Response to Office Action

KUBOTA

Kubota Corporation

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 88246849
LAW OFFICE ASSIGNED LAW OFFICE 115
MARK SECTION
MARK FILE NAME http://uspto.report/TM/88246849/mark.png
LITERAL ELEMENT KUBOTA
STANDARD CHARACTERS NO
USPTO-GENERATED IMAGE NO
COLOR(S) CLAIMED
(If applicable)
Color is not claimed as a feature of the mark.
DESCRIPTION OF THE MARK
(and Color Location, if applicable)
The mark consists of the word "KUBOTA" in a stylized font.
ARGUMENT(S)

Remarks

 

The following remarks are responsive to the March 15, 2019 Office Action. The Examining Attorney’s comments have been reviewed and carefully considered. In view of the following remarks, Applicant respectfully requests passage of the applied-for mark to publication.

 

Applicant acknowledges that the Examining Attorney has searched the Office records and has found no similar registered or pending mark that would bar registration of the applied-for mark.

 

Registration of the applied-for mark has been refused, however, since the identifications of goods and services need to be clarified. In view of this refusal, Applicant has amended the description of goods in accordance with the Examining Attorney’s suggestions, as follows:

 

Class 9: Telecommunications apparatus, namely, telephone sets, mobile telephones, television receivers, television transmitters, radio receivers, radio transmitters, portable radio communication machines and apparatus, vehicular radio communication machines and apparatus, navigation apparatus for vehicles in the nature of on-board computers, radio beacon machines and apparatus, radio direction finders, radar machines and apparatus, antennas, and sensor data transmitters for use with remote monitoring systems; electrical remote monitoring apparatus for remotely monitoring flow, energy usage, electric current and electrical signals; computer programs, recorded, for testing, analysis and diagnosing of machines and engines, acquisition of position information, management of farm field, operation and maintenance of facilities composed of machines, engines, electric motors, plumbing, vessels and electric cables, and design and construction management for the planning and construction of such facilities; downloadable and recorded computer  programs for monitoring flow, energy usage, electric current and electrical signals; downloadable computer programs for testing, analysis and diagnosing of machines and engines, acquisition of position information, management of farm field, operation and maintenance of facilities composed of machines, engines, electric motors, plumbing, vessels and electric cables, and design and construction management for the planning and construction of such facilities; computers for telecommunications; mobile information terminals, namely, personal digital assistants; Internet servers; downloadable and recorded computer software for network administrations; computers for remote access to computer network; electrical apparatus for remote monitoring of signals; global positioning system (GPS) apparatus; smartphones; measuring apparatus for measuring water temperature, air/fuel ratio, boost, vacuum, exhaust gas temperature, temperature, humidity, atmosphere, soil component, and position and altitude by geomagnetism (non-GPS); water level indicators; water quality meters, namely, electronic-based instruments for measuring water quality; electronic water quality analyzers; water meters; pressure measuring apparatus; rain gauges; remote control apparatus for machines driven by power sources such as engines and electric motors, processing apparatus using electricity and light and facilities composed of such machines and apparatus; automated environmental notification alarm systems comprised of sensors and signal transmitters to a supervisor; alarms for the detection of facility break-ins, facility hazardous conditions, or facility shutdowns; GPS-aided operation monitoring apparatus for agricultural and construction machinery; downloadable and recorded computer programs for operating a GPS-aided operation monitoring apparatus for agricultural and construction machinery; electromagnetic solenoids in the nature of valves; electric valves; flowmeters; wireless communication devices for voice, data or image transmission; telecommunications machines and implements, namely, telephone sets, mobile telephones, television receivers, television transmitters, radio receivers, radio transmitters, portable radio communication machines and apparatus, vehicle radio communication machines and apparatus, navigation apparatus for vehicles in the nature of on-board computers, radio beacon machines and apparatus, radio direction finders, radar machines and apparatus, antennas, and sensor data transmitters and their structural parts; telecommunications transmitters; wireless transceivers; wireless transmitters for remote control; wireless receivers for remote control; monitoring apparatus, namely, monitoring control panel with screen; scales; automatic weighing machines; dosimeters; electronic circuits, not including those recorded with computer programs; electronic machines and implements, namely, optical character readers, electronic pocket translators, computers, computer memory devices, computer peripheral devices, interfaces for computers, computer keyboards, juke boxes for computers, joysticks for use with computers, other than video games, disk drives for computers, magnetic tape units for computers, computer printers, thin client computers, scanners, tablet computers, data processing apparatus, hand-held electronic dictionaries, electronic interactive whiteboards, electronic book readers, electronic agendas, laptop computers, bar code readers, printed circuit boards, electronic pens, pocket calculators, microprocessors, mouse pads, and their structural parts; downloadable image files containing images transmitted from cameras and communications equipment set up on machines and in facilities and farm field and stored in servers; pre-recorded video discs and video tapes featuring information relating to the repair and maintenance of machines, information relating to labor management, information relating to yield amount, information relating to work instructions, information relating to work progress, information relating to work project, information necessary for operation, repair and maintenance of facilities and machines, information relating to labor management for the operation and maintenance of facilities and machines, information relating to income and expenditure for the operation and maintenance of facilities and machines, operator guidance information, information relating to the progress of operation, repair and maintenance of facilities and machines, information relating to plans for the operation and maintenance of facilities and machines ”

 

                (New) Class 35: “Providing the location and operation status information of the works done by agricultural machines and implements and construction machines and apparatus, namely, farm field management, progress of farm works, planting plan eating quality and yield; providing location and operation status information of earthmoving machines and apparatus, including shield machines and piping connectors used for the execution of civil engineering plans”

 

                Class 37: “Repair or maintenance of telecommunication machines and implements; installation and maintenance of irrigation systems; repair or maintenance of agricultural machines and implements; remote monitoring of agricultural irrigation units to ensure proper functioning; pump repair or maintenance; plumbing contractor services, namely, supervision of plumbing services; plumbing contractor services, namely, supervision of plumbing services for water supply, sewage and drainage, and maintenance of tools used for the above-mentioned services; plumbing contractor services, namely, supervision of plumbing services for water supply, sewage and drainage, and maintenance of tools used for the above-mentioned services; repair or maintenance of remote monitoring apparatus; repair or maintenance of agricultural irrigation units; operation and maintenance of water treatment installations; repair or maintenance of cultivating machines and implements and their parts and fittings; repair and maintenance of water pollution control apparatus; repair or maintenance of wastewater treatment apparatus; repair and maintenance of waste crushing apparatus; repair or maintenance of telecommunication apparatus; repair or maintenance of measuring instruments; repair and maintenance of water purifying apparatus; construction supervision; construction of environmental sanitation facilities and environmental protection facilities and advisory services relating thereto; repair or maintenance of engines and internal combustion engines; repair or maintenance of tractors and automobiles; repair or maintenance of construction machines and implements; repair or maintenance of loading-unloading machines and implements; repair or maintenance of motive power machines and implements, not for land vehicles, and their parts; repair or maintenance of non-electric prime movers for land vehicles, not including their parts; repair or maintenance of industrial diesel engines; repair or maintenance of air conditioning machines and apparatus; repair or maintenance of power generators; repair or maintenance of waste processing machines and apparatus; repair or maintenance of environmental sanitation plants; repair or maintenance of rice milling machines; repair or maintenance of lawnmowers; pipeline construction; providing maintenance and repair information relating to the location and operation status for maintenance and repair of agricultural machines and implements and construction machines and apparatus; providing maintenance and repair information relating to the maintenance management of agricultural machines and implements and construction machines and apparatus; providing maintenance and repair information relating to the location and operation status for maintenance and repair of earthmoving machines and apparatus, including shield machines and piping connectors for use in the maintenance and repair; providing maintenance and repair information relating to the maintenance management of earthmoving machines and apparatus; repair or maintenance of harvesting machines and implements, and their parts and fittings; repair or maintenance of parts and fittings of lawnmowers; repair or maintenance of parts and fittings of earthmoving machines and apparatus; repair or maintenance of electronic machines and implements and their parts and accessories, not including software”

 

                (New) Class 40: “technical assistance or consultancy relating to water purification mainly intended to optimize operation of water treatment installations”

 

                Class 42: “Monitoring of computer security systems by remote access for protecting data and information from unauthorized access; remote monitoring technological functions of computers and computer programs by means of telecommunications network; programming for others of operating software for accessing and using a cloud computing network; remote monitoring of computer systems to ensure proper functioning of water treatment facilities and for recordation of, notification regarding, measurement of and reporting on facility faults report for water suppliers via cable or wireless telecommunications networks and computer communications networks; monitoring of water quality; testing, inspection, research and technological development relating to water treatment installations; engineering services in the nature of deterioration investigation and diagnosis of water treatment installations; technical assistance or consultancy relating to computer systems technology for optimization of operation of water treatment installations; engineering services in the nature of deterioration investigation and diagnosis of water treatment apparatus; preparation of technical engineering reports relating to water treatment apparatus; design of water treatment installations and other industrial buildings; consultancy in the field of design of water treatment installations and other industrial buildings; creating or maintaining web sites for others; design services of web sites; design of facilities using computer graphics; design of plumbing using computer graphics; computer system design services; computer-aided design services; industrial design services; soil diagnosis, namely, detection of nitrogen, phosphoric acid, potassium, water and other nourishments required for the plant growth; testing, inspection and research services in the fields of soil contamination, meteorology and agriculture; remote monitoring of water treatment apparatus via cloud computing network to ensure proper functioning; recordation, notification, measurement and research in the field of farms; designing of machines, apparatus, instruments and their parts or systems composed of such machines, apparatus and instruments for operation and maintenance of facilities composed of machines, engines, electric motors, plumbing, vessels and electric cables, and design and construction management for the planning and construction of such facilities; computer programming; technological advice relating to computers, automobiles and industrial machines; rental of computers and electronic machines, not including word processors and electrostatic copying machines; providing temporary use of online non-downloadable computer programs on data networks for testing, analysis and diagnosing of machines and engines, acquisition of position information, management of farm field, operation and maintenance of facilities composed of machines, engines, electric motors, plumbing, vessels and electric cables, and design and construction management for the planning and construction of such facilities; remote monitoring of operation status of air-conditioning installations, heating installations and plumbing systems of buildings, and of river flood and agricultural water by telecommunications to ensure proper functioning; remote monitoring of operation status of building equipment to ensure proper functioning; remote monitoring of wastewater treatment apparatus to ensure proper functioning; remote monitoring of operation status of agricultural irrigation units to ensure proper functioning; measuring of quality, temperature, level and flow of feed water supplied into a farm field via remote monitoring of machines and instruments; remote monitoring of water treatment apparatus for agricultural water to ensure proper functioning; remote monitoring of weighing apparatus and instruments to ensure proper functioning; remote monitoring of operation status of agricultural machines and implements and construction machines and apparatus to ensure proper functioning; remote monitoring of water treatment installations to ensure proper functioning”

 

            (New) Class 44:farming consultation services, namely, remote monitoring of growing conditions using a sensor; agronomic consulting services in the field of crop management via cloud computing network; farming consultation by means of remote monitoring of farm products via cloud computing network; farming consultation by means of remote monitoring of farm fields via cloud computing network; farming consultation, including the recordation of, notification regarding and measurement and research of farm field information, including soil information, farm crops growing information, and information about crop yield, fertilizer level, seeding amount, planting amount and agricultural chemicals application rate via cable or wireless telecommunications networks and computer communications networks”

 

Therefore, in view of these amendments to the descriptions of goods and services, Applicant respectfully submits that the descriptions of goods and services are now sufficiently definite. Withdrawal of this refusal is respectfully requested.

