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 |
88220895 |
LAW OFFICE ASSIGNED |
LAW OFFICE 116 |
MARK SECTION |
MARK |
http://uspto.report/TM/88220895/mark.png |
LITERAL ELEMENT |
NISP |
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. |
GOODS AND/OR SERVICES SECTION (009)(current) |
INTERNATIONAL CLASS |
009 |
DESCRIPTION |
Glass panels and screens as window component parts for laser installations and industrial equipment use; worked glass, not for
building; optical glass; glass for use in optical lenses; worked sapphire glass, not for building; optical sapphire glass; sapphire glass for use in optical filters and optical lenses |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
2018-144953 |
FOREIGN APPLICATION COUNTRY |
Japan |
FOREIGN FILING DATE |
11/22/2018 |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION
COUNTRY |
Japan |
GOODS AND/OR SERVICES SECTION (009)(proposed) |
INTERNATIONAL CLASS |
009 |
TRACKED TEXT DESCRIPTION |
Glass panels and screens as window component parts for laser installations and industrial equipment
use; Optical glasses; worked glass, not for building; optical lenses made of
glass; optical glass; glass for use in optical lenses; worked sapphire glass, not for
building; optical sapphire glass; sapphire glass for use in optical filters and optical lenses |
FINAL DESCRIPTION |
Optical glasses; optical lenses made of glass |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
2018-144953 |
FOREIGN APPLICATION COUNTRY |
Japan |
FOREIGN FILING DATE |
11/22/2018 |
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) |
FOREIGN REGISTRATION
COUNTRY |
Japan |
GOODS AND/OR SERVICES SECTION (019)(current) |
INTERNATIONAL CLASS |
019 |
DESCRIPTION |
Building glass; window glass for building; window sheets and glass panels; sapphire glass for building; sheets made of glass for
building or construction materials; sheets made of sapphire glass for building or construction materials; non-metallic building materials |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
2018-144953 |
FOREIGN APPLICATION COUNTRY |
Japan |
FOREIGN FILING DATE |
11/22/2018 |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION
COUNTRY |
Japan |
GOODS AND/OR SERVICES SECTION (019)(proposed) |
INTERNATIONAL CLASS |
019 |
TRACKED TEXT DESCRIPTION |
Building glass; window glass for building; window
sheets and glass panels; window sheets being glass panels for building construction purposes; sapphire glass for building;
sheets made of glass for building or construction materials; sheets made of sapphire glass for building or construction materials; non-metallic building materials; non-metallic building materials being building glass; glass panels
and screens used in non-metallic windows for laser installations and industrial equipment use |
FINAL DESCRIPTION |
Building glass; window glass for building; window sheets being glass panels for building construction purposes; sapphire glass for
building; sheets made of glass for building or construction materials; sheets made of sapphire glass for building or construction materials; non-metallic building materials being building glass;
glass panels and screens used in non-metallic windows for laser installations and industrial equipment use |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
2018-144953 |
FOREIGN APPLICATION COUNTRY |
Japan |
FOREIGN FILING DATE |
11/22/2018 |
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) |
FOREIGN REGISTRATION
COUNTRY |
Japan |
GOODS AND/OR SERVICES SECTION (021)(current) |
INTERNATIONAL CLASS |
021 |
DESCRIPTION |
Unworked or semi-worked glass, not for building; unworked or semi-worked glass, except building glass; unworked or semi-worked sapphire
glass, not for building |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
2018-144953 |
FOREIGN APPLICATION COUNTRY |
Japan |
FOREIGN FILING DATE |
11/22/2018 |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION
COUNTRY |
Japan |
GOODS AND/OR SERVICES SECTION (021)(proposed) |
INTERNATIONAL CLASS |
021 |
TRACKED TEXT DESCRIPTION |
Unworked or semi-worked glass, not for building; unworked or semi-worked glass, except
building glass; unworked or semi-worked sapphire glass, not for building; worked glass, not for building; glass for use in optical lenses; worked sapphire glass, not for building; optical sapphire glass;
sapphire glass for use in optical filters and optical lenses |
FINAL DESCRIPTION |
Unworked or semi-worked glass, not for building; unworked or semi-worked glass, except building glass; unworked or semi-worked sapphire
glass, not for building; worked glass, not for building; glass for use in optical lenses; worked sapphire glass, not for building; optical sapphire glass; sapphire glass for use in optical filters
and optical lenses |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
2018-144953 |
FOREIGN APPLICATION COUNTRY |
Japan |
FOREIGN FILING DATE |
11/22/2018 |
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) |
FOREIGN REGISTRATION
COUNTRY |
Japan |
ADDITIONAL STATEMENTS SECTION |
TRANSLATION |
The wording nisp has no meaning in a foreign language. |
SIGNIFICANCE OF MARK |
