Response to Office Action

HYPERION

HYPERION MATERIALS & TECHNOLOGIES (SWEDEN) AB

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 09/20/2020)

Response to Office Action


The table below presents the data as entered.

Input Field
Entered
SERIAL NUMBER 87650833
LAW OFFICE ASSIGNED LAW OFFICE 115
MARK SECTION
MARK FILE NAME http://uspto.report/TM/87650833/mark.png
LITERAL ELEMENT HYPERION
STANDARD CHARACTERS NO
USPTO-GENERATED IMAGE NO
ARGUMENT(S)
In response to the substantive refusal(s), please note the following: Applicant's full written response to the Office Action dated March 1, 2018 is attached hereto in the Evidence section.
EVIDENCE SECTION
        EVIDENCE FILE NAME(S)
       ORIGINAL PDF FILE evi_2085911850-20180831173434162235_._3_-_Response_to_Office_Action_dated_March_1__2018_-_Argument.pdf
       CONVERTED PDF FILE(S)
       (13 pages)
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       ORIGINAL PDF FILE evi_2085911850-20180831173434162235_.__-_Response_to_Office_Action_dated_March_1__2018_-_Exhibit_A.pdf
       CONVERTED PDF FILE(S)
       (4 pages)
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       ORIGINAL PDF FILE evi_2085911850-20180831173434162235_.__-_Response_to_Office_Action_dated_March_1__2018_-_Exhibit_B.pdf
       CONVERTED PDF FILE(S)
       (4 pages)
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       ORIGINAL PDF FILE evi_2085911850-20180831173434162235_.__-_Response_to_Office_Action_dated_March_1__2018_-_Exhibit_C.pdf
       CONVERTED PDF FILE(S)
       (3 pages)
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       ORIGINAL PDF FILE evi_2085911850-20180831173434162235_.__-_Response_to_Office_Action_dated_March_1__2018_-_Exhibit_D.pdf
       CONVERTED PDF FILE(S)
       (3 pages)
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       ORIGINAL PDF FILE evi_2085911850-20180831173434162235_.__-_Response_to_Office_Action_dated_March_1__2018_-_Exhibit_E.pdf
       CONVERTED PDF FILE(S)
       (2 pages)
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        \\TICRS\EXPORT17\IMAGEOUT17\876\508\87650833\xml9\ROA0030.JPG
DESCRIPTION OF EVIDENCE FILE Evidence in the nature of Response to Office Action dated March 1, 2018, and Exhibits A-E. has been attached.
GOODS AND/OR SERVICES SECTION (003)(current)
INTERNATIONAL CLASS 003
DESCRIPTION
SHARPENING PREPARATIONS; POLISH POWDER; ABRASIVES; GRINDING PREPARATIONS; RUBBING CREAM; CORUNDUM
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (003)(proposed)
INTERNATIONAL CLASS 003
TRACKED TEXT DESCRIPTION
SHARPENING PREPARATIONS; SHARPENING PREPARATIONS, NAMELY, ABRASIVE PASTE; POLISH POWDER; ABRASIVES; ABRASIVES AS POWDERS AND SLURRIES; GRINDING PREPARATIONS; FLEXIBLE ABRASIVES; RUBBING CREAM; GRINDING PREPARATIONS, NAMELY, ABRASIVE SAND; CORUNDUM; POLISHING PASTES AND COMPOUNDS; CORUNDUM FOR USE AS AN ABRASIVE
FINAL DESCRIPTION
SHARPENING PREPARATIONS, NAMELY, ABRASIVE PASTE; POLISH POWDER; ABRASIVES AS POWDERS AND SLURRIES; FLEXIBLE ABRASIVES; GRINDING PREPARATIONS, NAMELY, ABRASIVE SAND; POLISHING PASTES AND COMPOUNDS; CORUNDUM FOR USE AS AN ABRASIVE