 

The Office Action also asserts that copies of the foreign registrations that are relied upon under Section 44(e) must be submitted, along with a certified English-language translation for each foreign registration. Applicant has submitted these documents with this response. To the extent the Examining Attorney believes these foreign registrations adequately cover the goods and services in this application, Applicant respectfully requests that the Examining Attorney drop the Section 1(b) filing basis for the pending classes in this application. Otherwise, Applicant wishes to maintain the Section 1(b) filing basis in this application to prove use of the applied-for mark in connection with the goods the Examining Attorney believes are not covered by the foreign registrations.

 

The expiration dates for the priority foreign registrations are as follows:

 

Reg. No.2387104 – March 31, 2022

Reg. No.2394091 – March 31, 2022

Reg. No.2464700 – October 30, 2022

Reg. No.3069805 – August 31, 2025

Reg. No.3238991 – December 25, 2026

Reg. No.4127859, - March 27, 2028 and

Reg. No.5982588 – September 22, 2047.

 

Conclusion

 

In view of the foregoing amendments and remarks, Applicant respectfully requests withdrawal of the refusals and passage of the applied-for mark to publication.

 

GOODS AND/OR SERVICES SECTION (009)(current)
INTERNATIONAL CLASS 009
DESCRIPTION
Telecommunications apparatus for use with remote monitoring systems; electrical remote monitoring apparatus; computer programs, recorded; computer programs for monitoring; computer programs (downloadable software); computers for telecommunications; mobile information terminals; Internet servers; computer software for network administrations; computers for remote access to computer network; apparatus for electrical remote monitoring of signals; global positioning system (GPS) apparatus; smartphones; measuring apparatus; water level indicators; water quality meters; water quality analyzers; water meters; pressure measuring apparatus; rain gauges; remote control apparatus; automated notification alarm systems for detecting signals from various kinds of sensors and transmitting to a supervisor; alarms; GPS-aided operation monitoring apparatus for agricultural and construction machinery; computer programs for GPS-aided operation monitoring apparatus for agricultural and construction machinery; electromagnetic valves; flowmeters; wireless communication machines and implements; telecommunications machines and implements and their parts and accessories; telecommunications transmitters; wireless transceivers; wireless transmitters for remote control; wireless receivers for remote control; monitoring apparatus with screen; scales; automatic weighing machines; dosimeters; electronic circuits, not including those recorded with computer programs; electronic machines and implements and their parts and accessories; downloadable image files; recorded video discs and video tapes
FILING BASIS Section 1(b)
FILING BASIS Section 44(e)
        FOREIGN REGISTRATION NUMBER 2387104
       FOREIGN REGISTRATION
       COUNTRY
Japan
       FOREIGN REGISTRATION
       DATE
03/31/1992
       FOREIGN EXPIRATION DATE 03/31/2022
GOODS AND/OR SERVICES SECTION (009)(proposed)
INTERNATIONAL CLASS 009
TRACKED TEXT DESCRIPTION
Telecommunications apparatus for use with remote monitoring systems; Telecommunications apparatus, namely, telephone sets, mobile telephones, television receivers, television transmitters, radio receivers, radio transmitters, portable radio communication machines and apparatus, vehicular radio communication machines and apparatus, navigation apparatus for vehicles in the nature of on-board computers, radio beacon machines and apparatus, radio direction finders, radar machines and apparatus, antennas, and sensor data transmitters for use with remote monitoring systems; electrical remote monitoring apparatus; electrical remote monitoring apparatus for remotely monitoring flow, energy usage, electric current and electrical signals; computer programs, recorded; computer programs, recorded, for testing, analysis and diagnosing of machines and engines, acquisition of position information, management of farm field, operation and maintenance of facilities composed of machines, engines, electric motors, plumbing, vessels and electric cables, and design and construction management for the planning and construction of such facilities; computer programs for monitoring; downloadable and recorded computer programs for monitoring flow, energy usage, electric current and electrical signals; computer programs (downloadable software); downloadable computer programs for testing, analysis and diagnosing of machines and engines, acquisition of position information, management of farm field, operation and maintenance of facilities composed of machines, engines, electric motors, plumbing, vessels and electric cables, and design and construction management for the planning and construction of such facilities; computers for telecommunications; mobile information terminals; mobile information terminals, namely, personal digital assistants; Internet servers; computer software for network administrations; downloadable and recorded computer software for network administrations; computers for remote access to computer network; apparatus for electrical remote monitoring of signals; electrical apparatus for remote monitoring of signals; global positioning system (GPS) apparatus; smartphones; measuring apparatus; measuring apparatus for measuring water temperature, air/fuel ratio, boost, vacuum, exhaust gas temperature, temperature, humidity, atmosphere, soil component, and position and altitude by geomagnetism (non-GPS); water level indicators; water quality meters; water quality meters, namely, electronic-based instruments for measuring water quality; water quality analyzers; electronic water quality analyzers; water meters; pressure measuring apparatus; rain gauges; remote control apparatus; remote control apparatus for machines driven by power sources such as engines and electric motors, processing apparatus using electricity and light and facilities composed of such machines and apparatus; automated notification alarm systems for detecting signals from various kinds of sensors and transmitting to a supervisor; automated environmental notification alarm systems comprised of sensors and signal transmitters to a supervisor; alarms; alarms for the detection of facility break-ins, facility hazardous conditions, or facility shutdowns; GPS-aided operation monitoring apparatus for agricultural and construction machinery; computer programs for GPS-aided operation monitoring apparatus for agricultural and construction machinery; downloadable and recorded computer programs for operating a GPS-aided operation monitoring apparatus for agricultural and construction machinery; electromagnetic valves; electromagnetic solenoids in the nature of valves; electric valves; wireless communication machines and implements; flowmeters; telecommunications machines and implements and their parts and accessories; wireless communication devices for voice, data or image transmission; telecommunications machines and implements, namely, telephone sets, mobile telephones, television receivers, television transmitters, radio receivers, radio transmitters, portable radio communication machines and apparatus, vehicle radio communication machines and apparatus, navigation apparatus for vehicles in the nature of on-board computers, radio beacon machines and apparatus, radio direction finders, radar machines and apparatus, antennas, and sensor data transmitters and their structural parts; telecommunications transmitters; wireless transceivers; wireless transmitters for remote control; monitoring apparatus with screen; wireless receivers for remote control; monitoring apparatus, namely, monitoring control panel with screen; scales; automatic weighing machines; dosimeters; electronic machines and implements and their parts and accessories; electronic circuits, not including those recorded with computer programs; downloadable image files; electronic machines and implements, namely, optical character readers, electronic pocket translators, computers, computer memory devices, computer peripheral devices, interfaces for computers, computer keyboards, juke boxes for computers, joysticks for use with computers, other than video games, disk drives for computers, magnetic tape units for computers, computer printers, thin client computers, scanners, tablet computers, data processing apparatus, hand-held electronic dictionaries, electronic interactive whiteboards, electronic book readers, electronic agendas, laptop computers, bar code readers, printed circuit boards, electronic pens, pocket calculators, microprocessors, mouse pads, and their structural parts; recorded video discs and video tapes; downloadable image files containing images transmitted from cameras and communications equipment set up on machines and in facilities and farm field and stored in servers; pre-recorded video discs and video tapes featuring information relating to the repair and maintenance of machines, information relating to labor management, information relating to yield amount, information relating to work instructions, information relating to work progress, information relating to work project, information necessary for operation, repair and maintenance of facilities and machines, information relating to labor management for the operation and maintenance of facilities and machines, information relating to income and expenditure for the operation and maintenance of facilities and machines, operator guidance information, information relating to the progress of operation, repair and maintenance of facilities and machines, information relating to plans for the operation and maintenance of facilities and machines
FINAL DESCRIPTION
Telecommunications apparatus, namely, telephone sets, mobile telephones, television receivers, television transmitters, radio receivers, radio transmitters, portable radio communication machines and apparatus, vehicular radio communication machines and apparatus, navigation apparatus for vehicles in the nature of on-board computers, radio beacon machines and apparatus, radio direction finders, radar machines and apparatus, antennas, and sensor data transmitters for use with remote monitoring systems; electrical remote monitoring apparatus for remotely monitoring flow, energy usage, electric current and electrical signals; computer programs, recorded, for testing, analysis and diagnosing of machines and engines, acquisition of position information, management of farm field, operation and maintenance of facilities composed of machines, engines, electric motors, plumbing, vessels and electric cables, and design and construction management for the planning and construction of such facilities; downloadable and recorded computer programs for monitoring flow, energy usage, electric current and electrical signals; downloadable computer programs for testing, analysis and diagnosing of machines and engines, acquisition of position information, management of farm field, operation and maintenance of facilities composed of machines, engines, electric motors, plumbing, vessels and electric cables, and design and construction management for the planning and construction of such facilities; computers for telecommunications; mobile information terminals, namely, personal digital assistants; Internet servers; downloadable and recorded computer software for network administrations; computers for remote access to computer network; electrical apparatus for remote monitoring of signals; global positioning system (GPS) apparatus; smartphones; measuring apparatus for measuring water temperature, air/fuel ratio, boost, vacuum, exhaust gas temperature, temperature, humidity, atmosphere, soil component, and position and altitude by geomagnetism (non-GPS); water level indicators; water quality meters, namely, electronic-based instruments for measuring water quality; electronic water quality analyzers; water meters; pressure measuring apparatus; rain gauges; remote control apparatus for machines driven by power sources such as engines and electric motors, processing apparatus using electricity and light and facilities composed of such machines and apparatus; automated environmental notification alarm systems comprised of sensors and signal transmitters to a supervisor; alarms for the detection of facility break-ins, facility hazardous conditions, or facility shutdowns; GPS-aided operation monitoring apparatus for agricultural and construction machinery; downloadable and recorded computer programs for operating a GPS-aided operation monitoring apparatus for agricultural and construction machinery; electromagnetic solenoids in the nature of valves; electric valves; flowmeters; wireless communication devices for voice, data or image transmission; telecommunications machines and implements, namely, telephone sets, mobile telephones, television receivers, television transmitters, radio receivers, radio transmitters, portable radio communication machines and apparatus, vehicle radio communication machines and apparatus, navigation apparatus for vehicles in the nature of on-board computers, radio beacon machines and apparatus, radio direction finders, radar machines and apparatus, antennas, and sensor data transmitters and their structural parts; telecommunications transmitters; wireless transceivers; wireless transmitters for remote control; wireless receivers for remote control; monitoring apparatus, namely, monitoring control panel with screen; scales; automatic weighing machines; dosimeters; electronic circuits, not including those recorded with computer programs; electronic machines and implements, namely, optical character readers, electronic pocket translators, computers, computer memory devices, computer peripheral devices, interfaces for computers, computer keyboards, juke boxes for computers, joysticks for use with computers, other than video games, disk drives for computers, magnetic tape units for computers, computer printers, thin client computers, scanners, tablet computers, data processing apparatus, hand-held electronic dictionaries, electronic interactive whiteboards, electronic book readers, electronic agendas, laptop computers, bar code readers, printed circuit boards, electronic pens, pocket calculators, microprocessors, mouse pads, and their structural parts; downloadable image files containing images transmitted from cameras and communications equipment set up on machines and in facilities and farm field and stored in servers; pre-recorded video discs and video tapes featuring information relating to the repair and maintenance of machines, information relating to labor management, information relating to yield amount, information relating to work instructions, information relating to work progress, information relating to work project, information necessary for operation, repair and maintenance of facilities and machines, information relating to labor management for the operation and maintenance of facilities and machines, information relating to income and expenditure for the operation and maintenance of facilities and machines, operator guidance information, information relating to the progress of operation, repair and maintenance of facilities and machines, information relating to plans for the operation and maintenance of facilities and machines
FILING BASIS Section 1(b)
FILING BASIS Section 44(e)
       FOREIGN REGISTRATION NUMBER 2387104
       FOREIGN REGISTRATION
       COUNTRY
Japan
       FOREIGN REGISTRATION
       DATE
03/31/1992
       FOREIGN EXPIRATION DATE 03/31/2022
       FOREIGN REGISTRATION FILE NAME(S)
       ORIGINAL PDF FILE FRU0-38107150106-123152274_._2387104.pdf
       CONVERTED PDF FILE(S)
       (2 pages)
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       ORIGINAL PDF FILE FRU0-38107150106-123152274_._2387104_translation.pdf
       CONVERTED PDF FILE(S)
       (3 pages)
