely, parts of air-conditioning installations; air cleaning units; air cleaning filters, namely, parts of air cleaning machines or installations for industrial installations; air filtering installations; industrial air filter machines; apparatus for collecting dust from the air, namely, air filters for industrial installations, apparatus for extracting dust for ventilation, and ventilators for industrial use; flares
FILING BASIS Section 1(b)
FILING BASIS Section 44(d)
FILING BASIS Section 44(e)
GOODS AND/OR SERVICES SECTION (021)(no change)
ADDITIONAL STATEMENTS SECTION
ACTIVE PRIOR REGISTRATION(S) The applicant claims ownership of U.S. Registration Number(s) 1374625, 3204195, 3774983, and others.
SIGNIFICANCE OF MARK OMRON 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. The word(s) OMRON has no meaning in a foreign language.
MISCELLANEOUS STATEMENT In response to the Examiner's inquiries regarding the wording "OMRON," Applicant respectfully provides the following answers to the Examiner's questions: (1) Is "OMRON" a made-up or coined term? - YES (2) Does "OMRON" have a translation? - NO (3) Is "OMRON" the surname (last name) of anyone associated with the Applicant or these goods? - NO (4) Is "OMRON" a geographic place (e.g., a city, town or region?) - NO (5) Briefly explain how the mark was chosen. - "OMRON" is a coined term. It makes a passing reference to "Omuro," which is the district where the Founder of the company set up his first shop in Kyoto. However, as noted above, the term "OMRON" does not refer to any geographical place or personal name in Japan. The Examining Attorney also requires that Applicant clarify the filing basis of the application. Applicant submits that it does intend to rely on Section 44(e) of the Trademark Act, but that the corresponding foreign registration is not yet available. Therefore, Applicant respectfully requests that further prosecution of the application be suspended pending issuance of the corresponding foreign registration.
SIGNATURE SECTION
RESPONSE SIGNATURE /Jeffrey H. Handelsman/
SIGNATORY'S NAME Jeffrey H. Handelsman
SIGNATORY'S POSITION Attorney for Applicant, MD Bar (Ref.: T45056)
SIGNATORY'S PHONE NUMBER 703-716-1191
DATE SIGNED 08/26/2014
AUTHORIZED SIGNATORY YES
FILING INFORMATION SECTION
SUBMIT DATE Tue Aug 26 15:50:07 EDT 2014
TEAS STAMP USPTO/ROA-XX.XXX.XX.XXX-2
0140826155007654389-86144
840-500a8275a71146bf4b9e8
e367f05c66ed58a1a04e8034b
72cfa78fd395a8674837-N/A-
N/A-20140826150254516608



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. 86144840 OMRON (Stylized and/or with Design, see http://uspto.report/TM/86144840/mark.png) has been amended as follows:

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

-Applicant notes that the wording "speed measuring apparatus for photography" in International Class 9 was previously accepted by the USPTO in Registration No. 4004492.  Applicant respectfully requests that for the sake of consistency, this wording be allowed in the instant application.

-Applicant notes that the wording "analytical apparatus for medical purposes" in International Class 10 was previously accepted by the USPTO in Registration No. 3401980.  Applicant respectfully request that for the sake of consistency, this wording be allowed in the instant application.