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (006)(current)
INTERNATIONAL CLASS 006
DESCRIPTION
ALLOYS OF COMMON METAL; HARD ALLOYS; COMMON METALS, UNWROUGHT OR SEMI-WROUGHT
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (006)(proposed)
INTERNATIONAL CLASS 006
TRACKED TEXT DESCRIPTION
ALLOYS OF COMMON METAL; HARD ALLOYS; HARD ALLOYS OF COMMON METAL; COMMON METALS, UNWROUGHT OR SEMI-WROUGHT
FINAL DESCRIPTION
ALLOYS OF COMMON METAL; HARD ALLOYS OF COMMON METAL; COMMON METALS, UNWROUGHT OR SEMI-WROUGHT
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (007)(current)
INTERNATIONAL CLASS 007
DESCRIPTION
POWER OPERATED METAL WORKING MACHINE TOOLS, NAMELY, MILLING, TURNING, BORING AND DRILLING TOOLS AND TOOL HOLDERS AND INSERTS FOR SUCH TOOLS; PARTS OF MACHINES, NAMELY, TOOLS, SHARPENING WHEELS, GRINDSTONES; ELECTRICAL GRINDING WHEEL ENGINES; STROPPING MACHINES; BLADE SHARPENING STROPPING MACHINES; MILLSTONES; CEMENTED CARBIDE TOOLS; CUTTING TOOLS; APERTURE KNIFE TOOLS; MACHINE TOOLS
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (007)(proposed)
INTERNATIONAL CLASS 007
TRACKED TEXT DESCRIPTION
POWER OPERATED METAL WORKING MACHINE TOOLS, NAMELY, MILLING, TURNING, BORING AND DRILLING TOOLS AND TOOL HOLDERS AND INSERTS FOR SUCH TOOLS; POWER OPERATED METAL WORKING MACHINE TOOLS, NAMELY, MILLING, TURNING, BORING AND POWER OPERATED METAL WORKING MACHINE TOOLS, NAMELY, MILLING, TURNING, BORING AND DRILLING TOOLS AND TOOL HOLDERS AND INSERTS FOR SUCH TOOLS; PARTS OF MACHINES, NAMELY, TOOLS, SHARPENING WHEELS, GRINDSTONES; ELECTRICAL GRINDING WHEEL ENGINES; STROPPING MACHINES; BLADE SHARPENING STROPPING MACHINES; MILLSTONES; CEMENTED CARBIDE TOOLS; CONTINUOUS CUTTING KNIFE TOOLS, ROTARY CUTTING KNIVES AND TOOLING SYSTEMS; CUTTING TOOLS; CEMENTED CARBIDE CUTTING TOOLS; APERTURE KNIFE TOOLS; MACHINE TOOLS, NAMELY APERTURE KNIFE TOOLS; MACHINE TOOLS
FINAL DESCRIPTION
POWER OPERATED METAL WORKING MACHINE TOOLS, NAMELY, MILLING, TURNING, BORING AND POWER OPERATED METAL WORKING MACHINE TOOLS, NAMELY, MILLING, TURNING, BORING AND DRILLING TOOLS AND TOOL HOLDERS AND INSERTS FOR SUCH TOOLS; PARTS OF MACHINES, NAMELY, TOOLS, SHARPENING WHEELS, GRINDSTONES; ELECTRICAL GRINDING WHEEL ENGINES; STROPPING MACHINES; BLADE SHARPENING STROPPING MACHINES; MILLSTONES; CONTINUOUS CUTTING KNIFE TOOLS, ROTARY CUTTING KNIVES AND TOOLING SYSTEMS; CEMENTED CARBIDE CUTTING TOOLS; MACHINE TOOLS, NAMELY APERTURE KNIFE TOOLS
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (008)(current)
INTERNATIONAL CLASS 008
DESCRIPTION
HAND INSTRUMENTS, NAMELY, ABRADING INSTRUMENTS; BLADE SHARPENING INSTRUMENTS; HAND TOOLS, NAMELY, AUGERS; SHARPENING WHEELS, SCRAPING TOOLS; SHARPENING STONES; KNIFE STEELS; PARTS OF HAND TOOLS, NAMELY, BITS
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (008)(proposed)
INTERNATIONAL CLASS 008
TRACKED TEXT DESCRIPTION