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        \\TICRS\EXPORT17\IMAGEOUT17\882\468\88246849\xml7\ROA0005.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\882\468\88246849\xml7\ROA0006.JPG
GOODS AND/OR SERVICES SECTION (037)(current)
INTERNATIONAL CLASS 037
DESCRIPTION
Remote monitoring of operation status of air-conditioning installations, heating installations, plumbing systems, etc. of buildings by telecommunications; remote monitoring of operation status of building equipment; repair or maintenance of telecommunication machines and implements; installation and maintenance of irrigation systems; repair or maintenance of agricultural machines and implements; remote monitoring of agricultural irrigation units; remote monitoring of wastewater treatment apparatus; pump repair or maintenance; supervision of the whole plumbing, supervision of plumbing for water supply, sewage and drainage; repair or maintenance of remote monitoring apparatus; repair or maintenance of agricultural irrigation units; operation and maintenance of water treatment installations; remote monitoring of operation status of agricultural irrigation units; remote monitoring using a sensor for growing conditions of farm products; repair or maintenance of cultivating machines and implements and their parts and fittings; remote monitoring of machines and instruments for measuring quality, temperature, level and flow of feed water supplied into a farm field; remote monitoring of water treatment apparatus for agricultural water; repair and maintenance of water pollution control apparatus; repair or maintenance of wastewater treatment apparatus; remote monitoring of wastewater treatment apparatus; repair and maintenance of waste crushing apparatus; repair or maintenance of telecommunication apparatus; repair or maintenance of measuring instruments; remote monitoring of weighing apparatus and instruments; repair and maintenance of water purifying apparatus; construction supervision; construction of environmental sanitation facilities or environmental protection facilities and advisory services relating thereto; repair or maintenance of engines and internal combustion engines; repair or maintenance of tractors and automobiles; repair or maintenance of construction machines and implements; repair or maintenance of loading-unloading machines and implements; repair or maintenance of motive power machines and implements, not for land vehicles, and their parts; repair or maintenance of non-electric prime movers for land vehicles, not including their parts; repair or maintenance of industrial diesel engines; repair or maintenance of air conditioning machines and apparatus; repair or maintenance of power generators; repair or maintenance of waste processing machines and apparatus; repair or maintenance of environmental sanitation plants; repair or maintenance of rice milling machines; repair or maintenance of lawnmowers; pipeline construction; providing information relating to the location and operation status for works by agricultural machines and implements and construction machines and apparatus; providing information relating to the location and operation status for maintenance and repair of agricultural machines and implements and construction machines and apparatus; providing information relating to the maintenance management of agricultural machines and implements and construction machines and apparatus; providing information relating to the location and operation status for works by earthmoving machines and apparatus; providing information relating to the location and operation status for maintenance and repair of earthmoving machines and apparatus; providing information relating to the maintenance management of earthmoving machines and apparatus; remote monitoring of operation status of agricultural machines and implements and construction machines and apparatus; repair or maintenance of harvesting machines and implements, their parts and fittings; repair or maintenance of parts and fittings of lawnmowers; repair or maintenance of parts and fittings of earthmoving machines and apparatus; remote monitoring of water treatment installations; repair or maintenance of electronic machines and implements and their parts and accessories
FILING BASIS Section 1(b)
FILING BASIS Section 44(e)
        FOREIGN REGISTRATION NUMBER 2387104
       FOREIGN REGISTRATION
       COUNTRY
Japan
       FOREIGN REGISTRATION
       DATE
03/31/1992
       FOREIGN EXPIRATION DATE 03/31/2022
GOODS AND/OR SERVICES SECTION (037)(proposed)
INTERNATIONAL CLASS 037
TRACKED TEXT DESCRIPTION
Remote monitoring of operation status of air-conditioning installations, heating installations, plumbing systems, etc. of buildings by telecommunications; Repair or maintenance of telecommunication machines and implements; remote monitoring of operation status of building equipment; installation and maintenance of irrigation systems; repair or maintenance of agricultural machines and implements; remote monitoring of agricultural irrigation units to ensure proper functioning; pump repair or maintenance; remote monitoring of agricultural irrigation units; plumbing contractor services, namely, supervision of plumbing services; remote monitoring of wastewater treatment apparatus; plumbing contractor services, namely, supervision of plumbing services for water supply, sewage and drainage, and maintenance of tools used for the above-mentioned services; plumbing contractor services, namely, supervision of plumbing services for water supply, sewage and drainage, and maintenance of tools used for the above-mentioned services; supervision of the whole plumbing, supervision of plumbing for water supply, sewage and drainage; repair or maintenance of remote monitoring apparatus; repair or maintenance of agricultural irrigation units; operation and maintenance of water treatment installations; repair or maintenance of cultivating machines and implements and their parts and fittings; remote monitoring of operation status of agricultural irrigation units; repair and maintenance of water pollution control apparatus; remote monitoring using a sensor for growing conditions of farm products; repair or maintenance of wastewater treatment apparatus; repair and maintenance of waste crushing apparatus; remote monitoring of machines and instruments for measuring quality, temperature, level and flow of feed water supplied into a farm field; repair or maintenance of telecommunication apparatus; remote monitoring of water treatment apparatus for agricultural water; repair or maintenance of measuring instruments; repair and maintenance of water purifying apparatus; construction supervision; remote monitoring of wastewater treatment apparatus; construction of environmental sanitation facilities and environmental protection facilities and advisory services relating thereto; repair or maintenance of engines and internal combustion engines; repair or maintenance of tractors and automobiles; repair or maintenance of construction machines and implements; remote monitoring of weighing apparatus and instruments; repair or maintenance of loading-unloading machines and implements; repair or maintenance of motive power machines and implements, not for land vehicles, and their parts; repair or maintenance of non-electric prime movers for land vehicles, not including their parts; construction of environmental sanitation facilities or environmental protection facilities and advisory services relating thereto; repair or maintenance of industrial diesel engines; repair or maintenance of air conditioning machines and apparatus; repair or maintenance of power generators; repair or maintenance of waste processing machines and apparatus; repair or maintenance of environmental sanitation plants; repair or maintenance of rice milling machines; repair or maintenance of lawnmowers; pipeline construction; providing maintenance and repair information relating to the location and operation status for maintenance and repair of agricultural machines and implements and construction machines and apparatus; providing maintenance and repair information relating to the maintenance management of agricultural machines and implements and construction machines and apparatus; providing maintenance and repair information relating to the location and operation status for maintenance and repair of earthmoving machines and apparatus, including shield machines and piping connectors for use in the maintenance and repair; providing maintenance and repair information relating to the maintenance management of earthmoving machines and apparatus; repair or maintenance of harvesting machines and implements, and their parts and fittings; repair or maintenance of parts and fittings of lawnmowers; repair or maintenance of parts and fittings of earthmoving machines and apparatus; providing information relating to the location and operation status for works by agricultural machines and implements and construction machines and apparatus; repair or maintenance of electronic machines and implements and their parts and accessories, not including software; providing information relating to the location and operation status for maintenance and repair of agricultural machines and implements and construction machines and apparatus; providing information relating to the maintenance management of agricultural machines and implements and construction machines and apparatus; providing information relating to the location and operation status for works by earthmoving machines and apparatus; providing information relating to the location and operation status for maintenance and repair of earthmoving machines and apparatus; providing information relating to the maintenance management of earthmoving machines and apparatus; remote monitoring of operation status of agricultural machines and implements and construction machines and apparatus; repair or maintenance of harvesting machines and implements, their parts and fittings; remote monitoring of water treatment installations; repair or maintenance of electronic machines and implements and their parts and accessories
FINAL DESCRIPTION
Repair or maintenance of telecommunication machines and implements; installation and maintenance of irrigation systems; repair or maintenance of agricultural machines and implements; remote monitoring of agricultural irrigation units to ensure proper functioning; pump repair or maintenance; plumbing contractor services, namely, supervision of plumbing services; plumbing contractor services, namely, supervision of plumbing services for water supply, sewage and drainage, and maintenance of tools used for the above-mentioned services; plumbing contractor services, namely, supervision of plumbing services for water supply, sewage and drainage, and maintenance of tools used for the above-mentioned services; repair or maintenance of remote monitoring apparatus; repair or maintenance of agricultural irrigation units; operation and maintenance of water treatment installations; repair or maintenance of cultivating machines and implements and their parts and fittings; repair and maintenance of water pollution control apparatus; repair or maintenance of wastewater treatment apparatus; repair and maintenance of waste crushing apparatus; repair or maintenance of telecommunication apparatus; repair or maintenance of measuring instruments; repair and maintenance of water purifying apparatus; construction supervision; construction of environmental sanitation facilities and environmental protection facilities and advisory services relating thereto; repair or maintenance of engines and internal combustion engines; repair or maintenance of tractors and automobiles; repair or maintenance of construction machines and implements; repair or maintenance of loading-unloading machines and implements; repair or maintenance of motive power machines and implements, not for land vehicles, and their parts; repair or maintenance of non-electric prime movers for land vehicles, not including their parts; repair or maintenance of industrial diesel engines; repair or maintenance of air conditioning machines and apparatus; repair or maintenance of power generators; repair or maintenance of waste processing machines and apparatus; repair or maintenance of environmental sanitation plants; repair or maintenance of rice milling machines; repair or maintenance of lawnmowers; pipeline construction; providing maintenance and repair information relating to the location and operation status for maintenance and repair of agricultural machines and implements and construction machines and apparatus; providing maintenance and repair information relating to the maintenance management of agricultural machines and implements and construction machines and apparatus; providing maintenance and repair information relating to the location and operation status for maintenance and repair of earthmoving machines and apparatus, including shield machines and piping connectors for use in the maintenance and repair; providing maintenance and repair information relating to the maintenance management of earthmoving machines and apparatus; repair or maintenance of harvesting machines and implements, and their parts and fittings; repair or maintenance of parts and fittings of lawnmowers; repair or maintenance of parts and fittings of earthmoving machines and apparatus; repair or maintenance of electronic machines and implements and their parts and accessories, not including software
FILING BASIS Section 1(b)
FILING BASIS Section 44(e)
       FOREIGN REGISTRATION NUMBER 3069805
       FOREIGN REGISTRATION
       COUNTRY
Japan
       FOREIGN REGISTRATION
       DATE
03/31/1995
       FOREIGN EXPIRATION DATE 03/31/2025
       FOREIGN REGISTRATION FILE NAME(S)
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GOODS AND/OR SERVICES SECTION (042)(current)
INTERNATIONAL CLASS 042
DESCRIPTION
Monitoring of computer security systems by remote access; remote monitoring of computers and computer programs by means of telecommunications network; programming of operating software for accessing and using a cloud computing network; remote monitoring of computer systems for recordation, notification, measurement and facility fault report for water suppliers via cable or wireless telecommunications networks and computer communications networks; monitoring of water quality; testing, inspection, research and technological development relating to water treatment installations; deterioration investigation and diagnosis of water treatment installations; technical guidance or consultancy relating to computer systems for optimization of operation of water treatment installations; technical guidance or consultancy relating to water purification mainly intended to optimize operation of water treatment installations; deterioration investigation and diagnosis of water treatment apparatus; preparation of technical reports relating to water treatment apparatus; remote monitoring of computer systems via cable or wireless telecommunications networks and computer communications networks for use in management (recordation, notification, measurement, report of facility fault, etc.) of apparatus for use by water suppliers; design of water treatment installations and other buildings; consultancy in the field of design of water treatment installations and other buildings; creating or maintaining web sites for others; design services relating to web sites; design services using computer graphics; design services; soil diagnosis; testing, inspection and research services in the fields of soil contamination investigation, meteorological information and agriculture; crop management via cloud computing network; remote monitoring of farm products via cloud computing network; remote monitoring of farm fields via cloud computing network; remote monitoring of water treatment apparatus via cloud computing network; recordation, notification, measurement and research of farm field information (soil information, farm crops growing information, and information about crop yield, fertilizer level, seeding amount, planting amount and agricultural chemicals application rate) via cable or wireless telecommunications networks and computer communications networks; designing of machines, apparatus, instruments (including their parts) or systems composed of such machines, apparatus and instruments; computer programming; technological advice relating to computers, automobiles and industrial machines; rental of computers, electronic machines and implements (not including word processors and electrostatic copying machines); providing computer programs on data networks