EVIDENCE
Evidence in the nature of Arguments in support of Applicant's amended identification. has been attached.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 007 for Electric door openers and closers; self-regulating fuel pumps; power generators; emergency power generators; electrostatic eliminators; electrostatic eliminators by generating ion; cleaning apparatus for dust collection in buildings; apparatus for the removal of dust from buildings; dust removing installations for cleaning purposes; electric dust removing cleaning apparatus; compressors machines and their parts; pneumatic or hydraulic machines and instruments; blowing machines; centrifugal blower; rotary blowers; air suction machines; blowers for evacuating smoke fog; devices which automatically collect cigar ashes and cigarette butts and which are installed in game arcades including pachinko parlors; blowers for separating smoking area installed in game arcades including pachinko parlors; coin carrier devices for pachinko machines; paper money carrier devices for pachinko machines; printing or bookbinding machines and apparatus; starters for motors and engines; AC motors and DC motors not including those for land vehicles but including "parts" for any AC motors and DC motors; alternators; DC generators; machines and equipment for manufacturing printed circuit boards; machines and equipment for manufacturing and processing electronic printed circuit boards, namely, placing machines for mounting electrical components on printed circuit boards; machines and equipment which automatically mount semiconductors, diodes, condensers, resistors and other electronic parts on printed circuit boards; machines and equipment which automatically mount IC (integrated circuit) chips and other electronic parts on printed circuit boards; transmissions for machines
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 2013-087501 filed 11/08/2013]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Japan registration number 3162408 registered 06/28/1996 with a renewal date of __________ and an expiration date of 06/28/2016 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Electric door openers and closers; self-regulating fuel pumps; self-regulating fuel pumps for service stations; power generators; power generators, namely, electric power generators for indoor use, electric power generators for emergency use, and mobile electric power generators; emergency power generators; electrostatic eliminators; electrostatic eliminators by generating ion; cleaning apparatus for dust collection in buildings, namely, central vacuum cleaning installations, dust removing installations for cleaning purposes, and dust separators; cleaning apparatus for dust collection in buildings; compressors for machines and their parts; apparatus for the removal of dust from buildings; blowing machines, namely, power-operated blowers, centrifugal blowers for industrial purposes, rotary blowers for industrial purposes, air suction machines, and power-operated blowers for evacuating smoke fog; dust removing installations for cleaning purposes; automated machines for the disposal of cigar and cigarette ash and waste; electric dust removing cleaning apparatus; power-operated blowers for separating smoking areas installed in game arcades, including pachinko parlors; compressors machines and their parts; printing or bookbinding machines for industrial purposes; pneumatic or hydraulic machines and instruments; starters for motors and engines; blowing machines; AC motors and DC motors, and their parts, not including those for land vehicles; centrifugal blower; alternators; rotary blowers; DC generators; air suction machines; machines for manufacturing printed circuit boards; blowers for evacuating smoke fog; machines for manufacturing and processing electronic printed circuit boards, namely, placing machines for mounting electrical components on printed circuit boards; devices which automatically collect cigar ashes and cigarette butts and which are installed in game arcades including pachinko parlors; machines which automatically mount semiconductors, diodes, condensers, resistors and other electronic parts on printed circuit boards; blowers for separating smoking area installed in game arcades including pachinko parlors; machines which automatically mount IC (integrated circuit) chips and other electronic parts on printed circuit boards; coin carrier devices for pachinko machines; transmissions for machines; paper money carrier devices for pachinko machines; printing or bookbinding machines and apparatus; AC motors and DC motors not including those for land vehicles but including "parts" for any AC motors and DC motors; machines and equipment for manufacturing printed circuit boards; machines and equipment for manufacturing and processing electronic printed circuit boards, namely, placing machines for mounting electrical components on printed circuit boards; machines and equipment which automatically mount semiconductors, diodes, condensers, resistors and other electronic parts on printed circuit boards; machines and equipment which automatically mount IC (integrated circuit) chips and other electronic parts on printed circuit boardsClass 007 for Electric door openers and closers; self-regulating fuel pumps for service stations; power generators, namely, electric power generators for indoor use, electric power generators for emergency use, and mobile electric power generators; electrostatic eliminators; electrostatic eliminators by generating ion; cleaning apparatus for dust collection in buildings, namely, central vacuum cleaning installations, dust removing installations for cleaning purposes, and dust separators; compressors for machines and their parts; blowing machines, namely, power-operated blowers, centrifugal blowers for industrial purposes, rotary blowers for industrial purposes, air suction machines, and power-operated blowers for evacuating smoke fog; automated machines for the disposal of cigar and cigarette ash and waste; power-operated blowers for separating smoking areas installed in game arcades, including pachinko parlors; printing or bookbinding machines for industrial purposes; starters for motors and engines; AC motors and DC motors, and their parts, not including those for land vehicles; alternators; DC generators; machines for manufacturing printed circuit boards; machines for manufacturing and processing electronic printed circuit boards, namely, placing machines for mounting electrical components on printed circuit boards; machines which automatically mount semiconductors, diodes, condensers, resistors and other electronic parts on printed circuit boards; machines which automatically mount IC (integrated circuit) chips and other electronic parts on printed circuit boards; transmissions for machines
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 2013-087501 filed 11/08/2013]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Japan registration number 3162408 registered 06/28/1996 with a renewal date of __________ and an expiration date of 06/28/2016 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Encoders; power controllers; regulating apparatus, electric; remote control apparatus; electrical control panels; light regulators; measuring devices; tachometers; accumulators for hours; measuring apparatus of calories; data loggers; switches, electric; photo electric switches; basic switches; detection switches; door switches; power switches; limit switches; safety switches; tactile switches; rocker switches; pushbutton switches; toggle switches; slide switches; DIP switches; thumbwheel switches; light switches; sound wave switches; micro switches; RF switches; intercommunication apparatus; thermometers not for medical purposes; electric apparatus for communication; relays, electric; diagnostic apparatus, not for medical purposes; detectors; detectors for electrical power outage; detectors for electric current; human detectors; water leak detectors; sensing apparatus; photomicrosensors; MEMS mechanical sensors; flow sensors; pressure sensors; thermal sensors; photovoltaic sensors; visual sensors; proximity sensors; vibrational sensors; inclination sensors; liquid leakage sensors; displacement sensors; length measuring sensors; ultrasonic wave sensors; sensors for measuring incidence of light from outside of car; image sensors; fiber sensors; temperature sensors; optical fibers; parking meters; testing apparatus not for medical use; testing apparatus for PCB and sheet; testing apparatus using x-ray CT; television apparatus; point of sales terminal and peripheral equipments; electrical terminals; computer terminals and link terminals; programmable terminals; safety I/O terminals; power supplies; optical communication devices; optical transceivers; optical transponders; optical sensing devices; transmitters of electronic signals; telegraph apparatus; high frequency apparatus; high frequency signal transmission cables; high frequency signal generators; electrical transformers; high-frequency relays; frequency meters; amplifiers; time recording apparatus; transmitting sets for telecommunication; capacitors; resistances, electric; electrical indicators; radiotelegraphy sets; radiotelephony sets; blinkers, namely, signalling lights; electrical inverters; reader writer; rotary converters; chargers for batteries; electric transformers; semiconductors; IC chips; optical discs; thermostats; abacuses; meters; digital panel meters; sound locating apparatus; sound wave sensors; sound and vibration diagnosis computer software; sound reproduction apparatus; sound transmitting apparatus; microphones; connectors, electric; lasers, not for medical purposes; radar apparatus; fiber optic cables; conductors, electric; photography enlarging apparatus; sockets, plugs and other contacts, namely, electric connections; sonars; counters; optical flex circuits; electric locks; electronic locks; electromagnetic solenoids in the nature of valves; apparatus for processing of images; light guide plates; tags for Radio Frequency Identification; light emitting diodes; antennas; CCD (charge-coupled device) cameras; computer for traffic information processing; distance recording apparatus; distance measuring apparatus; automatic indicators of low pressure in vehicles tires; speed checking apparatus for vehicles; mileage recorders; electronic keys for vehicles; smart cards; integrated circuit cards; sirens; electric buzzers; alarms; theft prevention installations, electric; bells, namely, warning devices; monitoring apparatus, electric; tire pressure monitoring systems composed of tire pressure gauges and measurers for automobiles; standstill monitoring units; speed monitoring units; temperature monitoring units; speed measuring apparatus for photography; phototelegraphy apparatus; ticket dispensers; electronic publications; telephone receivers; telephone apparatus; signs, luminous; radios; punch card machines for offices; sound recording apparatus; ticket gates; electronic face authentication apparatus; ultrasonic vehicle detectors; weighing machines; pedometers; measuring apparatus for the amount of calorie consumption; physical activity measuring apparatus; activity monitors; exercise intensity measuring apparatus; sleep analyzers; computer software; PLC programming software; health management software; computer software for use in industrial automation; downloadable computer software for saving and management of data; downloadable computer software for capturing, organizing, searching, storing, synchronizing, recognizing, sharing and transmitting any number of typed, handwritten, or imaged notes or clippings on multiple computer and network platforms; downloadable computer software for optical character reading; computer software for language translation; computer software for measuring, monitoring and analyzing energy expenditure; computers; computer hardware; computer programs; computer operating program; computer programs for digital image processing; central processing units; computer peripheral devices; data processing apparatus; compact discs; encoded magnetic cards; data media; uninterruptible power supply; alternating-current power supply; stabilized power supply; energy expenditure measuring, monitoring and analyzing apparatus; power consumption measuring, monitoring and analyzing apparatus; remote monitoring and maintenance apparatus for solar power generating apparatus; power conditioners; solar batteries; solar power generating devices, namely, solar cells, photovoltaic solar modules for production of electricity, solar batteries, solar panels for production of electricity, wattmeters, electricity distribution boards, power conditioners and electricity junction boxes; ionization apparatus not for the treatment of air or water; ionization apparatus with electrostatic elimination function; air particle sensors; electrostatic sensors; programmable controllers
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.