HAND INSTRUMENTS, NAMELY, ABRADING INSTRUMENTS; HAND INSTRUMENTS, NAMELY, ABRADING TOOLS; BLADE SHARPENING INSTRUMENTS; SHARPENING WHEELS FOR BLADES; HAND TOOLS, NAMELY, AUGERS; SHARPENING WHEELS, SCRAPING TOOLS; SHARPENING WHEELS, HAND OPERATED SCRAPING TOOLS FOR MINING, CONSTRUCTION, AGRICULTURAL AND INDUSTRIAL WEAR APPLICATIONS; SHARPENING STONES; KNIFE STEELS; PARTS OF HAND TOOLS, NAMELY, BITS
FINAL DESCRIPTION
HAND INSTRUMENTS, NAMELY, ABRADING TOOLS; SHARPENING WHEELS FOR BLADES; HAND TOOLS, NAMELY, AUGERS; SHARPENING WHEELS, HAND OPERATED SCRAPING TOOLS FOR MINING, CONSTRUCTION, AGRICULTURAL AND INDUSTRIAL WEAR APPLICATIONS; SHARPENING STONES; KNIFE STEELS; PARTS OF HAND TOOLS, NAMELY, BITS
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (009)(current)
INTERNATIONAL CLASS 009
DESCRIPTION
COMPUTERIZED ELECTRIC CONTROLLERS FOR USE IN MONITORING POWER-OPERATED MACHINE TOOLS; POCKET COMPUTERS, COMPUTER PROGRAMS, AND COMPUTER SOFTWARE ALL FOR THE CALCULATION OF CUTTING DATA FOR MACHINE TOOLS; REMOTE CONTROL APPARATUS FOR POWER-OPERATED MACHINE TOOLS, COMPUTER AIDED MANUFACTURING SOFTWARE FOR CONTROLLING OF MACHINE TOOLS. SOFTWARE; SENSORS; COMPUTERIZED ELECTRIC CONTROLLERS FOR USE IN MONITORING POWER-OPERATED MACHINE TOOLS; COMPUTER SOFTWARE FOR USE IN THE CALCULATION OF CUTTING DATA FOR MACHINE TOOLS; REMOTE CONTROL APPARATUS; COMPUTER AIDED MANUFACTURING SOFTWARE FOR CONTROLLING OF MACHINE TOOLS; COMPUTERIZED ELECTRIC INTEGRATED CONTROL SYSTEMS FOR METAL WORKING MACHINES AND TOOLS; COMPUTER SOFTWARE FOR CALCULATION OF DATA COLLECTED IN CONNECTION WITH MACHINE WORKING MACHINES AND TOOLS; COMPUTER SOFTWARE FOR INCREASED MACHINE WORKING TOOL PRODUCTIVITY, LOGISTICS, ACCESSIBILITY AND IDENTIFICATION; SOFTWARE FOR MACHINING OF MATERIALS SUCH AS MATERIALS OF METAL AND NON-METALLIC MATERIALS SUCH AS COMPOSITE MATERIALS
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (009)(proposed)
INTERNATIONAL CLASS 009
TRACKED TEXT DESCRIPTION
COMPUTERIZED ELECTRIC CONTROLLERS FOR USE IN MONITORING POWER-OPERATED MACHINE TOOLS; COMPUTERIZED ELECTRONIC CONTROLLERS FOR USE IN MONITORING POWER-OPERATED MACHINE TOOLS IN HARD AND SUPER HARD MATERIALS APPLICATIONS; POCKET COMPUTERS, COMPUTER PROGRAMS, AND COMPUTER SOFTWARE ALL FOR THE CALCULATION OF CUTTING DATA FOR MACHINE TOOLS; COMPUTER PROGRAMS, AND COMPUTER SOFTWARE ALL FOR THE CALCULATION OF CUTTING DATA FOR MACHINE TOOLS IN HARD AND SUPER HARD MATERIALS APPLICATIONS; REMOTE CONTROL APPARATUS FOR POWER-OPERATED MACHINE TOOLS, COMPUTER AIDED MANUFACTURING SOFTWARE FOR CONTROLLING OF MACHINE TOOLS. SOFTWARE; REMOTE CONTROL APPARATUS FOR POWER-OPERATED MACHINE TOOLS TO MONITOR CUTTING DATA, COMPUTER AIDED MANUFACTURING SOFTWARE FOR HARD AND SUPER HARD MATERIALS APPLICATIONS; SENSORS; COMPUTERIZED ELECTRIC CONTROLLERS FOR USE IN MONITORING POWER-OPERATED MACHINE TOOLS; COMPUTERIZED ELECTRIC INTEGRATED CONTROL SYSTEMS FOR METAL WORKING MACHINES AND TOOLS IN HARD AND SUPER HARD MATERIALS APPLICATIONS; COMPUTER SOFTWARE FOR USE IN THE CALCULATION OF CUTTING DATA FOR MACHINE TOOLS; COMPUTER SOFTWARE FOR CALCULATION OF DATA COLLECTED IN CONNECTION WITH MACHINE WORKING MACHINES AND TOOLS IN HARD AND SUPER HARD MATERIALS APPLICATIONS; REMOTE CONTROL