Nisp 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 |
Applicant notes that the foreign registration remains pending in Japan and requests suspension of the instant application until issuance
thereof. Applicant has indicated that the mark NISP has no meaning or significance in the industry or as a geographic term. It has no foreign language meaning and is not the name of anyone associated
with the Applicant. |
ATTORNEY SECTION (current) |
NAME |
Charles T. J. Weigell |
ATTORNEY BAR MEMBERSHIP NUMBER |
NOT SPECIFIED |
YEAR OF ADMISSION |
NOT SPECIFIED |
U.S. STATE/ COMMONWEALTH/ TERRITORY |
NOT SPECIFIED |
FIRM NAME |
FROSS ZELNICK LEHRMAN & ZISSU, P.C. |
STREET |
4 TIMES SQUARE, 17TH FLOOR |
CITY |
NEW YORK |
STATE |
New York |
POSTAL CODE |
10036 |
COUNTRY |
US |
PHONE |
212-813-8239 |
EMAIL |
weigell-docket@fzlz.com |
AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
DOCKET/REFERENCE NUMBER |
NIKN 1812536 |
ATTORNEY SECTION (proposed) |
NAME |
Charles T. J. Weigell |
ATTORNEY BAR MEMBERSHIP NUMBER |
XXX |
YEAR OF ADMISSION |
XXXX |
U.S. STATE/ COMMONWEALTH/ TERRITORY |
XX |
FIRM NAME |
Fross Zelnick Lehrman & Zissu, P.C. |
STREET |
151 W. 42nd Street, 17th Floor |
CITY |
New York |
STATE |
New York |
POSTAL CODE |
10036 |
COUNTRY |
United States |
PHONE |
212-813-8239 |
EMAIL |
weigell-docket@fzlz.com |
AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
DOCKET/REFERENCE NUMBER |
NIKN 1812536 |
CORRESPONDENCE SECTION (current) |
NAME |
CHARLES T. J. WEIGELL |
FIRM NAME |
FROSS ZELNICK LEHRMAN & ZISSU, P.C. |
STREET |
4 TIMES SQUARE, 17TH FLOOR |
CITY |
NEW YORK |
STATE |
New York |
POSTAL CODE |
10036 |
COUNTRY |
US |
PHONE |
212-813-8239 |
EMAIL |
weigell-docket@fzlz.com |
AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
DOCKET/REFERENCE NUMBER |
NIKN 1812536 |
CORRESPONDENCE SECTION (proposed) |
NAME |
Charles T. J. Weigell |
FIRM NAME |
Fross Zelnick Lehrman & Zissu, P.C. |
STREET |
151 W. 42nd Street, 17th Floor |
CITY |
New York |
STATE |
New York |
POSTAL CODE |
10036 |
COUNTRY |
United States |
PHONE |
212-813-8239 |
EMAIL |
weigell-docket@fzlz.com |
AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
DOCKET/REFERENCE NUMBER |
NIKN 1812536 |
SIGNATURE SECTION |
RESPONSE SIGNATURE |
/ctw/ |
SIGNATORY'S NAME |
Charles T. J. Weigell |
SIGNATORY'S POSITION |
Attorney of record, New York State Bar member |
SIGNATORY'S PHONE NUMBER |
212-813-8239 |
DATE SIGNED |
08/22/2019 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Thu Aug 22 18:09:20 EDT 2019 |
TEAS STAMP |
USPTO/ROA-XXX.XX.XXX.XXX-
20190822180920865261-8822
0895-6102cfc31ea7960539a1
78759da73e5ca63cdf9783918
6933749ab8a655298aa4a-N/A
-N/A-20190822172542079456 |
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.
88220895 NISP(Standard Characters, see http://uspto.report/TM/88220895/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 009 for Glass panels and screens as window component parts for laser installations and industrial equipment use; worked glass, not for building; optical glass; glass for use in
optical lenses; worked sapphire glass, not for building; optical sapphire glass; sapphire glass for use in optical filters and optical lenses
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 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 2018-144953 filed 11/22/2018]. 15 U.S.C.Section 1126(d), as
amended.
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Japan registration number __________ registered __________
with a renewal date of __________ and an expiration date of __________ ], 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.
Proposed:
Tracked Text Description: Glass panels and screens as window component parts for laser installations and industrial equipment use;
Optical glasses;
worked glass, not for building;
optical lenses made of glass;
optical glass;
glass for use in optical lenses;
worked sapphire glass, not for building;
optical sapphire glass;
sapphire glass for use in optical filters and optical lensesClass 009 for Optical glasses; optical lenses made of
glass
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 [ Japan application number 2018-144953 filed 11/22/2018]. 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 __________ registered __________
with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate, before the application may proceed to registration.
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.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 019 for Building glass; window glass for building; window sheets and glass panels; sapphire glass for building; sheets made of glass for building or construction materials;
sheets made of sapphire glass for building or construction materials; non-metallic building 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.
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 2018-144953 filed 11/22/2018]. 15 U.S.C.Section 1126(d), as
amended.
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Japan registration number __________ registered __________
with a renewal date of __________ and an expiration date of __________ ], 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.