Based on Foreign Application: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and will submit a copy of a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [__________ registration number __________ registered __________ with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Encoders; power controllers; regulating apparatus, electric; regulating apparatus for electric current; remote control apparatus; remote control apparatus, namely, remote keyless entry fobs and sensors, and audio-visual component hand-held remote controls; electrical control panels; light regulators; measuring devices; measuring devices, namely, tachometers, accumulators for hours, and calorimeters; tachometers; electronic data loggers; accumulators for hours; electric switches; measuring apparatus of calories; switches for industrial purposes, namely, photo electric switches, basic switches, detection switches, door switches, power switches, limit switches, safety switches, tactile switches, rocker switches, pushbutton switches, toggle switches, slide switches, DIP (dual in-line package) electric switches, thumbwheel switches, light switches, ultra switches, micro switches, and RF (radio frequency) microwave switches; data loggers; intercommunication apparatus, namely, wireless intercoms, cell phones, headsets and microphones; switches, electric; thermometers not for medical purposes; photo electric switches; electric apparatus for communication, namely, signal transmitters, signal receivers, signal encoders and signal decoders; basic switches; electric relays; detection switches; diagnostic apparatus not for medical purposes, namely, in-line connectors, diagnostic sub-D connectors, and diagnostic meters for identifying network power, data errors, excessive bandwidth consumption and circuit problems; door switches; detectors, namely, detectors for electrical power outage, detectors for electric current, human detectors and water leak detectors; power switches; sensing apparatus, namely, photomicrosensors, MEMS (Microelectromechanical systems) mechanical sensors, flow sensors, pressure sensors, thermal sensors, photovoltaic sensors, visual sensors, proximity sensors, vibrational sensors, inclination sensors, liquid leakage sensors, displacement sensors, length measuring sensors, ultrasonic wave sensors, sensors for measuring incidence of light from outside of car, image sensors, fiber sensors, and temperature sensors; limit switches; optical fibers; safety switches; parking meters; tactile switches; testing apparatus not for medical use, namely, testing apparatus for PCB (printed circuit boards) and sheet, and testing apparatus using x-ray CT (computed tomography); rocker switches; television apparatus, namely, television sets; pushbutton switches; point of sales terminal and peripheral equipments, namely, cash drawers, column receipt printers, barcode scanners, printer cables, and printer ribbons; toggle switches; electrical terminals, namely, computer terminals, link terminals, programmable terminals, and safety I/O (input output) terminals; slide switches; power supplies; DIP switches; optical communication devices, namely, optical transceivers, and optical transponders; thumbwheel switches; optical sensors; light switches; transmitters of electronic signals; sound wave switches; automatic telegraph apparatus; micro switches; high frequency apparatus, namely, high frequency signal transmission cables, high frequency signal generators, electrical transformers, high frequency signal connectors, and high-frequency electric relays; RF switches; frequency meters; intercommunication apparatus; amplifiers; time recording apparatus; electric apparatus for communication; transmitting sets for telecommunication, namely, telecommunication transmitters; relays, electric; capacitors; diagnostic apparatus, not for medical purposes; electric resistances; detectors; electronic indicators, namely, digital displays and panel meters; detectors for electrical power outage; radiotelegraphy sets; detectors for electric current; radiotelephony sets; human detectors; blinkers, namely, automobile indicator lights; water leak detectors; electrical inverters; sensing apparatus; reader writer, namely, apparatus for reading and writing data used in radio frequency identification (RFID) repeating exchange machines; photomicrosensors; rotary converters; MEMS mechanical sensors; chargers for batteries; flow sensors; electric transformers; pressure sensors; semiconductors; thermal sensors; IC (integrated circuit) chips, namely, tags for Radio Frequency Identification (RFID); photovoltaic sensors; thermostats; visual sensors; abacuses; proximity sensors; meters, namely, digital panel meters, namely, an electronic instrument that displays an input signal in either a digital or analog form; vibrational sensors; sound locating apparatus, namely, sound wave sensors, and sound and vibration diagnosis computer software; inclination sensors; sound wave sensors; liquid leakage sensors; sound and vibration diagnosis computer software; displacement sensors; sound reproduction apparatus; length measuring sensors; sound transmitting apparatus; ultrasonic wave sensors; microphones; sensors for measuring incidence of light from outside of car; electric connectors; image sensors; lasers, not for medical purposes; fiber sensors; radar apparatus; temperature sensors; fiber optic cables; electric conductors; photography enlarging apparatus, namely, photograph processing enlargers; testing apparatus not for medical use; sockets, plugs and other contacts, namely, electric connections; testing apparatus for PCB and sheet; sonars; testing apparatus using x-ray CT; counters, namely, industrial automation controls; television apparatus; electronic components in the nature of control components, namely, counters, preset counters, totalizing counters, time counters, and electromagnetic counters; point of sales terminal and peripheral equipments; optical flex circuits, namely, fiber optic circuitry; electrical terminals; electric locks; computer terminals and link terminals; electronic locks; programmable terminals; electromagnetic solenoids in the nature of valves; safety I/O terminals; apparatus for processing of images; light guide plates, namely, backlight unit (BLU) for use with televisions, personal computers, tablets, mobile phones, and digital cameras; optical communication devices; light emitting diodes (LEDs); optical transceivers; antennas; optical transponders; CCD (charge-coupled device) cameras; optical sensing devices; computer for traffic information processing; distance recording apparatus; telegraph apparatus; distance measuring apparatus; high frequency apparatus; automatic indicators of low pressure in vehicles tires; high frequency signal transmission cables; speed checking apparatus for vehicles; high frequency signal generators; mileage recorders; electrical transformers; electronic keys for vehicles; high-frequency relays; blank smart cards; blank integrated circuit cards; sirens; electric buzzers; transmitting sets for telecommunication; alarms, namely, fire alarms and gas alarms; electric theft prevention installations; resistances, electric; bells, namely, warning devices; electrical indicators; electric monitoring apparatus, namely, tire pressure monitoring systems composed of tire pressure gauges and measurers for automobiles, standstill monitoring units, speed monitoring units, and temperature monitoring units; speed measuring apparatus for photography; phototelegraphy apparatus; blinkers, namely, signalling lights; electronic apparatus, namely, train ticket dispensers; downloadable electronic publications, namely, magazines, articles, newsletters, brochures, leaflets, pamphlets, handbooks, booklets, instruction manuals, reports and pictures in the fields of industrial automation, health care, electronic components, automotive electronics, and social systems recorded on computer media; reader writer; telephone receivers; telephone apparatus; luminous signs; radios; punch card machines for offices in the nature of punch clocks; IC chips; sound recording apparatus; optical discs; automated railway ticket gates; electronic face authentication apparatus; ultrasonic object detectors for use on vehicles; meters; weighing machines; digital panel meters; measuring apparatus for the amount of calorie consumption; sound locating apparatus; physical activity measuring apparatus, namely, pedometers; electronic apparatus, namely, devices for recording and analyzing sleep patterns, not for medical purposes; computer software, namely, programmable logic controller (PLC) programming software, health management software, computer software for use in industrial automation, downloadable computer software for saving and management of data, downloadable computer software for capturing, organizing, searching, storing, synchronizing, recognizing, sharing and transmitting any number of typed, handwritten, or imaged notes or clippings on multiple computer and network platforms, downloadable computer software for optical character reading, computer software for language translation, and computer software for measuring, monitoring and analyzing energy expenditure; computers; computer hardware; computer programs, namely, computer operating programs, and computer programs for digital image processing; connectors, electric; central processing units (CPU); computer peripheral devices; data processing apparatus; magnetic encoded cards, namely, credit cards; conductors, electric; data medias, namely, blank optical discs, blank memory cards, blank magnetic tapes, blank magnetic discs, and blank compact discs; photography enlarging apparatus; uninterruptible electrical power supply; alternating-current power supply; voltage stabilized power supply; counters; energy expenditure measuring, monitoring and analyzing apparatus, namely, electric control devices for energy management; optical flex circuits; electric power consumption measuring, monitoring and analyzing apparatus; remote monitoring and maintenance apparatus for solar power generating apparatus in the nature of computer hardware, solar power monitoring software, data processing apparatus, and warning devices; power line conditioners; solar batteries; solar power generating devices, namely, solar cells, photovoltaic solar modules for production of electricity, solar batteries, solar panels for production of electricity, wattmeters, electricity distribution boards, power conditioners and electricity junction boxes; light guide plates; coin counting or sorting machines, namely, coin carrier devices for pachinko machines; tags for Radio Frequency Identification; money counting and sorting machines, namely, paper