APPARATUS; COMPUTER SOFTWARE FOR INCREASED MACHINE WORKING TOOL PRODUCTIVITY IN HARD AND SUPER HARD MATERIALS APPLICATIONS; COMPUTER AIDED MANUFACTURING SOFTWARE FOR CONTROLLING OF MACHINE TOOLS; COMPUTERIZED ELECTRIC INTEGRATED CONTROL SYSTEMS FOR METAL WORKING MACHINES AND TOOLS; COMPUTER SOFTWARE FOR CALCULATION OF DATA COLLECTED IN CONNECTION WITH MACHINE WORKING MACHINES AND TOOLS; COMPUTER SOFTWARE FOR INCREASED MACHINE WORKING TOOL PRODUCTIVITY, LOGISTICS, ACCESSIBILITY AND IDENTIFICATION; SOFTWARE FOR MACHINING OF MATERIALS SUCH AS MATERIALS OF METAL AND NON-METALLIC MATERIALS SUCH AS COMPOSITE MATERIALS
FINAL DESCRIPTION
COMPUTERIZED ELECTRONIC CONTROLLERS FOR USE IN MONITORING POWER-OPERATED MACHINE TOOLS IN HARD AND SUPER HARD MATERIALS APPLICATIONS; COMPUTER PROGRAMS, AND COMPUTER SOFTWARE ALL FOR THE CALCULATION OF CUTTING DATA FOR MACHINE TOOLS IN HARD AND SUPER HARD MATERIALS APPLICATIONS; REMOTE CONTROL APPARATUS FOR POWER-OPERATED MACHINE TOOLS TO MONITOR CUTTING DATA, COMPUTER AIDED MANUFACTURING SOFTWARE FOR HARD AND SUPER HARD MATERIALS APPLICATIONS; SENSORS; COMPUTERIZED ELECTRIC INTEGRATED CONTROL SYSTEMS FOR METAL WORKING MACHINES AND TOOLS IN HARD AND SUPER HARD MATERIALS APPLICATIONS; COMPUTER SOFTWARE FOR CALCULATION OF DATA COLLECTED IN CONNECTION WITH MACHINE WORKING MACHINES AND TOOLS IN HARD AND SUPER HARD MATERIALS APPLICATIONS; COMPUTER SOFTWARE FOR INCREASED MACHINE WORKING TOOL PRODUCTIVITY IN HARD AND SUPER HARD MATERIALS APPLICATIONS
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (040)(no change)
GOODS AND/OR SERVICES SECTION (042)(current)
INTERNATIONAL CLASS 042
DESCRIPTION
DESIGN, MAINTENANCE AND INSTALLATION OF COMPUTER SOFTWARE; CONSULTANCY RELATING TO COMPUTER SOFTWARE; DESIGN OF MACHINE TOOLS AND MACHINES FOR METAL WORKING
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (042)(proposed)
INTERNATIONAL CLASS 042
TRACKED TEXT DESCRIPTION
DESIGN, MAINTENANCE AND INSTALLATION OF COMPUTER SOFTWARE; DESIGN, MAINTENANCE AND INSTALLATION OF COMPUTER SOFTWARE FOR MONITORING ALL HARD AND SUPER HARD MATERIALS APPLICATIONS; CONSULTANCY RELATING TO COMPUTER SOFTWARE; CONSULTANCY RELATING TO COMPUTER SOFTWARE FOR MONITORING ALL HARD AND SUPER HARD MATERIALS APPLICATIONS; DESIGN OF MACHINE TOOLS AND MACHINES FOR METAL WORKING
FINAL DESCRIPTION
DESIGN, MAINTENANCE AND INSTALLATION OF COMPUTER SOFTWARE FOR MONITORING ALL HARD AND SUPER HARD MATERIALS APPLICATIONS; CONSULTANCY RELATING TO COMPUTER SOFTWARE FOR MONITORING ALL HARD AND SUPER HARD MATERIALS APPLICATIONS; DESIGN OF MACHINE TOOLS AND MACHINES FOR METAL WORKING
FILING BASIS Section 1(b)
SIGNATURE SECTION
RESPONSE SIGNATURE /Jeffrey Chery/
SIGNATORY'S NAME Jeffrey Chery
SIGNATORY'S POSITION Attorney of record, NY bar member
SIGNATORY'S PHONE NUMBER 212-790-9200
DATE SIGNED 08/31/2018
AUTHORIZED SIGNATORY YES
FILING INFORMATION SECTION
SUBMIT DATE Fri Aug 31 17:46:52 EDT 2018
TEAS STAMP USPTO/ROA-XXX.XX.XXX.XX-2
0180831174652888600-87650
833-61096f69e688e36166c94
91464aba6d2bc1755dc56482e
1cffff63a7ce741c2369-N/A-
N/A-20180831173434162235



