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 |
86643636 |
LAW OFFICE ASSIGNED |
LAW OFFICE 101 |
MARK SECTION |
MARK |
http://tmng-al.gov.uspto.report/resting2/api/img/86643636/large |
LITERAL ELEMENT |
PILOT |
STANDARD CHARACTERS |
YES |
USPTO-GENERATED IMAGE |
YES |
MARK STATEMENT |
The mark consists of standard characters, without claim to any particular font style, size or color. |
LEGAL ENTITY SECTION (1st owner)(current) |
TYPE |
APPLICANT ENTERED NO DATA |
STATE/COUNTRY WHERE LEGALLY ORGANIZED |
Germany |
LEGAL ENTITY SECTION (1st owner)(proposed) |
TYPE |
aktiengesellschaft |
STATE/COUNTRY WHERE LEGALLY ORGANIZED |
Germany |
OWNER SECTION (2nd owner)(current) |
NAME |
ThyssenKrupp Elevator AG |
STREET |
ThyssenKrupp Allee 1 |
CITY |
Essen |
ZIP/POSTAL CODE |
45143 |
COUNTRY |
Germany |
OWNER SECTION (2nd owner)(proposed) |
NAME |
ThyssenKrupp AG |
STREET |
ThyssenKrupp Allee 1 |
CITY |
Essen |
ZIP/POSTAL CODE |
45143 |
COUNTRY |
Germany |
LEGAL ENTITY SECTION (2nd owner)(current) |
TYPE |
APPLICANT ENTERED NO DATA |
LEGAL ENTITY SECTION (2nd owner)(proposed) |
TYPE |
aktiengesellschaft |
STATE/COUNTRY WHERE LEGALLY ORGANIZED |
Germany |
GOODS AND/OR SERVICES SECTION (009)(current) |
INTERNATIONAL CLASS |
009 |
DESCRIPTION |
Measuring instruments, supervision instruments and regulating instruments and parts for use in lifts, in particular operating terminals
for lifts; software and controls for operating lifts |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
302015101301 |
FOREIGN APPLICATION COUNTRY |
Germany |
FOREIGN FILING DATE |
04/02/2015 |
GOODS AND/OR SERVICES SECTION (009)(proposed) |
INTERNATIONAL CLASS |
009 |
TRACKED TEXT DESCRIPTION |
Measuring instruments, supervision instruments and regulating instruments and parts for use in lifts, in particular
operating terminals for lifts; software and controls for operating lifts; computer software and electronic controls for
operating lifts |
FINAL DESCRIPTION |
Measuring instruments, supervision instruments and regulating instruments and parts for use in lifts, in particular operating terminals
for lifts; computer software and electronic controls for operating lifts |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
302015101301 |
FOREIGN APPLICATION COUNTRY |
Germany |
FOREIGN FILING DATE |
04/02/2015 |
GOODS AND/OR SERVICES SECTION (037)(current) |
INTERNATIONAL CLASS |
037 |
DESCRIPTION |
Installation, maintenance and repair of measuring instruments, supervision instruments and regulating instruments and parts thereof for
use in lifts, in particular operating terminals for lifts; software and controls for operating lifts |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
GOODS AND/OR SERVICES SECTION (037)(proposed) |
INTERNATIONAL CLASS |
037 |
TRACKED TEXT DESCRIPTION |
Installation, maintenance and repair of measuring instruments, supervision instruments and regulating instruments and
parts thereof for use in lifts, in particular operating terminals for lifts; software and controls for operating lifts |
FINAL DESCRIPTION |
Installation, maintenance and repair of measuring instruments, supervision instruments and regulating instruments and parts thereof for
use in lifts, in particular operating terminals for lifts |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
ADDITIONAL STATEMENTS SECTION |
SIGNIFICANCE OF MARK |
PILOT appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as used in connection with the
goods/services/collective membership organization listed in the application, or any geographical significance. |
MISCELLANEOUS STATEMENT |
The applicant wishes to rely on Section 44(e), however, the application which this claim will be based on, German Trademark Application No.