money carrier devices for pachinko machines; light emitting diodes; ionization apparatus not for the treatment of air or water; ionization apparatus with electrostatic elimination function not for the treatment of air or water; air particle sensors; electrostatic sensors; programmable logic controller (PLC); smart cards; integrated circuit cards; alarms; theft prevention installations, electric; monitoring apparatus, electric; tire pressure monitoring systems composed of tire pressure gauges and measurers for automobiles; standstill monitoring units; speed monitoring units; temperature monitoring units; ticket dispensers; electronic publications; signs, luminous; punch card machines for offices; ticket gates; ultrasonic vehicle detectors; pedometers; physical activity measuring apparatus; activity monitors; exercise intensity measuring apparatus; sleep analyzers; computer software; PLC programming software; health management software; computer software for use in industrial automation; downloadable computer software for saving and management of data; downloadable computer software for capturing, organizing, searching, storing, synchronizing, recognizing, sharing and transmitting any number of typed, handwritten, or imaged notes or clippings on multiple computer and network platforms; downloadable computer software for optical character reading; computer software for language translation; computer software for measuring, monitoring and analyzing energy expenditure; computer programs; computer operating program; computer programs for digital image processing; central processing units; compact discs; encoded magnetic cards; data media; uninterruptible power supply; stabilized power supply; energy expenditure measuring, monitoring and analyzing apparatus; power consumption measuring, monitoring and analyzing apparatus; remote monitoring and maintenance apparatus for solar power generating apparatus; power conditioners; ionization apparatus with electrostatic elimination function; programmable controllersClass 009 for Encoders; power controllers; regulating apparatus for electric current; remote control apparatus, namely, remote keyless entry fobs and sensors, and audio-visual component hand-held remote controls; electrical control panels; light regulators; measuring devices, namely, tachometers, accumulators for hours, and calorimeters; electronic data loggers; electric switches; switches for industrial purposes, namely, photo electric switches, basic switches, detection switches, door switches, power switches, limit switches, safety switches, tactile switches, rocker switches, pushbutton switches, toggle switches, slide switches, DIP (dual in-line package) electric switches, thumbwheel switches, light switches, ultra switches, micro switches, and RF (radio frequency) microwave switches; intercommunication apparatus, namely, wireless intercoms, cell phones, headsets and microphones; thermometers not for medical purposes; electric apparatus for communication, namely, signal transmitters, signal receivers, signal encoders and signal decoders; electric relays; diagnostic apparatus not for medical purposes, namely, in-line connectors, diagnostic sub-D connectors, and diagnostic meters for identifying network power, data errors, excessive bandwidth consumption and circuit problems; detectors, namely, detectors for electrical power outage, detectors for electric current, human detectors and water leak detectors; sensing apparatus, namely, photomicrosensors, MEMS (Microelectromechanical systems) mechanical sensors, flow sensors, pressure sensors, thermal sensors, photovoltaic sensors, visual sensors, proximity sensors, vibrational sensors, inclination sensors, liquid leakage sensors, displacement sensors, length measuring sensors, ultrasonic wave sensors, sensors for measuring incidence of light from outside of car, image sensors, fiber sensors, and temperature sensors; optical fibers; parking meters; testing apparatus not for medical use, namely, testing apparatus for PCB (printed circuit boards) and sheet, and testing apparatus using x-ray CT (computed tomography); television apparatus, namely, television sets; point of sales terminal and peripheral equipments, namely, cash drawers, column receipt printers, barcode scanners, printer cables, and printer ribbons; electrical terminals, namely, computer terminals, link terminals, programmable terminals, and safety I/O (input output) terminals; power supplies; optical communication devices, namely, optical transceivers, and optical transponders; optical sensors; transmitters of electronic signals; automatic telegraph apparatus; high frequency apparatus, namely, high frequency signal transmission cables, high frequency signal generators, electrical transformers, high frequency signal connectors, and high-frequency electric relays; frequency meters; amplifiers; time recording apparatus; transmitting sets for telecommunication, namely, telecommunication transmitters; capacitors; electric resistances; electronic indicators, namely, digital displays and panel meters; radiotelegraphy sets; radiotelephony sets; blinkers, namely, automobile indicator lights; electrical inverters; reader writer, namely, apparatus for reading and writing data used in radio frequency identification (RFID) repeating exchange machines; rotary converters; chargers for batteries; electric transformers; semiconductors; IC (integrated circuit) chips, namely, tags for Radio Frequency Identification (RFID); thermostats; abacuses; meters, namely, digital panel meters, namely, an electronic instrument that displays an input signal in either a digital or analog form; sound locating apparatus, namely, sound wave sensors, and sound and vibration diagnosis computer software; sound wave sensors; sound and vibration diagnosis computer software; sound reproduction apparatus; sound transmitting apparatus; microphones; electric connectors; lasers, not for medical purposes; radar apparatus; fiber optic cables; electric conductors; photography enlarging apparatus, namely, photograph processing enlargers; sockets, plugs and other contacts, namely, electric connections; sonars; counters, namely, industrial automation controls; electronic components in the nature of control components, namely, counters, preset counters, totalizing counters, time counters, and electromagnetic counters; optical flex circuits, namely, fiber optic circuitry; electric locks; electronic locks; electromagnetic solenoids in the nature of valves; apparatus for processing of images; light guide plates, namely, backlight unit (BLU) for use with televisions, personal computers, tablets, mobile phones, and digital cameras; light emitting diodes (LEDs); antennas; CCD (charge-coupled device) cameras; computer for traffic information processing; distance recording apparatus; distance measuring apparatus; automatic indicators of low pressure in vehicles tires; speed checking apparatus for vehicles; mileage recorders; electronic keys for vehicles; blank smart cards; blank integrated circuit cards; sirens; electric buzzers; alarms, namely, fire alarms and gas alarms; electric theft prevention installations; bells, namely, warning devices; electric monitoring apparatus, namely, tire pressure monitoring systems composed of tire pressure gauges and measurers for automobiles, standstill monitoring units, speed monitoring units, and temperature monitoring units; speed measuring apparatus for photography; phototelegraphy apparatus; electronic apparatus, namely, train ticket dispensers; downloadable electronic publications, namely, magazines, articles, newsletters, brochures, leaflets, pamphlets, handbooks, booklets, instruction manuals, reports and pictures in the fields of industrial automation, health care, electronic components, automotive electronics, and social systems recorded on computer media; telephone receivers; telephone apparatus; luminous signs; radios; punch card machines for offices in the nature of punch clocks; sound recording apparatus; automated railway ticket gates; electronic face authentication apparatus; ultrasonic object detectors for use on vehicles; weighing machines; measuring apparatus for the amount of calorie consumption; physical activity measuring apparatus, namely, pedometers; electronic apparatus, namely, devices for recording and analyzing sleep patterns, not for medical purposes; computer software, namely, programmable logic controller (PLC) programming software, health management software, computer software for use in industrial automation, downloadable computer software for saving and management of data, downloadable computer software for capturing, organizing, searching, storing, synchronizing, recognizing, sharing and transmitting any number of typed, handwritten, or imaged notes or clippings on multiple computer and network platforms, downloadable computer software for optical character reading, computer software for language translation, and computer software for measuring, monitoring and analyzing energy expenditure; computers; computer hardware; computer programs, namely, computer operating programs, and computer programs for digital image processing; central processing units (CPU); computer peripheral devices; data processing apparatus; magnetic encoded cards, namely, credit cards; data medias, namely, blank optical discs, blank memory cards, blank magnetic tapes, blank magnetic discs, and blank compact discs; uninterruptible electrical power supply; alternating-current power supply; voltage stabilized power supply; energy expenditure measuring, monitoring and analyzing apparatus, namely, electric control devices for energy management; electric power consumption measuring, monitoring and analyzing apparatus; remote monitoring and maintenance apparatus for solar power generating apparatus in the nature of computer hardware, solar power monitoring software, data processing apparatus, and warning devices; power line conditioners; solar batteries; solar power generating devices, namely, solar cells, photovoltaic solar modules for production of electricity, solar batteries, solar panels for production of electricity, wattmeters, electricity distribution boards, power conditioners and electricity junction boxes; coin counting or sorting machines, namely, coin carrier devices for pachinko machines; money counting and sorting machines, namely, paper money carrier devices for pachinko machines; ionization apparatus not for the treatment of air or water; ionization apparatus with electrostatic elimination function not for the treatment of air or water; air particle sensors; electrostatic sensors; programmable logic controller (PLC)
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.

