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. 88226622 BIMBA (Stylized and/or with Design, see http://uspto.report/TM/88226622/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 Valves; control valves; pneumatically controlled valves; hydraulically controlled valves; check valves; actuators for valves, namely, linear, hydraulic and pneumatic actuators; rotary actuators; grippers for pneumatic and hydraulic devices; vacuums; vacuum pumps; pumps; filters; air filters; filters for cleaning cooling air, for machines; Lubricators; switches; positioners; miniature pneumatic components, namely, manifolds; silencers; cylinders; pressure regulators being parts of machines; air compressors; pistons for cylinders; mufflers for pneumatic and hydraulic devices; pneumatic air preparation units and parts thereof for use in pneumatic machinery; tubing and tubing accessories, namely, cutters, channels and markers all for use in machines; pneumatic tubing, namely, tubes used in machines to convey material via compressed air or vacuum; cartridges for machines; hydraulic controls for machines; replacement parts for the aforesaid
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 03/01/2010 and first used in commerce at least as early as 03/01/2010 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Valves; Valves being parts of machines; control valves; Pneumatically controlled valves, namely pneumatic directional and flow control valves for use in automated production machinery; pneumatically controlled valves; Hydraulically controlled valves, namely hydraulic directional and flow control valves for use in automated production machinery; hydraulically controlled valves; Check valves; Actuators for valves, namely, linear, hydraulic and pneumatic actuators; Rotary actuators being pneumatic and hydraulic valve actuators valve actuators; rotary actuators; Pneumatically and hydraulically controlled grippers for pneumatic and hydraulic devices; grippers for pneumatic and hydraulic devices; Vacuum robotics and tools; vacuums; Vacuum cartridges; Venturi vacuum pumps; Vacuum pumps; filters; Pumps; air filters; Filters for machines; Air filters for mechanical purposes; Lubricators; Filters for cleaning cooling air, for machines; switches; Lubricating equipment for use in machines; positioners; Pressure switches for monitoring, controlling and switching pneumatic or hydraulic systems; miniature pneumatic components, namely, manifolds; Positioners in the nature of pneumatic and hydraulic controllers for controlling movement of automated production machinery; silencers; Miniature pneumatic components, namely pneumatic manifold control systems; cylinders; Noise attenuation silencers for machines; Cylinders for machines; Pressure regulators being parts of machines; pistons for cylinders; Air compressors; mufflers for pneumatic and hydraulic devices; Pistons for use with cylinders for machines; pneumatic air preparation units and parts thereof for use in pneumatic machinery; Mufflers for pneumatic and hydraulic devices in the nature of hydraulic and pneumatic mufflers for use in noise suppression of machinery; tubing and tubing accessories, namely, cutters, channels and markers all for use in machines; Air preparation devices, namely pneumatic air preparation units and parts thereof for use in pneumatic machinery for conditioning compressed air; pneumatic tubing, namely, tubes used in machines to convey material via compressed air or vacuum; Pneumatic and hydraulic tubing and tubing accessories, namely tube cutters, tube channels and tube markers all for use in machines having pneumatic and hydraulic systems; Pressure sensors for monitoring pneumatic and hydraulic systems; Pressure and temperature sensors for managing fluid powered systems and machines involved in factory automation, namely for monitoring hydraulic or pneumatic fluid systems involved in factory automation; Pneumatic tubing namely tubes used in machines to convey material via compressed air or vacuum; Cartridges for machines; Hydraulic controls for machines; Replacement parts for the aforesaidClass 007 for Valves being parts of machines; Pneumatically controlled valves, namely pneumatic directional and flow control valves for use in automated production machinery; Hydraulically controlled valves, namely hydraulic directional and flow control valves for use in automated production machinery; Check valves; Actuators for valves, namely, linear, hydraulic and pneumatic actuators; Rotary actuators being pneumatic and hydraulic valve actuators valve actuators; Pneumatically and hydraulically controlled grippers for pneumatic and hydraulic devices; Vacuum robotics and tools; Vacuum cartridges; Venturi vacuum pumps; Vacuum pumps; Pumps; Filters for machines; Air filters for mechanical purposes; Filters for cleaning cooling air, for machines; Lubricating equipment for use in machines; Pressure switches for monitoring, controlling and switching pneumatic or hydraulic systems; Positioners in the nature of pneumatic and hydraulic controllers for controlling movement of automated production machinery; Miniature pneumatic components, namely pneumatic manifold control systems; Noise attenuation silencers for machines; Cylinders for machines; Pressure regulators being parts of machines; Air compressors; Pistons for use with cylinders for machines; Mufflers for pneumatic and hydraulic devices in the nature of hydraulic and pneumatic mufflers for use in noise suppression of machinery; Air preparation devices, namely pneumatic air preparation units and parts thereof for use in pneumatic machinery for conditioning compressed air; Pneumatic and hydraulic tubing and tubing accessories, namely tube cutters, tube channels and tube markers all for use in machines having pneumatic and hydraulic systems; Pressure sensors for monitoring pneumatic and hydraulic systems; Pressure and temperature sensors for managing fluid powered systems and machines involved in factory automation, namely for monitoring hydraulic or pneumatic fluid systems involved in factory automation; Pneumatic tubing namely tubes used in machines to convey material via compressed air or vacuum; Cartridges for machines; Hydraulic controls for machines; Replacement parts for the aforesaid