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 09/20/2020)

Response to Office Action


To the Commissioner for Trademarks:

Application serial no. 87650833 HYPERION (Stylized and/or with Design, see http://uspto.report/TM/87650833/mark.png) has been amended as follows:

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

In response to the substantive refusal(s), please note the following: Applicant's full written response to the Office Action dated March 1, 2018 is attached hereto in the Evidence section.

EVIDENCE
Evidence in the nature of Evidence in the nature of Response to Office Action dated March 1, 2018, and Exhibits A-E. has been attached. has been attached.
Original PDF file:
evi_2085911850-20180831173434162235_._3_-_Response_to_Office_Action_dated_March_1__2018_-_Argument.pdf
Converted PDF file(s) ( 13 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Original PDF file:
evi_2085911850-20180831173434162235_.__-_Response_to_Office_Action_dated_March_1__2018_-_Exhibit_A.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Original PDF file:
evi_2085911850-20180831173434162235_.__-_Response_to_Office_Action_dated_March_1__2018_-_Exhibit_B.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Original PDF file:
evi_2085911850-20180831173434162235_.__-_Response_to_Office_Action_dated_March_1__2018_-_Exhibit_C.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_2085911850-20180831173434162235_.__-_Response_to_Office_Action_dated_March_1__2018_-_Exhibit_D.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_2085911850-20180831173434162235_.__-_Response_to_Office_Action_dated_March_1__2018_-_Exhibit_E.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 003 for SHARPENING PREPARATIONS; POLISH POWDER; ABRASIVES; GRINDING PREPARATIONS; RUBBING CREAM; CORUNDUM
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: SHARPENING PREPARATIONS; SHARPENING PREPARATIONS, NAMELY, ABRASIVE PASTE; POLISH POWDER; ABRASIVES; ABRASIVES AS POWDERS AND SLURRIES; GRINDING PREPARATIONS; FLEXIBLE ABRASIVES; RUBBING CREAM; GRINDING PREPARATIONS, NAMELY, ABRASIVE SAND; CORUNDUM; POLISHING PASTES AND COMPOUNDS; CORUNDUM FOR USE AS AN ABRASIVEClass 003 for SHARPENING PREPARATIONS, NAMELY, ABRASIVE PASTE; POLISH POWDER; ABRASIVES AS POWDERS AND SLURRIES; FLEXIBLE ABRASIVES; GRINDING PREPARATIONS, NAMELY, ABRASIVE SAND; POLISHING PASTES AND COMPOUNDS; CORUNDUM FOR USE AS AN ABRASIVE
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 006 for ALLOYS OF COMMON METAL; HARD ALLOYS; COMMON METALS, UNWROUGHT OR SEMI-WROUGHT
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: ALLOYS OF COMMON METAL; HARD ALLOYS; HARD ALLOYS OF COMMON METAL; COMMON METALS, UNWROUGHT OR SEMI-WROUGHTClass 006 for ALLOYS OF COMMON METAL; HARD ALLOYS OF COMMON METAL; COMMON METALS, UNWROUGHT OR SEMI-WROUGHT
