Response to Office Action

PTO Form 1957 (Rev 9/2005)

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

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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. 86193706 VOITH(Standard Characters, see http://uspto.report/TM/86193706/mark.png) has been amended as follows:

EVIDENCE
Evidence in the nature of Argument for surname refusal; LexisNexis article has been attached.
Original PDF file:
evi_213166504-20141121105636965500_._IN_THE_UNITED_STATES_PATENT_AND_TRADEMARK_OFFICE.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_213166504-20141121105636965500_._www6.lexisnexis.com-publisher-EndUser-Action-UserDisplay.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 035 for business management, office functions, temporary employment

Applicant hereby deletes the following class of goods/services from the application.
Class 036 for insurance, real estate management

Applicant hereby deletes the following class of goods/services from the application.
Class 038 for telecommunication services

Applicant hereby deletes the following class of goods/services from the application.
Class 040 for treatment of materials

Applicant hereby deletes the following class of goods/services from the application.
Class 042 for scientific and technological services and research and design relating thereto, industrial analysis and research services, design and development of computer hardware and software

Applicant hereby deletes the following class of goods/services from the application.
Class 043 for services providing food and drink

Applicant hereby deletes the following class of goods/services from the application.
Class 045 for security services for the protection of property and individuals

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for measuring, regulating and control systems; electronic control units; process control systems, namely electronic and electrical facilities for conducting of procedures or signals; measuring instruments; controllers; control apparatus; traction converters
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: measuring, regulating and control systems; apparatus and computer programs that measure, regulate and control fiber, tape, fabric and paper producing machines and machine tools; electronic control units; electronic control units for fiber manufacturing machines, for paper machines, for tape and fabric producing machines, for hydropower plants, for powertrains and hydraulic aggregates; process control systems, namely electronic and electrical facilities for conducting of procedures or signals; electronic and electrical process controls used in fiber manufacturing machines, paper machines, tape and fabric producing machines, hydropower plants, powertrains and hydraulic aggregates; measuring instruments; traction converters; controllers; control apparatusClass 009 for apparatus and computer programs that measure, regulate and control fiber, tape, fabric and paper producing machines and machine tools; electronic control units for fiber manufacturing machines, for paper machines, for tape and fabric producing machines, for hydropower plants, for powertrains and hydraulic aggregates; electronic and electrical process controls used in fiber manufacturing machines, paper machines, tape and fabric producing machines, hydropower plants, powertrains and hydraulic aggregates; traction converters
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 024 for forming fabrics; form felts; press fabrics; press felts; dryer felts and dryer fabrics; wet felts
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: forming fabrics; forming fabrics, namely fabrics made from polymeric yarns or polymeric films or printed fabrics for use in a forming section of a fibrous web-forming machine; form felts; press fabrics; press fabrics, namely fabrics made from polymeric yarns or polymeric films or printed fabrics for use in a press section of a fibrous web-forming machine; press felts; dryer felts and dryer fabrics; dryer felts and dryer fabrics, namely fabrics made from polymeric yarns or polymeric films or printed fabrics for use in a dryer section of a fibrous web-forming machine; wet feltsClass 024 for forming fabrics, namely fabrics made from polymeric yarns or polymeric films or printed fabrics for use in a forming section of a fibrous web-forming machine; form felts; press fabrics, namely fabrics made from polymeric yarns or polymeric films or printed fabrics for use in a press section of a fibrous web-forming machine; press felts; dryer felts and dryer fabrics, namely fabrics made from polymeric yarns or polymeric films or printed fabrics for use in a dryer section of a fibrous web-forming machine; wet felts
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 039 for transport, packaging and storage of goods
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: transport, packaging and storage of goods; transport, packaging and storage of goods, namely movement of vehicles from end of production line to storage lots, rail sightings or truck hauling operationsClass 039 for transport, packaging and storage of goods, namely movement of vehicles from end of production line to storage lots, rail sightings or truck hauling operations
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for education, providing of training, entertainment
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: education, providing of training, entertainment; education, namely, providing courses, seminars, and workships in the field of paint process, maintenance services and automation/roboticsClass 041 for education, namely, providing courses, seminars, and workships in the field of paint process, maintenance services and automation/robotics
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 044 for agriculture, horticulture and forestry services
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: agriculture, horticulture and forestry services; agriculture, horticulture and forestry services, namely landscapingClass 044 for agriculture, horticulture and forestry services, namely landscaping
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.

SIGNATURE(S)
Response Signature
Signature: /Roxana A. Sullivan/     Date: 11/21/2014
Signatory's Name: Roxana A. Sullivan
Signatory's Position: Attorney of record, Dennemeyer & Associates, LLC, Illinois Bar Member

Signatory's Phone Number: 312-380-6497

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: 86193706
Internet Transmission Date: Fri Nov 21 11:19:56 EST 2014
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.X-20141121111956490
492-86193706-500e0fb5126e7428ac5f53cf715
cc484660d73a6bb0de1c574d3379b125e6b748-N
/A-N/A-20141121105636965500