Based on Foreign Application: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and will submit a copy of a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [__________ registration number __________ registered __________ with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 010 for Analytical apparatus for medical purposes; arterial blood pressure measuring apparatus; cuffs for blood pressure monitors; blood testing apparatus; body fat analyzers and monitors; diagnostic apparatus for medical purposes; electrocardiographs; electrodes for medical use; hearing aids for the deaf; inhalers; nebulizers; low frequency treatment apparatus; electrotherapy devices for providing transcutaneous electrical nerve stimulation; massage apparatus and instruments; sprayers for medical purposes; thermoelectric therapeutic instruments; thermometers for medical purposes; body composition monitors; fever thermometers; anesthesia monitoring apparatus; pulse wave monitors; expired-gas monitors; respirometers; oximeters; vital signs monitors; medical devices for performing vascular testing; sensors for monitoring blood glucose level as part of blood glucose meters; heart rate monitors; pulse rate monitors; peak flow meters; stethoscopes; oxygen breathing apparatus; oxygen inhalers; medical apparatus and instruments, namely, remote data collecting apparatus and instruments for use in sleeping disorder analysis; medical apparatus and instruments for diabetes monitoring; blood glucose meters; lancet; lancing devices; medical diagnostic test strips for blood analysis; medical sleep analyzers, namely, a device for recording disturbances while asleep and analyzing one's sleep patterns, for monitoring sleep conditions, and/or for measuring sleeping time by measuring movement of one's chest, change of position and snore; blood glucose sensors; apparatus for drawing or sampling blood for purposes of diabetes monitoring; blood glucose monitoring systems including blood glucose meters and test strips; oral cleaning apparatus; infrared radiation therapeutic apparatus; defibrillators
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.