FILING BASIS Section 1(b)
FILING BASIS Section 44(e)
        FOREIGN REGISTRATION NUMBER 2387104
       FOREIGN REGISTRATION
       COUNTRY
Japan
       FOREIGN REGISTRATION
       DATE
03/31/1992
       FOREIGN EXPIRATION DATE 03/31/2022
GOODS AND/OR SERVICES SECTION (042)(proposed)
INTERNATIONAL CLASS 042
TRACKED TEXT DESCRIPTION
Monitoring of computer security systems by remote access; Monitoring of computer security systems by remote access for protecting data and information from unauthorized access; remote monitoring of computers and computer programs by means of telecommunications network; remote monitoring technological functions of computers and computer programs by means of telecommunications network; programming of operating software for accessing and using a cloud computing network; programming for others of operating software for accessing and using a cloud computing network; remote monitoring of computer systems for recordation, notification, measurement and facility fault report for water suppliers via cable or wireless telecommunications networks and computer communications networks; remote monitoring of computer systems to ensure proper functioning of water treatment facilities and for recordation of, notification regarding, measurement of and reporting on facility faults report for water suppliers via cable or wireless telecommunications networks and computer communications networks; monitoring of water quality; testing, inspection, research and technological development relating to water treatment installations; deterioration investigation and diagnosis of water treatment installations; engineering services in the nature of deterioration investigation and diagnosis of water treatment installations; technical guidance or consultancy relating to computer systems for optimization of operation of water treatment installations; technical assistance or consultancy relating to computer systems technology for optimization of operation of water treatment installations; technical guidance or consultancy relating to water purification mainly intended to optimize operation of water treatment installations; engineering services in the nature of deterioration investigation and diagnosis of water treatment apparatus; deterioration investigation and diagnosis of water treatment apparatus; preparation of technical engineering reports relating to water treatment apparatus; preparation of technical reports relating to water treatment apparatus; design of water treatment installations and other industrial buildings; remote monitoring of computer systems via cable or wireless telecommunications networks and computer communications networks for use in management (recordation, notification, measurement, report of facility fault, etc.) of apparatus for use by water suppliers; consultancy in the field of design of water treatment installations and other industrial buildings; design of water treatment installations and other buildings; creating or maintaining web sites for others; consultancy in the field of design of water treatment installations and other buildings; design services of web sites; design of facilities using computer graphics; design services relating to web sites; design of plumbing using computer graphics; design services using computer graphics; computer system design services; design services; computer-aided design services; soil diagnosis; industrial design services; testing, inspection and research services in the fields of soil contamination investigation, meteorological information and agriculture; soil diagnosis, namely, detection of nitrogen, phosphoric acid, potassium, water and other nourishments required for the plant growth; crop management via cloud computing network; testing, inspection and research services in the fields of soil contamination, meteorology and agriculture; remote monitoring of farm products via cloud computing network; remote monitoring of water treatment apparatus via cloud computing network to ensure proper functioning; remote monitoring of farm fields via cloud computing network; recordation, notification, measurement and research in the field of farms; remote monitoring of water treatment apparatus via cloud computing network; designing of machines, apparatus, instruments and their parts or systems composed of such machines, apparatus and instruments for operation and maintenance of facilities composed of machines, engines, electric motors, plumbing, vessels and electric cables, and design and construction management for the planning and construction of such facilities; recordation, notification, measurement and research of farm field information (soil information, farm crops growing information, and information about crop yield, fertilizer level, seeding amount, planting amount and agricultural chemicals application rate) via cable or wireless telecommunications networks and computer communications networks; computer programming; designing of machines, apparatus, instruments (including their parts) or systems composed of such machines, apparatus and instruments; technological advice relating to computers, automobiles and industrial machines; rental of computers and electronic machines, not including word processors and electrostatic copying machines; providing temporary use of online non-downloadable computer programs on data networks for testing, analysis and diagnosing of machines and engines, acquisition of position information, management of farm field, operation and maintenance of facilities composed of machines, engines, electric motors, plumbing, vessels and electric cables, and design and construction management for the planning and construction of such facilities; rental of computers, electronic machines and implements (not including word processors and electrostatic copying machines); remote monitoring of operation status of air-conditioning installations, heating installations and plumbing systems of buildings, and of river flood and agricultural water by telecommunications to ensure proper functioning; providing computer programs on data networks; remote monitoring of operation status of building equipment to ensure proper functioning; remote monitoring of wastewater treatment apparatus to ensure proper functioning; remote monitoring of operation status of agricultural irrigation units to ensure proper functioning; measuring of quality, temperature, level and flow of feed water supplied into a farm field via remote monitoring of machines and instruments; remote monitoring of water treatment apparatus for agricultural water to ensure proper functioning; remote monitoring of weighing apparatus and instruments to ensure proper functioning; remote monitoring of operation status of agricultural machines and implements and construction machines and apparatus to ensure proper functioning; remote monitoring of water treatment installations to ensure proper functioning
FINAL DESCRIPTION
Monitoring of computer security systems by remote access for protecting data and information from unauthorized access; remote monitoring technological functions of computers and computer programs by means of telecommunications network; programming for others of operating software for accessing and using a cloud computing network; remote monitoring of computer systems to ensure proper functioning of water treatment facilities and for recordation of, notification regarding, measurement of and reporting on facility faults report for water suppliers via cable or wireless telecommunications networks and computer communications networks; monitoring of water quality; testing, inspection, research and technological development relating to water treatment installations; engineering services in the nature of deterioration investigation and diagnosis of water treatment installations; technical assistance or consultancy relating to computer systems technology for optimization of operation of water treatment installations; engineering services in the nature of deterioration investigation and diagnosis of water treatment apparatus; preparation of technical engineering reports relating to water treatment apparatus; design of water treatment installations and other industrial buildings; consultancy in the field of design of water treatment installations and other industrial buildings; creating or maintaining web sites for others; design services of web sites; design of facilities using computer graphics; design of plumbing using computer graphics; computer system design services; computer-aided design services; industrial design services; soil diagnosis, namely, detection of nitrogen, phosphoric acid, potassium, water and other nourishments required for the plant growth; testing, inspection and research services in the fields of soil contamination, meteorology and agriculture; remote monitoring of water treatment apparatus via cloud computing network to ensure proper functioning; recordation, notification, measurement and research in the field of farms; designing of machines, apparatus, instruments and their parts or systems composed of such machines, apparatus and instruments for operation and maintenance of facilities composed of machines, engines, electric motors, plumbing, vessels and electric cables, and design and construction management for the planning and construction of such facilities; computer programming; technological advice relating to computers, automobiles and industrial machines; rental of computers and electronic machines, not including word processors and electrostatic copying machines; providing temporary use of online non-downloadable computer programs on data networks for testing, analysis and diagnosing of machines and engines, acquisition of position information, management of farm field, operation and maintenance of facilities composed of machines, engines, electric motors, plumbing, vessels and electric cables, and design and construction management for the planning and construction of such facilities; remote monitoring of operation status of air-conditioning installations, heating installations and plumbing systems of buildings, and of river flood and agricultural water by telecommunications to ensure proper functioning; remote monitoring of operation status of building equipment to ensure proper functioning; remote monitoring of wastewater treatment apparatus to ensure proper functioning; remote monitoring of operation status of agricultural irrigation units to ensure proper functioning; measuring of quality, temperature, level and flow of feed water supplied into a farm field via remote monitoring of machines and instruments; remote monitoring of water treatment apparatus for agricultural water to ensure proper functioning; remote monitoring of weighing apparatus and instruments to ensure proper functioning; remote monitoring of operation status of agricultural machines and implements and construction machines and apparatus to ensure proper functioning; remote monitoring of water treatment installations to ensure proper functioning
FILING BASIS Section 1(b)
FILING BASIS Section 44(e)
       FOREIGN REGISTRATION NUMBER 4127859
       FOREIGN REGISTRATION
       COUNTRY
Japan
       FOREIGN REGISTRATION
       DATE
03/27/1998
       FOREIGN EXPIRATION DATE 03/27/2028
       FOREIGN REGISTRATION FILE NAME(S)
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GOODS AND/OR SERVICES SECTION (035)(class added)
INTERNATIONAL CLASS 035
DESCRIPTION
Providing the location and operation status information of the works done by agricultural machines and implements and construction machines and apparatus, namely, farm field management, progress of farm works, planting plan eating quality and yield; providing location and operation status information of earthmoving machines and apparatus, including shield machines and piping connectors used for the execution of civil engineering plans
FILING BASIS Section 1(b)
FILING BASIS Section 44(e)
        FOREIGN REGISTRATION NUMBER 5982588
       FOREIGN REGISTRATION
       COUNTRY
Japan
       FOREIGN REGISTRATION
       DATE
09/22/2017
       FOREIGN EXPIRATION DATE 09/22/2027
       FOREIGN REGISTRATION FILE NAME(S)
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GOODS AND/OR SERVICES SECTION (040)(class added)
INTERNATIONAL CLASS 040
DESCRIPTION
Technical assistance or consultancy relating to water purification mainly intended to optimize operation of water treatment installations
FILING BASIS Section 1(b)
FILING BASIS Section 44(e)
        FOREIGN REGISTRATION NUMBER 5982588
       FOREIGN REGISTRATION
       COUNTRY
Japan
       FOREIGN REGISTRATION
       DATE
09/22/2017
       FOREIGN EXPIRATION DATE 09/22/2027
       FOREIGN REGISTRATION FILE NAME(S)
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GOODS AND/OR SERVICES SECTION (044)(class added)
INTERNATIONAL CLASS 044
DESCRIPTION
Farming consultation services, namely, remote monitoring of growing conditions using a sensor; agronomic consulting services in the field of crop management via cloud computing network; farming consultation by means of remote monitoring of farm products via cloud computing network; farming consultation by means of remote monitoring of farm fields via cloud computing network; farming consultation, including the recordation of, notification regarding and measurement and research of farm field information, including soil information, farm crops growing information, and information about crop yield, fertilizer level, seeding amount, planting amount and agricultural chemicals application rate via cable or wireless telecommunications networks and computer communications networks
FILING BASIS Section 1(b)
FILING BASIS Section 44(e)
        FOREIGN REGISTRATION NUMBER 5982588
       FOREIGN REGISTRATION
       COUNTRY
Japan
       FOREIGN REGISTRATION
       DATE
09/22/2017
       FOREIGN EXPIRATION DATE 02/22/2027
       FOREIGN REGISTRATION FILE NAME(S)
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ADDITIONAL STATEMENTS SECTION
MISCELLANEOUS STATEMENT The filing bases for this application are 1(b) and 44(e). The 44(e) filing bases are: Class 09: JP 2387104 registered on March 31, 1992; JP 2394091 registered on March 31, 1992; JP 5982588 registered on September 22, 2017; JP 2464700 registered on October 30, 1992. Please note that JP 2464700 is not listed on the filing basis section of the application as there is only space on the form for three registrations. Class 37: JP 3069805 registered on August 31, 1995; JP 3238991 registered on December 25, 1996; JP 5982588 registered on September 22, 2017. Class 42: JP 4127859 registered on March 27, 1998; JP 5982588 registered on September 22, 2017. Any registrations and translations listed for each class but not attached due to space are attached hereto.
        MISCELLANEOUS FILE NAME(S)
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PAYMENT SECTION
NUMBER OF CLASSES 3
APPLICATION FOR REGISTRATION PER CLASS 275
TOTAL FEES DUE 825
SIGNATURE SECTION
DECLARATION SIGNATURE /Christopher P. Sherwin/
SIGNATORY'S NAME Christopher P. Sherwin, Registration No. 67,923
SIGNATORY'S POSITION Attorney of Record, Pennsylvania bar member
SIGNATORY'S PHONE NUMBER 412-471-8815
DATE SIGNED 09/13/2019
RESPONSE SIGNATURE /Christopher P. Sherwin/
SIGNATORY'S NAME Christopher P. Sherwin, Registration No. 67,923
SIGNATORY'S POSITION Attorney of Record, Pennsylvania bar member
SIGNATORY'S PHONE NUMBER 412-471-8815
DATE SIGNED 09/13/2019
AUTHORIZED SIGNATORY YES
FILING INFORMATION SECTION
SUBMIT DATE Fri Sep 13 15:27:21 EDT 2019
TEAS STAMP USPTO/ROA-XX.XXX.XXX.XXX-
20190913152721986061-8824
6849-610ada82ca970bcdde3f
5f690948795e075bf4486d9d6
59462d42279e46e1811d9-CC-
27207267-2019091315144791
5536



