Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

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

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

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

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 86666953 HIETA TECHNOLOGIES (Stylized and/or with Design, see http://tmng-al.gov.uspto.report/resting2/api/img/86666953/large) has been amended as follows:

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

The Examiner has rejected the following services in Class 40 as being outside the scope of the services in the foreign registration: “provision of specialist analysis and consultation services in the field of additive manufacturing, 3D printing, digital printing”.

 

Applicant disagrees and submits that these services are covered by the foreign registration.  Specifically, these particular Class 40 services were initially covered in Class 42 of the U.S. application prior to Applicant’s response to the first Office Action, and are within the scope of the following services covered in Class 42 of the foreign registration: “provision of specialist analysis and consultation services relating to 2D and 3D imaging, printing, scale models, prototypes and production”

 

Applicant therefore respectfully requests that this objection be withdrawn.

 

Applicant further notes that TSDR is ambiguous with respect to which classes of goods and services are still based on Section 1(b).  Pursuant to Applicant’s March 22, 2016 response to Office Action and the current response, only Class 40 should retain a Section 1(b) basis, and only with respect to the services “additive manufacturing.”  All remaining classes in the application, and the remaining services in Class 40, should be based only on Section 44(e).

 

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 007 for Heat exchangers for use as part of larger machinery; component parts of engines and motors, namely, manifolds, oil coolers, coolers of electronics, fuel injectors, fuel pumps, pistons, valves, crankshafts, crankpins, camshafts, flywheels, pistons, exhaust systems, exhaust energy recovery systems, cylinder blocks, cylinder heads; machine coupling and transmission components, except for land vehicles; 3D printing machines; machines adapted for use with 3D printing machines, namely, hydraulic injection molding machines, assembly line machinery, robotically controlled machinery, turbo machinery; inking apparatus for 3D printing machines; parts and fittings for 3D printing machines; component parts for use in engines of land vehicles, aircraft and watercraft namely, manifolds, oil coolers, coolers of electronics, fuel injectors, fuel pumps, pistons, valves, crankshafts, crankpins, camshafts, flywheels, pistons, exhaust systems, cylinder blocks, cylinder heads
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: Heat exchangers for use as part of larger machinery; component parts of engines and motors, namely, manifolds, oil coolers, coolers of electronics, fuel injectors, fuel pumps, pistons, valves, crankshafts, crankpins, camshafts, flywheels, pistons, exhaust systems, exhaust energy recovery systems, cylinder blocks, cylinder heads; component parts of engines and motors, namely, manifolds, oil coolers, fuel injectors, fuel pumps, pistons, valves, crankshafts, crankpins, camshafts, flywheels, exhaust systems comprised of pipes, collector and muffler, exhaust energy recovery systems comprised of exhaust manifold, heat exchanger, turbo-compressor, turbo-expander, water condenser, gas-water separator, electricity generator, and drive to main powertrain, cylinder blocks, cylinder heads; machine coupling and transmission components, except for land vehicles; 3D printing machines; machines adapted for use with 3D printing machines, namely, hydraulic injection molding machines, assembly line machinery, robotically controlled machinery, turbo machinery; machines adapted for use with 3D printing machines, namely, hydraulic injection molding machines, assembly line conveyor machinery, industrial robots, turbo machinery in the nature of electricity generators powered by turbines, micro-turbines, turbo-compressors, turbo-expanders; inking apparatus for 3D printing machines; parts and fittings for 3D printing machines; component parts for use in engines of land vehicles, aircraft and watercraft namely, manifolds, oil coolers, coolers of electronics, fuel injectors, fuel pumps, pistons, valves, crankshafts, crankpins, camshafts, flywheels, pistons, exhaust systems, cylinder blocks, cylinder heads; component parts for use in engines of land vehicles, aircraft and watercraft namely, manifolds, oil coolers, fuel injectors, fuel pumps, pistons, valves, crankshafts, crankpins, camshafts, flywheels, exhaust systems comprised of pipes, collector and muffler, cylinder blocks, cylinder headsClass 007 for Heat exchangers for use as part of larger machinery; component parts of engines and motors, namely, manifolds, oil coolers, fuel injectors, fuel pumps, pistons, valves, crankshafts, crankpins, camshafts, flywheels, exhaust systems comprised of pipes, collector and muffler, exhaust energy recovery systems comprised of exhaust manifold, heat exchanger, turbo-compressor, turbo-expander, water condenser, gas-water separator, electricity generator, and drive to main powertrain, cylinder blocks, cylinder heads; machine coupling and transmission components, except for land vehicles; 3D printing machines; machines adapted for use with 3D printing machines, namely, hydraulic injection molding machines, assembly line conveyor machinery, industrial robots, turbo machinery in the nature of electricity generators powered by turbines, micro-turbines, turbo-compressors, turbo-expanders; inking apparatus for 3D printing machines; parts and fittings for 3D printing machines; component parts for use in engines of land vehicles, aircraft and watercraft namely, manifolds, oil coolers, fuel injectors, fuel pumps, pistons, valves, crankshafts, crankpins, camshafts, flywheels, exhaust systems comprised of pipes, collector and muffler, cylinder blocks, cylinder heads
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 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 [ __________ application number __________ filed __________ ]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration. If ultimately the applicant does not rely on Section 44(e) as a basis for registration, a valid claim of priority may be retained.

Applicant hereby adds the following class of goods/services to the application:
New: Class 009 for Coolers for electronic controls for gasoline engines for land vehicles, aircraft and watercraft
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 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 [ European Community - CTM application number 014258818 filed 06/15/2015]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration. If ultimately the applicant does not rely on Section 44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e),Based on Foreign Registration: 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 and /or services, and submits a copy of [ European Community - CTM registration number 014258818 registered 12/22/2015 with a renewal date of __________ and an expiration date of 06/15/2025 ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.
Original PDF file:
FRN0-64223176200-162351155_._Certificate_of_Registration__W5424702x7AC2E_.pdf
Converted PDF file(s) ( 9 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5
Foreign Registration-6
Foreign Registration-7
Foreign Registration-8
Foreign Registration-9

FEE(S)
Fee(s) in the amount of $275 is being submitted.

SIGNATURE(S)
Declaration Signature
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice.

Response Signature
Signature: /Jonathan M. Gelchinsky/     Date: 09/06/2016
Signatory's Name: Jonathan M. Gelchinsky
Signatory's Position: Attorney of Record, Maine Bar Member

Signatory's Phone Number: 207-791-1100

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.

        
RAM Sale Number: 86666953
RAM Accounting Date: 09/06/2016
        
Serial Number: 86666953
Internet Transmission Date: Tue Sep 06 12:22:47 EDT 2016
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2016090612224706
4045-86666953-5507f6bdecf50e30fab83c465d
8cf2685d566cbbac1a18b9a46f05da51de73e-DA
-12621-20160906121337106656