Based on Foreign Application: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and will submit a copy of a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [__________ registration number __________ registered __________ with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Analytical apparatus for medical purposes; arterial blood pressure measuring apparatus; cuffs for blood pressure monitors; blood testing apparatus; body fat analyzers and monitors; diagnostic apparatus for medical purposes; diagnostic apparatus for medical purposes, namely, X-ray diagnostic apparatus and ultrasonograph; electrocardiographs; electrodes for medical use; hearing aids for the deaf; inhalers; inhalers for medical use; nebulizers; nebulizers for respiration therapy; low frequency treatment apparatus; low frequency electronic treatment apparatus; electrotherapy devices for providing transcutaneous electrical nerve stimulation; massage apparatus and instruments; sprayers for medical purposes; thermoelectric therapeutic instruments, namely, thermotherapy apparatus for medical purposes; thermoelectric therapeutic instruments; thermometers for medical purposes; body-fat composition monitors; body composition monitors; fever thermometers; anesthesia monitoring apparatus; pulse wave monitors; patient medical monitors for critical care, namely, expired-gas monitors; expired-gas monitors; medical apparatus and instruments for monitoring respiratory events, namely, respirometers; respirometers; medical devices, namely, pulse oximeters; oximeters; vital signs monitors; medical devices for performing vascular testing; sensors for monitoring blood glucose level as part of blood glucose meters; heart rate monitors; pulse rate monitors; peak flow meters, namely, medical devices for measuring peak expiratory flow; peak flow meters; stethoscopes; oxygen inhalers for medical purposes sold empty; oxygen breathing apparatus; medical apparatus and instruments, namely, remote data collecting apparatus and instruments for use in sleeping disorder analysis; oxygen inhalers; medical apparatus and instruments for diabetes monitoring; blood glucose meters; lancing devices, namely, lancets for medical purposes; medical sleep analyzers, namely, a device for recording disturbances while asleep and analyzing one's sleep patterns, for monitoring sleep conditions, and/or for measuring sleeping time by measuring movement of one's chest, change of position and snore; lancet; blood glucose sensors; lancing devices; apparatus for drawing or sampling blood for purposes of diabetes monitoring; medical diagnostic test strips for blood analysis; blood glucose monitoring systems including blood glucose meters and test strips sold together as a unit; dental instruments, namely, oral cleaning apparatus, namely, oral irrigators; infrared radiation therapeutic apparatus; defibrillators; blood glucose monitoring systems including blood glucose meters and test strips; oral cleaning apparatusClass 010 for Analytical apparatus for medical purposes; arterial blood pressure measuring apparatus; cuffs for blood pressure monitors; blood testing apparatus; body fat analyzers and monitors; diagnostic apparatus for medical purposes, namely, X-ray diagnostic apparatus and ultrasonograph; electrocardiographs; electrodes for medical use; hearing aids for the deaf; inhalers for medical use; nebulizers for respiration therapy; low frequency electronic treatment apparatus; electrotherapy devices for providing transcutaneous electrical nerve stimulation; massage apparatus and instruments; thermoelectric therapeutic instruments, namely, thermotherapy apparatus for medical purposes; thermometers for medical purposes; body-fat composition monitors; fever thermometers; anesthesia monitoring apparatus; pulse wave monitors; patient medical monitors for critical care, namely, expired-gas monitors; medical apparatus and instruments for monitoring respiratory events, namely, respirometers; medical devices, namely, pulse oximeters; vital signs monitors; medical devices for performing vascular testing; sensors for monitoring blood glucose level as part of blood glucose meters; heart rate monitors; pulse rate monitors; peak flow meters, namely, medical devices for measuring peak expiratory flow; stethoscopes; oxygen inhalers for medical purposes sold empty; medical apparatus and instruments, namely, remote data collecting apparatus and instruments for use in sleeping disorder analysis; medical apparatus and instruments for diabetes monitoring; blood glucose meters; lancing devices, namely, lancets for medical purposes; medical sleep analyzers, namely, a device for recording disturbances while asleep and analyzing one's sleep patterns, for monitoring sleep conditions, and/or for measuring sleeping time by measuring movement of one's chest, change of position and snore; blood glucose sensors; apparatus for drawing or sampling blood for purposes of diabetes monitoring; blood glucose monitoring systems including blood glucose meters and test strips sold together as a unit; dental instruments, namely, oral cleaning apparatus, namely, oral irrigators; infrared radiation therapeutic apparatus; defibrillators
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.