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. 88246849 KUBOTA (Stylized and/or with Design, see http://uspto.report/TM/88246849/mark.png) has been amended as follows:

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

Remarks

 

The following remarks are responsive to the March 15, 2019 Office Action. The Examining Attorney’s comments have been reviewed and carefully considered. In view of the following remarks, Applicant respectfully requests passage of the applied-for mark to publication.

 

Applicant acknowledges that the Examining Attorney has searched the Office records and has found no similar registered or pending mark that would bar registration of the applied-for mark.

 

Registration of the applied-for mark has been refused, however, since the identifications of goods and services need to be clarified. In view of this refusal, Applicant has amended the description of goods in accordance with the Examining Attorney’s suggestions, as follows:

 

Class 9: Telecommunications apparatus, namely, telephone sets, mobile telephones, television receivers, television transmitters, radio receivers, radio transmitters, portable radio communication machines and apparatus, vehicular radio communication machines and apparatus, navigation apparatus for vehicles in the nature of on-board computers, radio beacon machines and apparatus, radio direction finders, radar machines and apparatus, antennas, and sensor data transmitters for use with remote monitoring systems; electrical remote monitoring apparatus for remotely monitoring flow, energy usage, electric current and electrical signals; computer programs, recorded, for testing, analysis and diagnosing of machines and engines, acquisition of position information, management of farm field, operation and maintenance of facilities composed of machines, engines, electric motors, plumbing, vessels and electric cables, and design and construction management for the planning and construction of such facilities; downloadable and recorded computer  programs for monitoring flow, energy usage, electric current and electrical signals; downloadable computer programs for testing, analysis and diagnosing of machines and engines, acquisition of position information, management of farm field, operation and maintenance of facilities composed of machines, engines, electric motors, plumbing, vessels and electric cables, and design and construction management for the planning and construction of such facilities; computers for telecommunications; mobile information terminals, namely, personal digital assistants; Internet servers; downloadable and recorded computer software for network administrations; computers for remote access to computer network; electrical apparatus for remote monitoring of signals; global positioning system (GPS) apparatus; smartphones; measuring apparatus for measuring water temperature, air/fuel ratio, boost, vacuum, exhaust gas temperature, temperature, humidity, atmosphere, soil component, and position and altitude by geomagnetism (non-GPS); water level indicators; water quality meters, namely, electronic-based instruments for measuring water quality; electronic water quality analyzers; water meters; pressure measuring apparatus; rain gauges; remote control apparatus for machines driven by power sources such as engines and electric motors, processing apparatus using electricity and light and facilities composed of such machines and apparatus; automated environmental notification alarm systems comprised of sensors and signal transmitters to a supervisor; alarms for the detection of facility break-ins, facility hazardous conditions, or facility shutdowns; GPS-aided operation monitoring apparatus for agricultural and construction machinery; downloadable and recorded computer programs for operating a GPS-aided operation monitoring apparatus for agricultural and construction machinery; electromagnetic solenoids in the nature of valves; electric valves; flowmeters; wireless communication devices for voice, data or image transmission; telecommunications machines and implements, namely, telephone sets, mobile telephones, television receivers, television transmitters, radio receivers, radio transmitters, portable radio communication machines and apparatus, vehicle radio communication machines and apparatus, navigation apparatus for vehicles in the nature of on-board computers, radio beacon machines and apparatus, radio direction finders, radar machines and apparatus, antennas, and sensor data transmitters and their structural parts; telecommunications transmitters; wireless transceivers; wireless transmitters for remote control; wireless receivers for remote control; monitoring apparatus, namely, monitoring control panel with screen; scales; automatic weighing machines; dosimeters; electronic circuits, not including those recorded with computer programs; electronic machines and implements, namely, optical character readers, electronic pocket translators, computers, computer memory devices, computer peripheral devices, interfaces for computers, computer keyboards, juke boxes for computers, joysticks for use with computers, other than video games, disk drives for computers, magnetic tape units for computers, computer printers, thin client computers, scanners, tablet computers, data processing apparatus, hand-held electronic dictionaries, electronic interactive whiteboards, electronic book readers, electronic agendas, laptop computers, bar code readers, printed circuit boards, electronic pens, pocket calculators, microprocessors, mouse pads, and their structural parts; downloadable image files containing images transmitted from cameras and communications equipment set up on machines and in facilities and farm field and stored in servers; pre-recorded video discs and video tapes featuring information relating to the repair and maintenance of machines, information relating to labor management, information relating to yield amount, information relating to work instructions, information relating to work progress, information relating to work project, information necessary for operation, repair and maintenance of facilities and machines, information relating to labor management for the operation and maintenance of facilities and machines, information relating to income and expenditure for the operation and maintenance of facilities and machines, operator guidance information, information relating to the progress of operation, repair and maintenance of facilities and machines, information relating to plans for the operation and maintenance of facilities and machines ”

 

                (New) Class 35: “Providing the location and operation status information of the works done by agricultural machines and implements and construction machines and apparatus, namely, farm field management, progress of farm works, planting plan eating quality and yield; providing location and operation status information of earthmoving machines and apparatus, including shield machines and piping connectors used for the execution of civil engineering plans”

 

                Class 37: “Repair or maintenance of telecommunication machines and implements; installation and maintenance of irrigation systems; repair or maintenance of agricultural machines and implements; remote monitoring of agricultural irrigation units to ensure proper functioning; pump repair or maintenance; plumbing contractor services, namely, supervision of plumbing services; plumbing contractor services, namely, supervision of plumbing services for water supply, sewage and drainage, and maintenance of tools used for the above-mentioned services; plumbing contractor services, namely, supervision of plumbing services for water supply, sewage and drainage, and maintenance of tools used for the above-mentioned services; repair or maintenance of remote monitoring apparatus; repair or maintenance of agricultural irrigation units; operation and maintenance of water treatment installations; repair or maintenance of cultivating machines and implements and their parts and fittings; repair and maintenance of water pollution control apparatus; repair or maintenance of wastewater treatment apparatus; repair and maintenance of waste crushing apparatus; repair or maintenance of telecommunication apparatus; repair or maintenance of measuring instruments; repair and maintenance of water purifying apparatus; construction supervision; construction of environmental sanitation facilities and environmental protection facilities and advisory services relating thereto; repair or maintenance of engines and internal combustion engines; repair or maintenance of tractors and automobiles; repair or maintenance of construction machines and implements; repair or maintenance of loading-unloading machines and implements; repair or maintenance of motive power machines and implements, not for land vehicles, and their parts; repair or maintenance of non-electric prime movers for land vehicles, not including their parts; repair or maintenance of industrial diesel engines; repair or maintenance of air conditioning machines and apparatus; repair or maintenance of power generators; repair or maintenance of waste processing machines and apparatus; repair or maintenance of environmental sanitation plants; repair or maintenance of rice milling machines; repair or maintenance of lawnmowers; pipeline construction; providing maintenance and repair information relating to the location and operation status for maintenance and repair of agricultural machines and implements and construction machines and apparatus; providing maintenance and repair information relating to the maintenance management of agricultural machines and implements and construction machines and apparatus; providing maintenance and repair information relating to the location and operation status for maintenance and repair of earthmoving machines and apparatus, including shield machines and piping connectors for use in the maintenance and repair; providing maintenance and repair information relating to the maintenance management of earthmoving machines and apparatus; repair or maintenance of harvesting machines and implements, and their parts and fittings; repair or maintenance of parts and fittings of lawnmowers; repair or maintenance of parts and fittings of earthmoving machines and apparatus; repair or maintenance of electronic machines and implements and their parts and accessories, not including software”

 

                (New) Class 40: “technical assistance or consultancy relating to water purification mainly intended to optimize operation of water treatment installations”

 

