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)

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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 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 87676868 UNO(Standard Characters, see http://uspto.report/TM/87676868/mark.png) 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 007 for Drill bits, Saw blades, Reamers, Chamfer mills, End mills
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: Drill bits, Saw blades, Reamers, Chamfer mills, End mills; Power drill bits; power saw blades; power tools, namely, reamers; Power operated chamfer mills; Power tools, namely, end millsClass 007 for Power drill bits; power saw blades; power tools, namely, reamers; Power operated chamfer mills; Power tools, namely, end mills
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.

ADDITIONAL STATEMENTS
Translation
The English translation of UNO in the mark is one.


Miscellaneous Statement
The Examiner has discretion to suspend this application based on the prior filed application for VARIOCELL UNO; or, to allow this application to continue based on new information and reasoned arguments provided by Applicant. Applicant respectfully submits that confusion is not likely for at least the following reasons: 1. The marks are very different. VARIOCELL is the dominant portion of the prior mark and is sufficient to distinguish the marks. 2. The portion in common, UNO, is sufficiently weak to allow for coexistence given the important difference in the marks. While not controlling, the Examiner may take notice of the large number of "uno" marks on the register, and the exceedingly large number of the English equivalent, "one." Many of these marks do exist in similar classes such as 8 and 9. Finally, the Register is replete with examples of differing marks having "uno" or "one" in common (See class 9 and goods related to phones as an example). 3. The goods are not identical. Applicant does not make machines. Moreover, as specified in the prior application's description of goods, that owner makes complex and expensive machines for "materials processing." See, http://chiron.de/en/products/technology/flexible-automation (or search "variocell uno." These are expensive machines sold to sophisticated consumers. In order to deny registration where weak marks are at issue, at least the mark or the goods should be identical. Here, there are meaningful differences in both the marks and the goods sufficient for consumers to distinguish these marks amidst the familiar portion in common. Thank you for your consideration.


SIGNATURE(S)
Response Signature
Signature: /Jerre Swann/     Date: 08/21/2018
Signatory's Name: Jerre B. Swann, Jr.
Signatory's Position: Attorney of record, GA bar member

Signatory's Phone Number: 404-724-2831

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: 87676868
Internet Transmission Date: Tue Aug 21 11:34:40 EDT 2018
TEAS Stamp: USPTO/ROA-XXX.XXX.X.XXX-2018082111344040
1343-87676868-61095da5def34822249bb9bd2a
ea3bf75a5b9ad718f4968966646855bff99cfb-N
/A-N/A-20180821103247614219