Based on Foreign Application: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and will submit a copy of a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [__________ registration number __________ registered __________ with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 011 for Light-emitting diodes (LED) lighting apparatus; electric lamps and other lighting apparatus; steam boilers, other than parts of machines; boilers, other than parts of machines; air-conditioning apparatus; air purifying apparatus and machines; industrial air purifiers; industrial dust collectors for air cleaning; ionization apparatus for the treatment of air or water; fans, namely, parts of air-conditioning installations; air cleaning apparatus and machines; air cleaning filters, namely, parts of air cleaning machines or installations; air filtering apparatus and installations; air filters for use as dust extractors; apparatus for collecting dust from the air; installations for separating and removing dust; apparatus for extracting dust for ventilation; dust extraction installations for ventilation; dust removing installations for ventilation; flares
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.

Based on Foreign Application: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and will submit a copy of a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [__________ registration number __________ registered __________ with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Light-emitting diodes (LED) lighting apparatus; Light-emitting diodes (LED) lighting apparatus, namely, light fixtures, and lighting installations; electric lamps and other lighting apparatus; electric lamps; steam boilers, other than parts of machines; boilers, other than parts of machines; electric boilers, other than parts of machines; air-conditioning apparatus; air purifying apparatus and machines; industrial air purifiers; industrial dust collectors for air cleaning; ionization apparatus for the treatment of air or water; fans, namely, parts of air-conditioning installations; air cleaning units; air cleaning apparatus and machines; air cleaning filters, namely, parts of air cleaning machines or installations for industrial installations; air cleaning filters, namely, parts of air cleaning machines or installations; air filtering installations; air filtering apparatus and installations; industrial air filter machines; air filters for use as dust extractors; apparatus for collecting dust from the air, namely, air filters for industrial installations, apparatus for extracting dust for ventilation, and ventilators for industrial use; apparatus for collecting dust from the air; flares; installations for separating and removing dust; apparatus for extracting dust for ventilation; dust extraction installations for ventilation; dust removing installations for ventilationClass 011 for Light-emitting diodes (LED) lighting apparatus, namely, light fixtures, and lighting installations; electric lamps; steam boilers, other than parts of machines; electric boilers, other than parts of machines; air-conditioning apparatus; air purifying apparatus and machines; industrial air purifiers; ionization apparatus for the treatment of air or water; fans, namely, parts of air-conditioning installations; air cleaning units; air cleaning filters, namely, parts of air cleaning machines or installations for industrial installations; air filtering installations; industrial air filter machines; apparatus for collecting dust from the air, namely, air filters for industrial installations, apparatus for extracting dust for ventilation, and ventilators for industrial use; flares
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.