                Class 42: “Monitoring of computer security systems by remote access for protecting data and information from unauthorized access; remote monitoring technological functions of computers and computer programs by means of telecommunications network; programming for others of operating software for accessing and using a cloud computing network; remote monitoring of computer systems to ensure proper functioning of water treatment facilities and for recordation of, notification regarding, measurement of and reporting on facility faults report for water suppliers via cable or wireless telecommunications networks and computer communications networks; monitoring of water quality; testing, inspection, research and technological development relating to water treatment installations; engineering services in the nature of deterioration investigation and diagnosis of water treatment installations; technical assistance or consultancy relating to computer systems technology for optimization of operation of water treatment installations; engineering services in the nature of deterioration investigation and diagnosis of water treatment apparatus; preparation of technical engineering reports relating to water treatment apparatus; design of water treatment installations and other industrial buildings; consultancy in the field of design of water treatment installations and other industrial buildings; creating or maintaining web sites for others; design services of web sites; design of facilities using computer graphics; design of plumbing using computer graphics; computer system design services; computer-aided design services; industrial design services; soil diagnosis, namely, detection of nitrogen, phosphoric acid, potassium, water and other nourishments required for the plant growth; testing, inspection and research services in the fields of soil contamination, meteorology and agriculture; remote monitoring of water treatment apparatus via cloud computing network to ensure proper functioning; recordation, notification, measurement and research in the field of farms; designing of machines, apparatus, instruments and their parts or systems composed of such machines, apparatus and instruments for operation and maintenance of facilities composed of machines, engines, electric motors, plumbing, vessels and electric cables, and design and construction management for the planning and construction of such facilities; computer programming; technological advice relating to computers, automobiles and industrial machines; rental of computers and electronic machines, not including word processors and electrostatic copying machines; providing temporary use of online non-downloadable computer programs on data networks for testing, analysis and diagnosing of machines and engines, acquisition of position information, management of farm field, operation and maintenance of facilities composed of machines, engines, electric motors, plumbing, vessels and electric cables, and design and construction management for the planning and construction of such facilities; remote monitoring of operation status of air-conditioning installations, heating installations and plumbing systems of buildings, and of river flood and agricultural water by telecommunications to ensure proper functioning; remote monitoring of operation status of building equipment to ensure proper functioning; remote monitoring of wastewater treatment apparatus to ensure proper functioning; remote monitoring of operation status of agricultural irrigation units to ensure proper functioning; measuring of quality, temperature, level and flow of feed water supplied into a farm field via remote monitoring of machines and instruments; remote monitoring of water treatment apparatus for agricultural water to ensure proper functioning; remote monitoring of weighing apparatus and instruments to ensure proper functioning; remote monitoring of operation status of agricultural machines and implements and construction machines and apparatus to ensure proper functioning; remote monitoring of water treatment installations to ensure proper functioning”

 

            (New) Class 44:farming consultation services, namely, remote monitoring of growing conditions using a sensor; agronomic consulting services in the field of crop management via cloud computing network; farming consultation by means of remote monitoring of farm products via cloud computing network; farming consultation by means of remote monitoring of farm fields via cloud computing network; farming consultation, including the recordation of, notification regarding and measurement and research of farm field information, including soil information, farm crops growing information, and information about crop yield, fertilizer level, seeding amount, planting amount and agricultural chemicals application rate via cable or wireless telecommunications networks and computer communications networks”

 

Therefore, in view of these amendments to the descriptions of goods and services, Applicant respectfully submits that the descriptions of goods and services are now sufficiently definite. Withdrawal of this refusal is respectfully requested.

 

The Office Action also asserts that copies of the foreign registrations that are relied upon under Section 44(e) must be submitted, along with a certified English-language translation for each foreign registration. Applicant has submitted these documents with this response. To the extent the Examining Attorney believes these foreign registrations adequately cover the goods and services in this application, Applicant respectfully requests that the Examining Attorney drop the Section 1(b) filing basis for the pending classes in this application. Otherwise, Applicant wishes to maintain the Section 1(b) filing basis in this application to prove use of the applied-for mark in connection with the goods the Examining Attorney believes are not covered by the foreign registrations.

 

The expiration dates for the priority foreign registrations are as follows:

 

Reg. No.2387104 – March 31, 2022

Reg. No.2394091 – March 31, 2022

Reg. No.2464700 – October 30, 2022

Reg. No.3069805 – August 31, 2025

Reg. No.3238991 – December 25, 2026

Reg. No.4127859, - March 27, 2028 and

Reg. No.5982588 – September 22, 2047.

 

Conclusion

 

In view of the foregoing amendments and remarks, Applicant respectfully requests withdrawal of the refusals and passage of the applied-for mark to publication.

 



CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Telecommunications apparatus for use with remote monitoring systems; electrical remote monitoring apparatus; computer programs, recorded; computer programs for monitoring; computer programs (downloadable software); computers for telecommunications; mobile information terminals; Internet servers; computer software for network administrations; computers for remote access to computer network; apparatus for electrical remote monitoring of signals; global positioning system (GPS) apparatus; smartphones; measuring apparatus; water level indicators; water quality meters; water quality analyzers; water meters; pressure measuring apparatus; rain gauges; remote control apparatus; automated notification alarm systems for detecting signals from various kinds of sensors and transmitting to a supervisor; alarms; GPS-aided operation monitoring apparatus for agricultural and construction machinery; computer programs for GPS-aided operation monitoring apparatus for agricultural and construction machinery; electromagnetic valves; flowmeters; wireless communication machines and implements; telecommunications machines and implements and their parts and accessories; telecommunications transmitters; wireless transceivers; wireless transmitters for remote control; wireless receivers for remote control; monitoring apparatus with screen; scales; automatic weighing machines; dosimeters; electronic circuits, not including those recorded with computer programs; electronic machines and implements and their parts and accessories; downloadable image files; recorded video discs and video tapes
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(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Japan registration number 2387104 registered 03/31/1992 with a renewal date of __________ and an expiration date of 03/31/2022 ], 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: Telecommunications apparatus for use with remote monitoring systems; Telecommunications apparatus, namely, telephone sets, mobile telephones, television receivers, television transmitters, radio receivers, radio transmitters, portable radio communication machines and apparatus, vehicular radio communication machines and apparatus, navigation apparatus for vehicles in the nature of on-board computers, radio beacon machines and apparatus, radio direction finders, radar machines and apparatus, antennas, and sensor data transmitters for use with remote monitoring systems; electrical remote monitoring apparatus; electrical remote monitoring apparatus for remotely monitoring flow, energy usage, electric current and electrical signals; computer programs, recorded; computer programs, recorded, for testing, analysis and diagnosing of machines and engines, acquisition of position information, management of farm field, operation and maintenance of facilities composed of machines, engines, electric motors, plumbing, vessels and electric cables, and design and construction management for the planning and construction of such facilities; computer programs for monitoring; downloadable and recorded computer programs for monitoring flow, energy usage, electric current and electrical signals; computer programs (downloadable software); downloadable computer programs for testing, analysis and diagnosing of machines and engines, acquisition of position information, management of farm field, operation and maintenance of facilities composed of machines, engines, electric motors, plumbing, vessels and electric cables, and design and construction management for the planning and construction of such facilities; computers for telecommunications; mobile information terminals; mobile information terminals, namely, personal digital assistants; Internet servers; computer software for network administrations; downloadable and recorded computer software for network administrations; computers for remote access to computer network; apparatus for electrical remote monitoring of signals; electrical apparatus for remote monitoring of signals; global positioning system (GPS) apparatus; smartphones; measuring apparatus; measuring apparatus for measuring water temperature, air/fuel ratio, boost, vacuum, exhaust gas temperature, temperature, humidity, atmosphere, soil component, and position and altitude by geomagnetism (non-GPS); water level indicators; water quality meters; water quality meters, namely, electronic-based instruments for measuring water quality; water quality analyzers; electronic water quality analyzers; water meters; pressure measuring apparatus; rain gauges; remote control apparatus; remote control apparatus for machines driven by power sources such as engines and electric motors, processing apparatus using electricity and light and facilities composed of such machines and apparatus; automated notification alarm systems for detecting signals from various kinds of sensors and transmitting to a supervisor; automated environmental notification alarm systems comprised of sensors and signal transmitters to a supervisor; alarms; alarms for the detection of facility break-ins, facility hazardous conditions, or facility shutdowns; GPS-aided operation monitoring apparatus for agricultural and construction machinery; computer programs for GPS-aided operation monitoring apparatus for agricultural and construction machinery; downloadable and recorded computer programs for operating a GPS-aided operation monitoring apparatus for agricultural and construction machinery; electromagnetic valves; electromagnetic solenoids in the nature of valves; electric valves; wireless communication machines and implements; flowmeters; telecommunications machines and implements and their parts and accessories; wireless communication devices for voice, data or image transmission; telecommunications machines and implements, namely, telephone sets, mobile telephones, television receivers, television transmitters, radio receivers, radio transmitters, portable radio communication machines and apparatus, vehicle radio communication machines and apparatus, navigation apparatus for vehicles in the nature of on-board computers, radio beacon machines and apparatus, radio direction finders, radar machines and apparatus, antennas, and sensor data transmitters and their structural parts; telecommunications transmitters; wireless transceivers; wireless transmitters for remote control; monitoring apparatus with screen; wireless receivers for remote control; monitoring apparatus, namely, monitoring control panel with screen; scales; automatic weighing machines; dosimeters; electronic machines and implements and their parts and accessories; electronic circuits, not including those recorded with computer programs; downloadable image files; electronic machines and implements, namely, optical character readers, electronic pocket translators, computers, computer memory devices, computer peripheral devices, interfaces for computers, computer keyboards, juke boxes for computers, joysticks for use with computers, other than video games, disk drives for computers, magnetic tape units for computers, computer printers, thin client computers, scanners, tablet computers, data processing apparatus, hand-held electronic dictionaries, electronic interactive whiteboards, electronic book readers, electronic agendas, laptop computers, bar code readers, printed circuit boards, electronic pens, pocket calculators, microprocessors, mouse pads, and their structural parts; recorded video discs and video tapes; downloadable image files containing images transmitted from cameras and communications equipment set up on machines and in facilities and farm field and stored in servers; pre-recorded video discs and video tapes featuring information relating to the repair and maintenance of machines, information relating to labor management, information relating to yield amount, information relating to work instructions, information relating to work progress, information relating to work project, information necessary for operation, repair and maintenance of facilities and machines, information relating to labor management for the operation and maintenance of facilities and machines, information relating to income and expenditure for the operation and maintenance of facilities and machines, operator guidance information, information relating to the progress of operation, repair and maintenance of facilities and machines, information relating to plans for the operation and maintenance of facilities and machinesClass 009 for Telecommunications apparatus, namely, telephone sets, mobile telephones, television receivers, television transmitters, radio receivers, radio transmitters, portable radio communication machines and apparatus, vehicular radio communication machines and apparatus, navigation apparatus for vehicles in the nature of on-board computers, radio beacon machines and apparatus, radio direction finders, radar machines and apparatus, antennas, and sensor data transmitters for use with remote monitoring systems; electrical remote monitoring apparatus for remotely monitoring flow, energy usage, electric current and electrical signals; computer programs, recorded, for testing, analysis and diagnosing of machines and engines, acquisition of position information, management of farm field, operation and maintenance of facilities composed of machines, engines, electric motors, plumbing, vessels and electric cables, and design and construction management for the planning and construction of such facilities; downloadable and recorded computer programs for monitoring flow, energy usage, electric current and electrical signals; downloadable computer programs for testing, analysis and diagnosing of machines and engines, acquisition of position information, management of farm field, operation and maintenance of facilities composed of machines, engines, electric motors, plumbing, vessels and electric cables, and design and construction management for the planning and construction of such facilities; computers for telecommunications; mobile information terminals, namely, personal digital assistants; Internet servers; downloadable and recorded computer software for network administrations; computers for remote access to computer network; electrical apparatus for remote monitoring of signals; global positioning system (GPS) apparatus; smartphones; measuring apparatus for measuring water temperature, air/fuel ratio, boost, vacuum, exhaust gas temperature, temperature, humidity, atmosphere, soil component, and position and altitude by geomagnetism (non-GPS); water level indicators; water quality meters, namely, electronic-based instruments for measuring water quality; electronic water quality analyzers; water meters; pressure measuring apparatus; rain gauges; remote control apparatus for machines driven by power sources such as engines and electric motors, processing apparatus using electricity and light and facilities composed of such machines and apparatus; automated environmental notification alarm systems comprised of sensors and signal transmitters to a supervisor; alarms for the detection of facility break-ins, facility hazardous conditions, or facility shutdowns; GPS-aided operation monitoring apparatus for agricultural and construction machinery; downloadable and recorded computer programs for operating a GPS-aided operation monitoring apparatus for agricultural and construction machinery; electromagnetic solenoids in the nature of valves; electric valves; flowmeters; wireless communication devices for voice, data or image transmission; telecommunications machines and implements, namely, telephone sets, mobile telephones, television receivers, television transmitters, radio receivers, radio transmitters, portable radio communication machines and apparatus, vehicle radio communication machines and apparatus, navigation apparatus for vehicles in the nature of on-board computers, radio beacon machines and apparatus, radio direction finders, radar machines and apparatus, antennas, and sensor data transmitters and their structural parts; telecommunications transmitters; wireless transceivers; wireless transmitters for remote control; wireless receivers for remote control; monitoring apparatus, namely, monitoring control panel with screen; scales; automatic weighing machines; dosimeters; electronic circuits, not including those recorded with computer programs; electronic machines and implements, namely, optical character readers, electronic pocket translators, computers, computer memory devices, computer peripheral devices, interfaces for computers, computer keyboards, juke boxes for computers, joysticks for use with computers, other than video games, disk drives for computers, magnetic tape units for computers, computer printers, thin client computers, scanners, tablet computers, data processing apparatus, hand-held electronic dictionaries, electronic interactive whiteboards, electronic book readers, electronic agendas, laptop computers, bar code readers, printed circuit boards, electronic pens, pocket calculators, microprocessors, mouse pads, and their structural parts; downloadable image files containing images transmitted from cameras and communications equipment set up on machines and in facilities and farm field and stored in servers; pre-recorded video discs and video tapes featuring information relating to the repair and maintenance of machines, information relating to labor management, information relating to yield amount, information relating to work instructions, information relating to work progress, information relating to work project, information necessary for operation, repair and maintenance of facilities and machines, information relating to labor management for the operation and maintenance of facilities and machines, information relating to income and expenditure for the operation and maintenance of facilities and machines, operator guidance information, information relating to the progress of operation, repair and maintenance of facilities and machines, information relating to plans for the operation and maintenance of facilities and machines
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(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Japan registration number 2387104 registered 03/31/1992 with a renewal date of __________ and an expiration date of 03/31/2022 ], 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:
FRU0-38107150106-123152274_._2387104.pdf
Converted PDF file(s) ( 2 pages)
Foreign Registration-1
Foreign Registration-2
Original PDF file:
FRU0-38107150106-123152274_._2387104_translation.pdf
Converted PDF file(s) ( 3 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 037 for Remote monitoring of operation status of air-conditioning installations, heating installations, plumbing systems, etc. of buildings by telecommunications; remote monitoring of operation status of building equipment; repair or maintenance of telecommunication machines and implements; installation and maintenance of irrigation systems; repair or maintenance of agricultural machines and implements; remote monitoring of agricultural irrigation units; remote monitoring of wastewater treatment apparatus; pump repair or maintenance; supervision of the whole plumbing, supervision of plumbing for water supply, sewage and drainage; repair or maintenance of remote monitoring apparatus; repair or maintenance of agricultural irrigation units; operation and maintenance of water treatment installations; remote monitoring of operation status of agricultural irrigation units; remote monitoring using a sensor for growing conditions of farm products; repair or maintenance of cultivating machines and implements and their parts and fittings; remote monitoring of machines and instruments for measuring quality, temperature, level and flow of feed water supplied into a farm field; remote monitoring of water treatment apparatus for agricultural water; repair and maintenance of water pollution control apparatus; repair or maintenance of wastewater treatment apparatus; remote monitoring of wastewater treatment apparatus; repair and maintenance of waste crushing apparatus; repair or maintenance of telecommunication apparatus; repair or maintenance of measuring instruments; remote monitoring of weighing apparatus and instruments; repair and maintenance of water purifying apparatus; construction supervision; construction of environmental sanitation facilities or environmental protection facilities and advisory services relating thereto; repair or maintenance of engines and internal combustion engines; repair or maintenance of tractors and automobiles; repair or maintenance of construction machines and implements; repair or maintenance of loading-unloading machines and implements; repair or maintenance of motive power machines and implements, not for land vehicles, and their parts; repair or maintenance of non-electric prime movers for land vehicles, not including their parts; repair or maintenance of industrial diesel engines; repair or maintenance of air conditioning machines and apparatus; repair or maintenance of power generators; repair or maintenance of waste processing machines and apparatus; repair or maintenance of environmental sanitation plants; repair or maintenance of rice milling machines; repair or maintenance of lawnmowers; pipeline construction; providing information relating to the location and operation status for works by agricultural machines and implements and construction machines and apparatus; providing information relating to the location and operation status for maintenance and repair of agricultural machines and implements and construction machines and apparatus; providing information relating to the maintenance management of agricultural machines and implements and construction machines and apparatus; providing information relating to the location and operation status for works by earthmoving machines and apparatus; providing information relating to the location and operation status for maintenance and repair of earthmoving machines and apparatus; providing information relating to the maintenance management of earthmoving machines and apparatus; remote monitoring of operation status of agricultural machines and implements and construction machines and apparatus; repair or maintenance of harvesting machines and implements, their parts and fittings; repair or maintenance of parts and fittings of lawnmowers; repair or maintenance of parts and fittings of earthmoving machines and apparatus; remote monitoring of water treatment installations; repair or maintenance of electronic machines and implements and their parts and accessories
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(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Japan registration number 2387104 registered 03/31/1992 with a renewal date of __________ and an expiration date of 03/31/2022 ], 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: Remote monitoring of operation status of air-conditioning installations, heating installations, plumbing systems, etc. of buildings by telecommunications; Repair or maintenance of telecommunication machines and implements; remote monitoring of operation status of building equipment; installation and maintenance of irrigation systems; repair or maintenance of agricultural machines and implements; remote monitoring of agricultural irrigation units to ensure proper functioning; pump repair or maintenance; remote monitoring of agricultural irrigation units; plumbing contractor services, namely, supervision of plumbing services; remote monitoring of wastewater treatment apparatus; plumbing contractor services, namely, supervision of plumbing services for water supply, sewage and drainage, and maintenance of tools used for the above-mentioned services; plumbing contractor services, namely, supervision of plumbing services for water supply, sewage and drainage, and maintenance of tools used for the above-mentioned services; supervision of the whole plumbing, supervision of plumbing for water supply, sewage and drainage; repair or maintenance of remote monitoring apparatus; repair or maintenance of agricultural irrigation units; operation and maintenance of water treatment installations; repair or maintenance of cultivating machines and implements and their parts and fittings; remote monitoring of operation status of agricultural irrigation units; repair and maintenance of water pollution control apparatus; remote monitoring using a sensor for growing conditions of farm products; repair or maintenance of wastewater treatment apparatus; repair and maintenance of waste crushing apparatus; remote monitoring of machines and instruments for measuring quality, temperature, level and flow of feed water supplied into a farm field; repair or maintenance of telecommunication apparatus; remote monitoring of water treatment apparatus for agricultural water; repair or maintenance of measuring instruments; repair and maintenance of water purifying apparatus; construction supervision; remote monitoring of wastewater treatment apparatus; construction of environmental sanitation facilities and environmental protection facilities and advisory services relating thereto; repair or maintenance of engines and internal combustion engines; repair or maintenance of tractors and automobiles; repair or maintenance of construction machines and implements; remote monitoring of weighing apparatus and instruments; repair or maintenance of loading-unloading machines and implements; repair or maintenance of motive power machines and implements, not for land vehicles, and their parts; repair or maintenance of non-electric prime movers for land vehicles, not including their parts; construction of environmental sanitation facilities or environmental protection facilities and advisory services relating thereto; repair or maintenance of industrial diesel engines; repair or maintenance of air conditioning machines and apparatus; repair or maintenance of power generators; repair or maintenance of waste processing machines and apparatus; repair or maintenance of environmental sanitation plants; repair or maintenance of rice milling machines; repair or maintenance of lawnmowers; pipeline construction; providing maintenance and repair information relating to the location and operation status for maintenance and repair of agricultural machines and implements and construction machines and apparatus; providing maintenance and repair information relating to the maintenance management of agricultural machines and implements and construction machines and apparatus; providing maintenance and repair information