302015101301, is still pending. At this time we request that the U.S. application be suspended until a copy of the foreign registration is available. |
SIGNATURE SECTION |
RESPONSE SIGNATURE |
/gjc/ |
SIGNATORY'S NAME |
Gregory J. Chinlund |
SIGNATORY'S POSITION |
Attorney of record, Illinois bar member |
DATE SIGNED |
08/25/2015 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Wed Aug 26 10:01:20 EDT 2015 |
TEAS STAMP |
USPTO/ROA-XX.XXX.XX.X-201
50826100120434463-8664363
6-54018e1a3a5c2bdf207d204
3ba86d7326c76fa3d84975ff5
20af528ae5aff68d-N/A-N/A-
20150825154340449823 |
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.
86643636 PILOT(Standard Characters, see http://tmng-al.gov.uspto.report/resting2/api/img/86643636/large) has been amended as follows:
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Measuring instruments, supervision instruments and regulating instruments and parts for use in lifts, in particular operating terminals for lifts; software and controls
for operating lifts
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[ Germany application number 302015101301 filed 04/02/2015]. 15 U.S.C.Section
1126(d), as amended.
Proposed:
Tracked Text Description: Measuring instruments, supervision instruments and regulating instruments and parts for use in lifts, in particular operating terminals for
lifts;
software and controls for operating lifts;
computer software and electronic controls for operating
liftsClass 009 for Measuring instruments, supervision instruments and regulating instruments and parts for use in lifts, in particular operating terminals for lifts; computer software and
electronic controls for operating lifts
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 [ Germany application number 302015101301 filed 04/02/2015]. 15 U.S.C.Section
1126(d), as amended.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 037 for Installation, maintenance and repair of measuring instruments, supervision instruments and regulating instruments and parts thereof for use in lifts, in particular
operating terminals for lifts; software and controls for operating lifts
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.
Proposed:
Tracked Text Description: Installation, maintenance and repair of measuring instruments, supervision instruments and regulating instruments and parts thereof for use in
lifts, in particular operating terminals for lifts;
software and controls for operating liftsClass 037 for Installation, maintenance and repair of
measuring instruments, supervision instruments and regulating instruments and parts thereof for use in lifts, in particular operating terminals for lifts
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.
APPLICANT AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: ThyssenKrupp Elevator AG legally organized under the laws of Germany, having an address of
ThyssenKrupp Allee 1
Essen, 45143
Germany
Proposed: ThyssenKrupp Elevator AG, aktiengesellschaft legally organized under the laws of Germany, having an address of
ThyssenKrupp Allee 1
Essen, 45143
Germany
Applicant proposes to amend the following:
Current: ThyssenKrupp Elevator AG having an address of
ThyssenKrupp Allee 1
Essen, 45143
Germany
Proposed: ThyssenKrupp AG, aktiengesellschaft legally organized under the laws of Germany, having an address of
ThyssenKrupp Allee 1
Essen, 45143
Germany
ADDITIONAL STATEMENTS
Significance of wording, letter(s), or numeral(s)
PILOT appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as used in connection with the goods/services/collective membership organization listed in
the application, or any geographical significance.
Miscellaneous Statement
The applicant wishes to rely on Section 44(e), however, the application which this claim will be based on, German Trademark Application No. 302015101301, is still pending. At this time we request
that the U.S. application be suspended until a copy of the foreign registration is available.
SIGNATURE(S)
Response Signature
Signature: /gjc/ Date: 08/25/2015
Signatory's Name: Gregory J. Chinlund
Signatory's Position: Attorney of record, Illinois bar member
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 owner's/holder'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 owner/holder in this matter: (1) the owner/holder 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 owner/holder has filed a power of
attorney appointing him/her in this matter; or (4) the owner's/holder'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: 86643636
Internet Transmission Date: Wed Aug 26 10:01:20 EDT 2015
TEAS Stamp: USPTO/ROA-XX.XXX.XX.X-201508261001204344
63-86643636-54018e1a3a5c2bdf207d2043ba86
d7326c76fa3d84975ff520af528ae5aff68d-N/A
-N/A-20150825154340449823