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 007 for POWER OPERATED METAL WORKING MACHINE TOOLS, NAMELY, MILLING, TURNING, BORING AND DRILLING TOOLS AND TOOL HOLDERS AND INSERTS FOR SUCH TOOLS; PARTS OF MACHINES, NAMELY, TOOLS, SHARPENING WHEELS, GRINDSTONES; ELECTRICAL GRINDING WHEEL ENGINES; STROPPING MACHINES; BLADE SHARPENING STROPPING MACHINES; MILLSTONES; CEMENTED CARBIDE TOOLS; CUTTING TOOLS; APERTURE KNIFE TOOLS; MACHINE TOOLS
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: POWER OPERATED METAL WORKING MACHINE TOOLS, NAMELY, MILLING, TURNING, BORING AND DRILLING TOOLS AND TOOL HOLDERS AND INSERTS FOR SUCH TOOLS; POWER OPERATED METAL WORKING MACHINE TOOLS, NAMELY, MILLING, TURNING, BORING AND POWER OPERATED METAL WORKING MACHINE TOOLS, NAMELY, MILLING, TURNING, BORING AND DRILLING TOOLS AND TOOL HOLDERS AND INSERTS FOR SUCH TOOLS; PARTS OF MACHINES, NAMELY, TOOLS, SHARPENING WHEELS, GRINDSTONES; ELECTRICAL GRINDING WHEEL ENGINES; STROPPING MACHINES; BLADE SHARPENING STROPPING MACHINES; MILLSTONES; CEMENTED CARBIDE TOOLS; CONTINUOUS CUTTING KNIFE TOOLS, ROTARY CUTTING KNIVES AND TOOLING SYSTEMS; CUTTING TOOLS; CEMENTED CARBIDE CUTTING TOOLS; APERTURE KNIFE TOOLS; MACHINE TOOLS, NAMELY APERTURE KNIFE TOOLS; MACHINE TOOLSClass 007 for POWER OPERATED METAL WORKING MACHINE TOOLS, NAMELY, MILLING, TURNING, BORING AND POWER OPERATED METAL WORKING MACHINE TOOLS, NAMELY, MILLING, TURNING, BORING AND DRILLING TOOLS AND TOOL HOLDERS AND INSERTS FOR SUCH TOOLS; PARTS OF MACHINES, NAMELY, TOOLS, SHARPENING WHEELS, GRINDSTONES; ELECTRICAL GRINDING WHEEL ENGINES; STROPPING MACHINES; BLADE SHARPENING STROPPING MACHINES; MILLSTONES; CONTINUOUS CUTTING KNIFE TOOLS, ROTARY CUTTING KNIVES AND TOOLING SYSTEMS; CEMENTED CARBIDE CUTTING TOOLS; MACHINE TOOLS, NAMELY APERTURE KNIFE TOOLS
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 008 for HAND INSTRUMENTS, NAMELY, ABRADING INSTRUMENTS; BLADE SHARPENING INSTRUMENTS; HAND TOOLS, NAMELY, AUGERS; SHARPENING WHEELS, SCRAPING TOOLS; SHARPENING STONES; KNIFE STEELS; PARTS OF HAND TOOLS, NAMELY, BITS
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: HAND INSTRUMENTS, NAMELY, ABRADING INSTRUMENTS; HAND INSTRUMENTS, NAMELY, ABRADING TOOLS; BLADE SHARPENING INSTRUMENTS; SHARPENING WHEELS FOR BLADES; HAND TOOLS, NAMELY, AUGERS; SHARPENING WHEELS, SCRAPING TOOLS; SHARPENING WHEELS, HAND OPERATED SCRAPING TOOLS FOR MINING, CONSTRUCTION, AGRICULTURAL AND INDUSTRIAL WEAR APPLICATIONS; SHARPENING STONES; KNIFE STEELS; PARTS OF HAND TOOLS, NAMELY, BITSClass 008 for HAND INSTRUMENTS, NAMELY, ABRADING TOOLS; SHARPENING WHEELS FOR BLADES; HAND TOOLS, NAMELY, AUGERS; SHARPENING WHEELS, HAND OPERATED SCRAPING TOOLS FOR MINING, CONSTRUCTION, AGRICULTURAL AND INDUSTRIAL WEAR APPLICATIONS; SHARPENING STONES; KNIFE STEELS; PARTS OF HAND TOOLS, NAMELY, BITS