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 03/01/2010 and first used in commerce at least as early as 03/01/2010 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Valves; solenoid valves; control valves; time delay control valves; control valves for regulating the flow of gases and liquids; safety valves; control valve connection manifolds; control valve mounting manifolds; electric actuators; electric switches; software; software for managing fluid powered systems and machines involved in factory automation; control apparatus and instruments for pneumatic and hydraulic systems; sensors; sensors for managing fluid powered systems and machines involved in factory automation; electronic and digital positioners as part of valves and actuators; Flow controls for fluid handling machines and equipment; electronic controls for motors; Regulators and flow rate and pressure indicators for the production, processing or treatment of compressed air or other compressed gases; flow gauges; electronic controls for motors and machines; replacement parts for the aforesaid
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 03/01/2010 and first used in commerce at least as early as 03/01/2010 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Valves; Electronic valves for controlling gas, liquids or fluids; Solenoid valves; control valves; Control valves for regulating the flow of gases and liquids; time delay control valves; Safety valves for flow shutoff in machines; Control valve connection manifolds; safety valves; Automatic inlet control valve parts, namely mounting manifolds for control systems; Electric actuators; control valve mounting manifolds; Electric switches; Downloadable software for machine control; Downloadable software for managing fluid powered systems and machines involved in factory automation; software; Electronic control apparatus and instruments for controlling pneumatic and hydraulic systems in the nature of pneumatic and hydraulic machines; software for managing fluid powered systems and machines involved in factory automation; Pressure and temperature sensors; control apparatus and instruments for pneumatic and hydraulic systems; Electric valve actuator parts, namely electronic and digital positioners for machines; sensors; Flow controls for fluid handling machines and equipment in the nature of automatic liquid flow control machines; sensors for managing fluid powered systems and machines involved in factory automation; Electronic controls for motors; electronic and digital positioners as part of valves and actuators; Pressure regulators and flow rate and pressure indicators in the nature of pressure gauges, pressure indicators and pressure measuring apparatus for the production, processing or treatment of compressed air or other compressed gasses; Flow controls for fluid handling machines and equipment; Flow gauges in the nature of pressure gauges; Electronic controls for motors and machines; Regulators and flow rate and pressure indicators for the production, processing or treatment of compressed air or other compressed gases; Vacuum gauges; flow gauges; Filters; Air filters; Power switches; Electronically operated cylinders; Replacement parts for the aforesaidClass 009 for Electronic valves for controlling gas, liquids or fluids; Solenoid valves; Control valves for regulating the flow of gases and liquids; Safety valves for flow shutoff in machines; Control valve connection manifolds; Automatic inlet control valve parts, namely mounting manifolds for control systems; Electric actuators; Electric switches; Downloadable software for machine control; Downloadable software for managing fluid powered systems and machines involved in factory automation; Electronic control apparatus and instruments for controlling pneumatic and hydraulic systems in the nature of pneumatic and hydraulic machines; Pressure and temperature sensors; Electric valve actuator parts, namely electronic and digital positioners for machines; Flow controls for fluid handling machines and equipment in the nature of automatic liquid flow control machines; Electronic controls for motors; Pressure regulators and flow rate and pressure indicators in the nature of pressure gauges, pressure indicators and pressure measuring apparatus for the production, processing or treatment of compressed air or other compressed gasses; Flow gauges in the nature of pressure gauges; Electronic controls for motors and machines; Vacuum gauges; Filters; Air filters; Power switches; Electronically operated cylinders; Replacement parts for the aforesaid
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 03/01/2010 and first used in commerce at least as early as 03/01/2010 , and is now in use in such commerce.
ADDITIONAL STATEMENTS
Miscellaneous Statement
The presently submitted class 07 and 09 listings of goods obviate the need for adding any other class or classes, while fully responding to all of the grounds for the refusal to register. For the Class 07 goods, the following links and attached excerpts from applicant's website are provided: http://www.bimba.com/sites/default/files/Documents/Vacuum/End-of-Arm Tooling/CRVT-Catalog_2.pdf http://www.bimba.com/Products-and-Cad/Vacuum/Inch#Venturi-Vacuum-Pumps For the Class 09 goods, the following links and attached excerpts from applicant's website are provided: http://www.bimba.com/Products-and-Cad/Manifolds/Inch#Inline-Manifolds http://www.bimba.com/Products-and-Cad/Valves/Inch#Flow-Control-Valves/

Original PDF file:
mis-38104181142-20190424180747524403_._Attachment_1_from_website_Cl_07.pdf
Converted PDF file(s) ( 4 pages)
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Original PDF file:
mis-38104181142-20190424180747524403_._Attachment_2_from_website_Cl_07.pdf
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Original PDF file:
mis-38104181142-20190424180747524403_._Attachment_3_from_website_Cl_07.pdf
Converted PDF file(s) ( 12 pages)
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Original PDF file:
mis-38104181142-20190424180747524403_._Attachment_from_Website_Cl_09.pdf
Converted PDF file(s) ( 3 pages)
Miscellaneous File1
Miscellaneous File2
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SIGNATURE(S)
Response Signature
Signature: /Raymond M. Mehler/     Date: 04/24/2019
Signatory's Name: Raymond M. Mehler
Signatory's Position: Attorney of Record, Illinois Bar Member

Signatory's Phone Number: 312-236-8500

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: 88226622
Internet Transmission Date: Wed Apr 24 18:16:41 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201904241816418
02368-88226622-6208f75191945c02d644bccd2
c19c51b3eef0d8d55f8bea381fd89974b12a2ff8
0-N/A-N/A-20190424180747524403