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. 87912646 VCC(Standard Characters, see http://uspto.report/TM/87912646/mark.png) has been amended as follows:

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

This response is being submitted in response to the Office action dated August 29, 2017. Applicant thanks the Examining Attorney for diligent examination of this application.

In the Office action, the Examining Attorney has issued a Section 2(d) refusal with regards to Applicant’s goods in Class 007 and “optical filters for manufacturing semiconductors, solar cells, light-emitting diodes, displays, liquid crystal and organic electroluminescent elements” in Class 009. Without acceding to the propriety of this refusal, and without prejudice, Applicant hereby deletes Class 007 and “optical filters for manufacturing semiconductors, solar cells, light emitting-diodes, displays, liquid crystal and organic electroluminescent elements” in Class 009 from the application. These goods being deleted, Applicant believes the grounds for refusal no longer exist. Accordingly, the application is now believed to be in condition for publication. The Examining Attorney is encouraged to contact the undersigned with any questions regarding this response.

Respectfully submitted,

Mark D. Alleman

Alleman Hall Creasman & Tuttle LLP

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 007 for Machines and parts for manufacturing semiconductors, solar cells, light-emitting diodes, displays, liquid crystal and organic electroluminescent elements; fluid flow controllers for use with machines for manufacturing semiconductors, solar cells, light-emitting diodes, displays, liquid crystal and organic electroluminescent elements; fluid measurement apparatuses for manufacturing semiconductors, solar cells, light-emitting diodes, displays, liquid crystal and organic electroluminescent elements; fluid flow controllers for manufacturing semiconductors, solar cells, light-emitting diodes, displays, liquid crystal and organic electroluminescent elements; fluid flow meters for manufacturing semiconductors, solar cells, light-emitting diodes, displays, liquid crystal and organic electroluminescent elements; fluid flow sensors for manufacturing semiconductors, solar cells, light-emitting diodes, displays, liquid crystal and organic electroluminescent elements; pressure controllers for manufacturing semiconductors, solar cells, light-emitting diodes, displays, liquid crystal and organic electroluminescent elements; pressure meters for manufacturing semiconductors, solar cells, light-emitting diodes, displays, liquid crystal and organic electroluminescent elements; pressure sensors for manufacturing semiconductors, solar cells, light-emitting diodes, displays, liquid crystal and organic electroluminescent elements; concentration controllers for manufacturing semiconductors, solar cells, light-emitting diodes, displays, liquid crystal and organic electroluminescent elements; concentration meters for manufacturing semiconductors, solar cells, light-emitting diodes, displays, liquid crystal and organic electroluminescent elements; concentration monitors for manufacturing semiconductors, solar cells, light-emitting diodes, displays, liquid crystal and organic electroluminescent elements; concentration sensors for manufacturing semiconductors, solar cells, light-emitting diodes, displays, liquid crystal and organic electroluminescent elements; gas concentration controllers for manufacturing semiconductors, solar cells, light-emitting diodes, displays, liquid crystal and organic electroluminescent elements; gas concentration meters for manufacturing semiconductors, solar cells, light-emitting diodes, displays, liquid crystal and organic electroluminescent elements; gas concentration monitors for manufacturing semiconductors, solar cells, light-emitting diodes, displays, liquid crystal and organic electroluminescent elements; and gas concentration sensors for manufacturing semiconductors, solar cells, light-emitting diodes, displays, liquid crystal and organic electroluminescent elements