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 009 for COMPUTERIZED ELECTRIC CONTROLLERS FOR USE IN MONITORING POWER-OPERATED MACHINE TOOLS; POCKET COMPUTERS, COMPUTER PROGRAMS, AND COMPUTER SOFTWARE ALL FOR THE CALCULATION OF CUTTING DATA FOR MACHINE TOOLS; REMOTE CONTROL APPARATUS FOR POWER-OPERATED MACHINE TOOLS, COMPUTER AIDED MANUFACTURING SOFTWARE FOR CONTROLLING OF MACHINE TOOLS. SOFTWARE; SENSORS; COMPUTERIZED ELECTRIC CONTROLLERS FOR USE IN MONITORING POWER-OPERATED MACHINE TOOLS; COMPUTER SOFTWARE FOR USE IN THE CALCULATION OF CUTTING DATA FOR MACHINE TOOLS; REMOTE CONTROL APPARATUS; COMPUTER AIDED MANUFACTURING SOFTWARE FOR CONTROLLING OF MACHINE TOOLS; COMPUTERIZED ELECTRIC INTEGRATED CONTROL SYSTEMS FOR METAL WORKING MACHINES AND TOOLS; COMPUTER SOFTWARE FOR CALCULATION OF DATA COLLECTED IN CONNECTION WITH MACHINE WORKING MACHINES AND TOOLS; COMPUTER SOFTWARE FOR INCREASED MACHINE WORKING TOOL PRODUCTIVITY, LOGISTICS, ACCESSIBILITY AND IDENTIFICATION; SOFTWARE FOR MACHINING OF MATERIALS SUCH AS MATERIALS OF METAL AND NON-METALLIC MATERIALS SUCH AS COMPOSITE MATERIALS
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: COMPUTERIZED ELECTRIC CONTROLLERS FOR USE IN MONITORING POWER-OPERATED MACHINE TOOLS; COMPUTERIZED ELECTRONIC CONTROLLERS FOR USE IN MONITORING POWER-OPERATED MACHINE TOOLS IN HARD AND SUPER HARD MATERIALS APPLICATIONS; POCKET COMPUTERS, COMPUTER PROGRAMS, AND COMPUTER SOFTWARE ALL FOR THE CALCULATION OF CUTTING DATA FOR MACHINE TOOLS; COMPUTER PROGRAMS, AND COMPUTER SOFTWARE ALL FOR THE CALCULATION OF CUTTING DATA FOR MACHINE TOOLS IN HARD AND SUPER HARD MATERIALS APPLICATIONS; REMOTE CONTROL APPARATUS FOR POWER-OPERATED MACHINE TOOLS, COMPUTER AIDED MANUFACTURING SOFTWARE FOR CONTROLLING OF MACHINE TOOLS. SOFTWARE; REMOTE CONTROL APPARATUS FOR POWER-OPERATED MACHINE TOOLS TO MONITOR CUTTING DATA, COMPUTER AIDED MANUFACTURING SOFTWARE FOR HARD AND SUPER HARD MATERIALS APPLICATIONS; SENSORS; COMPUTERIZED ELECTRIC CONTROLLERS FOR USE IN MONITORING POWER-OPERATED MACHINE TOOLS; COMPUTERIZED ELECTRIC INTEGRATED CONTROL SYSTEMS FOR METAL WORKING MACHINES AND TOOLS IN HARD AND SUPER HARD MATERIALS APPLICATIONS; COMPUTER SOFTWARE FOR USE IN THE CALCULATION OF CUTTING DATA FOR MACHINE TOOLS; COMPUTER SOFTWARE FOR CALCULATION OF DATA COLLECTED IN CONNECTION WITH MACHINE WORKING MACHINES AND TOOLS IN HARD AND SUPER HARD MATERIALS APPLICATIONS; REMOTE CONTROL APPARATUS; COMPUTER SOFTWARE FOR INCREASED MACHINE WORKING TOOL PRODUCTIVITY IN HARD AND SUPER HARD MATERIALS APPLICATIONS; COMPUTER AIDED MANUFACTURING SOFTWARE FOR CONTROLLING OF MACHINE TOOLS; COMPUTERIZED ELECTRIC INTEGRATED CONTROL SYSTEMS