Proposed:
Tracked Text Description: Building glass;
window glass for building;
window sheets and glass panels;
window sheets being glass panels for building construction purposes;
sapphire glass for building;
sheets made of
glass for building or construction materials;
sheets made of sapphire glass for building or construction materials;
non-metallic
building materials;
non-metallic building materials being building glass;
glass panels and screens used in non-metallic
windows for laser installations and industrial equipment useClass 019 for Building glass; window glass for building; window sheets being glass panels for building construction purposes;
sapphire glass for building; sheets made of glass for building or construction materials; sheets made of sapphire glass for building or construction materials; non-metallic building materials being
building glass; glass panels and screens used in non-metallic windows for laser installations and industrial equipment use
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 [ Japan application number 2018-144953 filed 11/22/2018]. 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 __________ registered __________
with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate, before the application may proceed to registration.
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.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 021 for Unworked or semi-worked glass, not for building; unworked or semi-worked glass, except building glass; unworked or semi-worked sapphire glass, not for building
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 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 2018-144953 filed 11/22/2018]. 15 U.S.C.Section 1126(d), as
amended.
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Japan registration number __________ registered __________
with a renewal date of __________ and an expiration date of __________ ], 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.
Proposed:
Tracked Text Description: Unworked or semi-worked glass, not for building;
unworked or semi-worked glass, except building glass;
unworked or semi-worked sapphire glass, not for building;
worked glass, not for building;
glass for use in
optical lenses;
worked sapphire glass, not for building;
optical sapphire glass;
sapphire glass for use in optical filters and optical lensesClass 021 for Unworked or semi-worked glass, not for building; unworked or semi-worked glass, except building glass; unworked
or semi-worked sapphire glass, not for building; worked glass, not for building; glass for use in optical lenses; worked sapphire glass, not for building; optical sapphire glass; sapphire glass for
use in optical filters and optical lenses
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 [ Japan application number 2018-144953 filed 11/22/2018]. 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 __________ registered __________
with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate, before the application may proceed to registration.
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.
The applicant's current attorney information: Charles T. J. Weigell. Charles T. J. Weigell of FROSS ZELNICK LEHRMAN & ZISSU, P.C., is located at
4 TIMES SQUARE, 17TH FLOOR
NEW YORK, New York 10036
US
The docket/reference number is NIKN 1812536.
The phone number is 212-813-8239.
The email address is weigell-docket@fzlz.com
The applicants proposed attorney information: Charles T. J. Weigell. Charles T. J. Weigell of Fross Zelnick Lehrman & Zissu, P.C., is a member of the XX bar, admitted to the bar in XXXX, bar
membership no. XXX, is located at
151 W. 42nd Street, 17th Floor
New York, New York 10036
United States
The docket/reference number is NIKN 1812536.
The phone number is 212-813-8239.
The email address is weigell-docket@fzlz.com
Charles T. J. Weigell submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any
U.S. Commonwealth or territory.
The applicant's current correspondence information: CHARLES T. J. WEIGELL. CHARLES T. J. WEIGELL of FROSS ZELNICK LEHRMAN & ZISSU, P.C., is located at
4 TIMES SQUARE, 17TH FLOOR
NEW YORK, New York 10036
US
The docket/reference number is NIKN 1812536.
The phone number is 212-813-8239.
The email address is weigell-docket@fzlz.com
The applicants proposed correspondence information: Charles T. J. Weigell. Charles T. J. Weigell of Fross Zelnick Lehrman & Zissu, P.C., is located at
151 W. 42nd Street, 17th Floor
New York, New York 10036
United States
The docket/reference number is NIKN 1812536.
The phone number is 212-813-8239.
The email address is weigell-docket@fzlz.com
ADDITIONAL STATEMENTS
Translation
The wording nisp has no meaning in a foreign language.
Significance of wording, letter(s), or numeral(s)
Nisp 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
Applicant notes that the foreign registration remains pending in Japan and requests suspension of the instant application until issuance thereof. Applicant has indicated that the mark NISP has no
meaning or significance in the industry or as a geographic term. It has no foreign language meaning and is not the name of anyone associated with the Applicant.
SIGNATURE(S)
Response Signature
Signature: /ctw/ Date: 08/22/2019
Signatory's Name: Charles T. J. Weigell
Signatory's Position: Attorney of record, New York State Bar member
Signatory's Phone Number: 212-813-8239
The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and
any U.S. Commonwealth or territory); 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.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed
revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter;
or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.
Mailing Address: CHARLES T. J. WEIGELL
FROSS ZELNICK LEHRMAN & ZISSU, P.C.
4 TIMES SQUARE, 17TH FLOOR
NEW YORK, New York 10036
Mailing Address: Charles T. J. Weigell
Fross Zelnick Lehrman & Zissu, P.C.
151 W. 42nd Street, 17th Floor
New York, New York 10036
Serial Number: 88220895
Internet Transmission Date: Thu Aug 22 18:09:20 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-201908221809208
65261-88220895-6102cfc31ea7960539a178759
da73e5ca63cdf97839186933749ab8a655298aa4
a-N/A-N/A-20190822172542079456