Based on Foreign Application: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and will submit a copy of a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [__________ registration number __________ registered __________ with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

ADDITIONAL STATEMENTS
Claim of Active Prior Registration(s)
The applicant claims ownership of U.S. Registration Number(s) 1374625, 3204195, 3774983, and others.


Significance of wording, letter(s), or numeral(s)
OMRON 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. The word(s) OMRON has no meaning in a foreign language.


Miscellaneous Statement
In response to the Examiner's inquiries regarding the wording "OMRON," Applicant respectfully provides the following answers to the Examiner's questions: (1) Is "OMRON" a made-up or coined term? - YES (2) Does "OMRON" have a translation? - NO (3) Is "OMRON" the surname (last name) of anyone associated with the Applicant or these goods? - NO (4) Is "OMRON" a geographic place (e.g., a city, town or region?) - NO (5) Briefly explain how the mark was chosen. - "OMRON" is a coined term. It makes a passing reference to "Omuro," which is the district where the Founder of the company set up his first shop in Kyoto. However, as noted above, the term "OMRON" does not refer to any geographical place or personal name in Japan. The Examining Attorney also requires that Applicant clarify the filing basis of the application. Applicant submits that it does intend to rely on Section 44(e) of the Trademark Act, but that the corresponding foreign registration is not yet available. Therefore, Applicant respectfully requests that further prosecution of the application be suspended pending issuance of the corresponding foreign registration.


SIGNATURE(S)
Response Signature
Signature: /Jeffrey H. Handelsman/     Date: 08/26/2014
Signatory's Name: Jeffrey H. Handelsman
Signatory's Position: Attorney for Applicant, MD Bar (Ref.: T45056)

Signatory's Phone Number: 703-716-1191

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: 86144840
Internet Transmission Date: Tue Aug 26 15:50:07 EDT 2014
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2014082615500765
4389-86144840-500a8275a71146bf4b9e8e367f
05c66ed58a1a04e8034b72cfa78fd395a8674837
-N/A-N/A-20140826150254516608



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