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Test and measurement machines and instruments for use in measuring fluid flow, fluid pressure, fluid concentrations, gas concentrations; fluid measurement apparatuses; fluid flow controllers; fluid flow meters; fluid flow sensors; pressure controllers; pressure meters; pressure sensors; concentration controllers; concentration meters; concentration monitors; concentration sensors; gas concentration controllers; gas concentration meters; gas concentration monitors; gas concentration sensors; laboratory apparatuses and instruments for use in measuring fluid flow, fluid pressure, fluid concentrations, gas concentrations; electronic machines, apparatuses and their parts for use in measuring fluid flow, fluid pressure, fluid concentrations, gas concentrations; and computer programs for use in measuring fluid flow, fluid pressure, fluid concentrations, gas concentrations; electricity distribution and regulation boxes, boards, consoles and other apparatus for use in measuring fluid flow, fluid pressure, fluid concentrations, and gas concentrations; rotary converters for use in measuring fluid flow, fluid pressure, fluid concentrations, and gas concentrations; optical filters for manufacturing semiconductors, solar cells, light-emitting diodes, displays, liquid crystal and organic electroluminescent elements; electricity or magnetic flow meters for use in measuring fluid flow, fluid pressure, fluid concentrations, and gas concentrations; and telecommunications equipment, namely, wired and wireless computer networking equipment for connecting fluid flow, fluid pressure, fluid concentrations, and gas concentration measuring instruments with remote monitoring computers
Original Filing Basis:
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 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[ Japan application number 2017-146607 filed 11/08/2017]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Test and measurement machines and instruments for use in measuring fluid flow, fluid pressure, fluid concentrations, gas concentrations; Test and measurement machines and instruments, namely test and measurement machines and instruments for use in measuring fluid flow, fluid pressure, fluid concentrations, gas concentrations; fluid measurement apparatuses; fluid measurement apparatuses, namely gas concentration meters; fluid flow controllers; fluid flow controllers, namely, fluid flow controllers for use in controlling a gas concentration; fluid flow meters; fluid flow sensors; fluid flow sensors, namely electronic sensors for measuring fluid flow; pressure controllers; pressure controllers, namely, pressure controllers for use in controlling a gas concentration; pressure meters; pressure meters, namely, pressure meters for use in controlling a gas concentration; pressure sensors; concentration controllers; concentration controllers, namely electronic controllers for regulating gas concentration; concentration meters; concentration monitors; concentration sensors, namely gas sensors for measuring gas concentration; concentration sensors; gas concentration controllers, namely electronic control for regulating gas concentration; gas concentration controllers; gas concentration meters; gas concentration sensors, namely gas sensors for measuring and controlling gas concentration; gas concentration monitors; laboratory apparatuses and instruments, namely electric sensors, for use in measuring fluid flow, fluid pressure, fluid concentrations, gas concentrations; gas concentration sensors; electronic machines, apparatuses and their parts, namely electronic data processing apparatuses, for use in measuring fluid flow, fluid pressure, fluid concentrations, gas concentrations; laboratory apparatuses and instruments for use in measuring fluid flow, fluid pressure, fluid concentrations, gas concentrations; computer programs for use in operating equipment for measuring and controlling fluid flow, fluid pressure, fluid concentrations, gas concentrations; electronic machines, apparatuses and their parts for use in measuring fluid flow, fluid pressure, fluid concentrations, gas concentrations; gas concentration meters, gas sensors for measuring gas concentration, and automatic gas concentration control machines and instruments, for use with machines for manufacturing semiconductors, solar cells, light-emitting diodes, displays, liquid crystal and organic electroluminescent elements; and computer programs for use in measuring fluid flow, fluid pressure, fluid concentrations, gas concentrations; electricity distribution and regulation boxes, boards, consoles and other apparatus for use in measuring fluid flow, fluid pressure, fluid concentrations, and gas concentrations; rotary converters for use in measuring fluid flow, fluid pressure, fluid concentrations, and gas concentrations; optical filters for manufacturing semiconductors, solar cells, light-emitting diodes, displays, liquid crystal and organic electroluminescent elements; electricity or magnetic flow meters for use in measuring fluid flow, fluid pressure, fluid concentrations, and gas concentrations; and telecommunications equipment, namely, wired and wireless computer networking equipment for connecting fluid flow, fluid pressure, fluid concentrations, and gas concentration measuring instruments with remote monitoring computersClass 009 for Test and measurement machines and instruments, namely test and measurement machines and instruments for use in measuring fluid flow, fluid pressure, fluid concentrations, gas concentrations; fluid measurement apparatuses, namely gas concentration meters; fluid flow controllers, namely, fluid flow controllers for use in controlling a gas concentration; fluid flow meters; fluid flow sensors, namely electronic sensors for measuring fluid flow; pressure controllers, namely, pressure controllers for use in controlling a gas concentration; pressure meters, namely, pressure meters for use in controlling a gas concentration; pressure sensors; concentration controllers, namely electronic controllers for regulating gas concentration; concentration meters; concentration sensors, namely gas sensors for measuring gas concentration; gas concentration controllers, namely electronic control for regulating gas concentration; gas concentration meters; gas concentration sensors, namely gas sensors for measuring and controlling gas concentration; laboratory apparatuses and instruments, namely electric sensors, for use in measuring fluid flow, fluid pressure, fluid concentrations, gas concentrations; electronic machines, apparatuses and their parts, namely electronic data processing apparatuses, for use in measuring fluid flow, fluid pressure, fluid concentrations, gas concentrations; computer programs for use in operating equipment for measuring and controlling fluid flow, fluid pressure, fluid concentrations, gas concentrations; gas concentration meters, gas sensors for measuring gas concentration, and automatic gas concentration control machines and instruments, for use with machines for manufacturing semiconductors, solar cells, light-emitting diodes, displays, liquid crystal and organic electroluminescent elements
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 [ Japan application number 2017-146607 filed 11/08/2017]. 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 and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Japan registration number 6076365 registered 08/31/2018 with a renewal date of __________ and an expiration date of 08/31/2028 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU1-63239950-153224918_._Japanese_Reg_English_Translation_VCC.pdf
Converted PDF file(s) ( 5 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Mark Alleman/      Date: 02/26/2019
Signatory's Name: Mark D. Alleman
Signatory's Position: Attorney of Record, Oregon bar member
Signatory's Phone Number: 5035957300


Response Signature
Signature: /Mark Alleman/     Date: 02/26/2019
Signatory's Name: Mark D. Alleman
Signatory's Position: Attorney of record, Oregon bar member

Signatory's Phone Number: 503-595-7300

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: 87912646
Internet Transmission Date: Tue Feb 26 16:55:10 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.X.XX-201902261655104800
10-87912646-620738d0987cbbccfdd9736618cf
b27685742281647ef935be743c327664e4d5-N/A
-N/A-20190226142145073795