FOR METAL WORKING MACHINES AND TOOLS; COMPUTER SOFTWARE FOR CALCULATION OF DATA COLLECTED IN CONNECTION WITH MACHINE WORKING MACHINES AND TOOLS; COMPUTER SOFTWARE FOR INCREASED MACHINE WORKING TOOL PRODUCTIVITY, LOGISTICS, ACCESSIBILITY AND IDENTIFICATION; SOFTWARE FOR MACHINING OF MATERIALS SUCH AS MATERIALS OF METAL AND NON-METALLIC MATERIALS SUCH AS COMPOSITE MATERIALSClass 009 for COMPUTERIZED ELECTRONIC CONTROLLERS FOR USE IN MONITORING POWER-OPERATED MACHINE TOOLS IN HARD AND SUPER HARD MATERIALS APPLICATIONS; COMPUTER PROGRAMS, AND COMPUTER SOFTWARE ALL FOR THE CALCULATION OF CUTTING DATA FOR MACHINE TOOLS IN HARD AND SUPER HARD MATERIALS APPLICATIONS; REMOTE CONTROL APPARATUS FOR POWER-OPERATED MACHINE TOOLS TO MONITOR CUTTING DATA, COMPUTER AIDED MANUFACTURING SOFTWARE FOR HARD AND SUPER HARD MATERIALS APPLICATIONS; SENSORS; COMPUTERIZED ELECTRIC INTEGRATED CONTROL SYSTEMS FOR METAL WORKING MACHINES AND TOOLS IN HARD AND SUPER HARD MATERIALS APPLICATIONS; COMPUTER SOFTWARE FOR CALCULATION OF DATA COLLECTED IN CONNECTION WITH MACHINE WORKING MACHINES AND TOOLS IN HARD AND SUPER HARD MATERIALS APPLICATIONS; COMPUTER SOFTWARE FOR INCREASED MACHINE WORKING TOOL PRODUCTIVITY IN HARD AND SUPER HARD MATERIALS APPLICATIONS
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 042 for DESIGN, MAINTENANCE AND INSTALLATION OF COMPUTER SOFTWARE; CONSULTANCY RELATING TO COMPUTER SOFTWARE; DESIGN OF MACHINE TOOLS AND MACHINES FOR METAL WORKING
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: DESIGN, MAINTENANCE AND INSTALLATION OF COMPUTER SOFTWARE; DESIGN, MAINTENANCE AND INSTALLATION OF COMPUTER SOFTWARE FOR MONITORING ALL HARD AND SUPER HARD MATERIALS APPLICATIONS; CONSULTANCY RELATING TO COMPUTER SOFTWARE; CONSULTANCY RELATING TO COMPUTER SOFTWARE FOR MONITORING ALL HARD AND SUPER HARD MATERIALS APPLICATIONS; DESIGN OF MACHINE TOOLS AND MACHINES FOR METAL WORKINGClass 042 for DESIGN, MAINTENANCE AND INSTALLATION OF COMPUTER SOFTWARE FOR MONITORING ALL HARD AND SUPER HARD MATERIALS APPLICATIONS; CONSULTANCY RELATING TO COMPUTER SOFTWARE FOR MONITORING ALL HARD AND SUPER HARD MATERIALS APPLICATIONS; DESIGN OF MACHINE TOOLS AND MACHINES FOR METAL WORKING
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: /Jeffrey Chery/     Date: 08/31/2018
Signatory's Name: Jeffrey Chery
Signatory's Position: Attorney of record, NY bar member

Signatory's Phone Number: 212-790-9200

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: 87650833
Internet Transmission Date: Fri Aug 31 17:46:52 EDT 2018
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XX-2018083117465288
8600-87650833-61096f69e688e36166c9491464
aba6d2bc1755dc56482e1cffff63a7ce741c2369
-N/A-N/A-20180831173434162235


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