relating to the location and operation status for maintenance and repair of earthmoving machines and apparatus, including shield machines and piping connectors for use in the maintenance and repair; providing maintenance and repair information relating to the maintenance management of earthmoving machines and apparatus; repair or maintenance of harvesting machines and implements, and their parts and fittings; repair or maintenance of parts and fittings of lawnmowers; repair or maintenance of parts and fittings of earthmoving machines and apparatus; providing information relating to the location and operation status for works by agricultural machines and implements and construction machines and apparatus; repair or maintenance of electronic machines and implements and their parts and accessories, not including software; providing information relating to the location and operation status for maintenance and repair of agricultural machines and implements and construction machines and apparatus; providing information relating to the maintenance management of agricultural machines and implements and construction machines and apparatus; providing information relating to the location and operation status for works by earthmoving machines and apparatus; providing information relating to the location and operation status for maintenance and repair of earthmoving machines and apparatus; providing information relating to the maintenance management of earthmoving machines and apparatus; remote monitoring of operation status of agricultural machines and implements and construction machines and apparatus; repair or maintenance of harvesting machines and implements, their parts and fittings; remote monitoring of water treatment installations; repair or maintenance of electronic machines and implements and their parts and accessoriesClass 037 for Repair or maintenance of telecommunication machines and implements; installation and maintenance of irrigation systems; repair or maintenance of agricultural machines and implements; remote monitoring of agricultural irrigation units to ensure proper functioning; pump repair or maintenance; plumbing contractor services, namely, supervision of plumbing services; plumbing contractor services, namely, supervision of plumbing services for water supply, sewage and drainage, and maintenance of tools used for the above-mentioned services; plumbing contractor services, namely, supervision of plumbing services for water supply, sewage and drainage, and maintenance of tools used for the above-mentioned services; repair or maintenance of remote monitoring apparatus; repair or maintenance of agricultural irrigation units; operation and maintenance of water treatment installations; repair or maintenance of cultivating machines and implements and their parts and fittings; repair and maintenance of water pollution control apparatus; repair or maintenance of wastewater treatment apparatus; repair and maintenance of waste crushing apparatus; repair or maintenance of telecommunication apparatus; repair or maintenance of measuring instruments; repair and maintenance of water purifying apparatus; construction supervision; construction of environmental sanitation facilities and environmental protection facilities and advisory services relating thereto; repair or maintenance of engines and internal combustion engines; repair or maintenance of tractors and automobiles; repair or maintenance of construction machines and implements; repair or maintenance of loading-unloading machines and implements; repair or maintenance of motive power machines and implements, not for land vehicles, and their parts; repair or maintenance of non-electric prime movers for land vehicles, not including their parts; repair or maintenance of industrial diesel engines; repair or maintenance of air conditioning machines and apparatus; repair or maintenance of power generators; repair or maintenance of waste processing machines and apparatus; repair or maintenance of environmental sanitation plants; repair or maintenance of rice milling machines; repair or maintenance of lawnmowers; pipeline construction; providing maintenance and repair information relating to the location and operation status for maintenance and repair of agricultural machines and implements and construction machines and apparatus; providing maintenance and repair information relating to the maintenance management of agricultural machines and implements and construction machines and apparatus; providing maintenance and repair information relating to the location and operation status for maintenance and repair of earthmoving machines and apparatus, including shield machines and piping connectors for use in the maintenance and repair; providing maintenance and repair information relating to the maintenance management of earthmoving machines and apparatus; repair or maintenance of harvesting machines and implements, and their parts and fittings; repair or maintenance of parts and fittings of lawnmowers; repair or maintenance of parts and fittings of earthmoving machines and apparatus; repair or maintenance of electronic machines and implements and their parts and accessories, not including software
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(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Japan registration number 3069805 registered 03/31/1995 with a renewal date of __________ and an expiration date of 03/31/2025 ], 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:
FRU1-38107150106-140001213_._3069805.pdf
Converted PDF file(s) ( 2 pages)
Foreign Registration-1
Foreign Registration-2
Original PDF file:
FRU1-38107150106-140001213_._3069805_translation.pdf
Converted PDF file(s) ( 3 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Monitoring of computer security systems by remote access; remote monitoring of computers and computer programs by means of telecommunications network; programming of operating software for accessing and using a cloud computing network; remote monitoring of computer systems for recordation, notification, measurement and facility fault report for water suppliers via cable or wireless telecommunications networks and computer communications networks; monitoring of water quality; testing, inspection, research and technological development relating to water treatment installations; deterioration investigation and diagnosis of water treatment installations; technical guidance or consultancy relating to computer systems for optimization of operation of water treatment installations; technical guidance or consultancy relating to water purification mainly intended to optimize operation of water treatment installations; deterioration investigation and diagnosis of water treatment apparatus; preparation of technical reports relating to water treatment apparatus; remote monitoring of computer systems via cable or wireless telecommunications networks and computer communications networks for use in management (recordation, notification, measurement, report of facility fault, etc.) of apparatus for use by water suppliers; design of water treatment installations and other buildings; consultancy in the field of design of water treatment installations and other buildings; creating or maintaining web sites for others; design services relating to web sites; design services using computer graphics; design services; soil diagnosis; testing, inspection and research services in the fields of soil contamination investigation, meteorological information and agriculture; crop management via cloud computing network; remote monitoring of farm products via cloud computing network; remote monitoring of farm fields via cloud computing network; remote monitoring of water treatment apparatus via cloud computing network; recordation, notification, measurement and research of farm field information (soil information, farm crops growing information, and information about crop yield, fertilizer level, seeding amount, planting amount and agricultural chemicals application rate) via cable or wireless telecommunications networks and computer communications networks; designing of machines, apparatus, instruments (including their parts) or systems composed of such machines, apparatus and instruments; computer programming; technological advice relating to computers, automobiles and industrial machines; rental of computers, electronic machines and implements (not including word processors and electrostatic copying machines); providing computer programs on data networks
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(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Japan registration number 2387104 registered 03/31/1992 with a renewal date of __________ and an expiration date of 03/31/2022 ], 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: Monitoring of computer security systems by remote access; Monitoring of computer security systems by remote access for protecting data and information from unauthorized access; remote monitoring of computers and computer programs by means of telecommunications network; remote monitoring technological functions of computers and computer programs by means of telecommunications network; programming of operating software for accessing and using a cloud computing network; programming for others of operating software for accessing and using a cloud computing network; remote monitoring of computer systems for recordation, notification, measurement and facility fault report for water suppliers via cable or wireless telecommunications networks and computer communications networks; remote monitoring of computer systems to ensure proper functioning of water treatment facilities and for recordation of, notification regarding, measurement of and reporting on facility faults report for water suppliers via cable or wireless telecommunications networks and computer communications networks; monitoring of water quality; testing, inspection, research and technological development relating to water treatment installations; deterioration investigation and diagnosis of water treatment installations; engineering services in the nature of deterioration investigation and diagnosis of water treatment installations; technical guidance or consultancy relating to computer systems for optimization of operation of water treatment installations; technical assistance or consultancy relating to computer systems technology for optimization of operation of water treatment installations; technical guidance or consultancy relating to water purification mainly intended to optimize operation of water treatment installations; engineering services in the nature of deterioration investigation and diagnosis of water treatment apparatus; deterioration investigation and diagnosis of water treatment apparatus; preparation of technical engineering reports relating to water treatment apparatus; preparation of technical reports relating to water treatment apparatus; design of water treatment installations and other industrial buildings; remote monitoring of computer systems via cable or wireless telecommunications networks and computer communications networks for use in management (recordation, notification, measurement, report of facility fault, etc.) of apparatus for use by water suppliers; consultancy in the field of design of water treatment installations and other industrial buildings; design of water treatment installations and other buildings; creating or maintaining web sites for others; consultancy in the field of design of water treatment installations and other buildings; design services of web sites; design of facilities using computer graphics; design services relating to web sites; design of plumbing using computer graphics; design services using computer graphics; computer system design services; design services; computer-aided design services; soil diagnosis; industrial design services; testing, inspection and research services in the fields of soil contamination investigation, meteorological information and agriculture; soil diagnosis, namely, detection of nitrogen, phosphoric acid, potassium, water and other nourishments required for the plant growth; crop management via cloud computing network; testing, inspection and research services in the fields of soil contamination, meteorology and agriculture; remote monitoring of farm products via cloud computing network; remote monitoring of water treatment apparatus via cloud computing network to ensure proper functioning; remote monitoring of farm fields via cloud computing network; recordation, notification, measurement and research in the field of farms; remote monitoring of water treatment apparatus via cloud computing network; designing of machines, apparatus, instruments and their parts or systems composed of such machines, apparatus and instruments for operation and maintenance of facilities composed of machines, engines, electric motors, plumbing, vessels and electric cables, and design and construction management for the planning and construction of such facilities; recordation, notification, measurement and research of farm field information (soil information, farm crops growing information, and information about crop yield, fertilizer level, seeding amount, planting amount and agricultural chemicals application rate) via cable or wireless telecommunications networks and computer communications networks; computer programming; designing of machines, apparatus, instruments (including their parts) or systems composed of such machines, apparatus and instruments; technological advice relating to computers, automobiles and industrial machines; rental of computers and electronic machines, not including word processors and electrostatic copying machines; providing temporary use of online non-downloadable computer programs on data networks for testing, analysis and diagnosing of machines and engines, acquisition of position information, management of farm field, operation and maintenance of facilities composed of machines, engines, electric motors, plumbing, vessels and electric cables, and design and construction management for the planning and construction of such facilities; rental of computers, electronic machines and implements (not including word processors and electrostatic copying machines); remote monitoring of operation status of air-conditioning installations, heating installations and plumbing systems of buildings, and of river flood and agricultural water by telecommunications to ensure proper functioning; providing computer programs on data networks; remote monitoring of operation status of building equipment to ensure proper functioning; remote monitoring of wastewater treatment apparatus to ensure proper functioning; remote monitoring of operation status of agricultural irrigation units to ensure proper functioning; measuring of quality, temperature, level and flow of feed water supplied into a farm field via remote monitoring of machines and instruments; remote monitoring of water treatment apparatus for agricultural water to ensure proper functioning; remote monitoring of weighing apparatus and instruments to ensure proper functioning; remote monitoring of operation status of agricultural machines and implements and construction machines and apparatus to ensure proper functioning; remote monitoring of water treatment installations to ensure proper functioningClass 042 for Monitoring of computer security systems by remote access for protecting data and information from unauthorized access; remote monitoring technological functions of computers and computer programs by means of telecommunications network; programming for others of operating software for accessing and using a cloud computing network; remote monitoring of computer systems to ensure proper functioning of water treatment facilities and for recordation of, notification regarding, measurement of and reporting on facility faults report for water suppliers via cable or wireless telecommunications networks and computer communications networks; monitoring of water quality; testing, inspection, research and technological development relating to water treatment installations; engineering services in the nature of deterioration investigation and diagnosis of water treatment installations; technical assistance or consultancy relating to computer systems technology for optimization of operation of water treatment installations; engineering services in the nature of deterioration investigation and diagnosis of water treatment apparatus; preparation of technical engineering reports relating to water treatment apparatus; design of water treatment installations and other industrial buildings; consultancy in the field of design of water treatment installations and other industrial buildings; creating or maintaining web sites for others; design services of web sites; design of facilities using computer graphics; design of plumbing using computer graphics; computer system design services; computer-aided design services; industrial design services; soil diagnosis, namely, detection of nitrogen, phosphoric acid, potassium, water and other nourishments required for the plant growth; testing, inspection and research services in the fields of soil contamination, meteorology and agriculture; remote monitoring of water treatment apparatus via cloud computing network to ensure proper functioning; recordation, notification, measurement and research in the field of farms; designing of machines, apparatus, instruments and their parts or systems composed of such machines, apparatus and instruments for operation and maintenance of facilities composed of machines, engines, electric motors, plumbing, vessels and electric cables, and design and construction management for the planning and construction of such facilities; computer programming; technological advice relating to computers, automobiles and industrial machines; rental of computers and electronic machines, not including word processors and electrostatic copying machines; providing temporary use of online non-downloadable computer programs on data networks for testing, analysis and diagnosing of machines and engines, acquisition of position information, management of farm field, operation and maintenance of facilities composed of machines, engines, electric motors, plumbing, vessels and electric cables, and design and construction management for the planning and construction of such facilities; remote monitoring of operation status of air-conditioning installations, heating installations and plumbing systems of buildings, and of river flood and agricultural water by telecommunications to ensure proper functioning; remote monitoring of operation status of building equipment to ensure proper functioning; remote monitoring of wastewater treatment apparatus to ensure proper functioning; remote monitoring of operation status of agricultural irrigation units to ensure proper functioning; measuring of quality, temperature, level and flow of feed water supplied into a farm field via remote monitoring of machines and instruments; remote monitoring of water treatment apparatus for agricultural water to ensure proper functioning; remote monitoring of weighing apparatus and instruments to ensure proper functioning; remote monitoring of operation status of agricultural machines and implements and construction machines and apparatus to ensure proper functioning; remote monitoring of water treatment installations to ensure proper functioning
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(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Japan registration number 4127859 registered 03/27/1998 with a renewal date of __________ and an expiration date of 03/27/2028 ], 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:
FRU2-38107150106-140001213_._4127859.pdf
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Foreign Registration-2
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Original PDF file:
FRU2-38107150106-140001213_._4127859_translation.pdf
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Applicant hereby adds the following class of goods/services to the application:
New: Class 035 for Providing the location and operation status information of the works done by agricultural machines and implements and construction machines and apparatus, namely, farm field management, progress of farm works, planting plan eating quality and yield; providing location and operation status information of earthmoving machines and apparatus, including shield machines and piping connectors used for the execution of civil engineering plans
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(e),Based on Foreign Registration: 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 and /or services, and submits a copy of [ Japan registration number 5982588 registered 09/22/2017 with a renewal date of __________ and an expiration date of 09/22/2027 ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.
Original PDF file:
FRN0-38107150106-140001213_._5982588.pdf
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Original PDF file:
FRN0-38107150106-140001213_._5982588_translation.pdf
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Applicant hereby adds the following class of goods/services to the application:
New: Class 040 for Technical assistance or consultancy relating to water purification mainly intended to optimize operation of water treatment installations
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(e),Based on Foreign Registration: 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 and /or services, and submits a copy of [ Japan registration number 5982588 registered 09/22/2017 with a renewal date of __________ and an expiration date of 09/22/2027 ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.
Original PDF file:
FRN1-38107150106-140001213_._5982588.pdf
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Original PDF file:
FRN1-38107150106-140001213_._5982588_translation.pdf
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Applicant hereby adds the following class of goods/services to the application:
New: Class 044 for Farming consultation services, namely, remote monitoring of growing conditions using a sensor; agronomic consulting services in the field of crop management via cloud computing network; farming consultation by means of remote monitoring of farm products via cloud computing network; farming consultation by means of remote monitoring of farm fields via cloud computing network; farming consultation, including the recordation of, notification regarding and measurement and research of farm field information, including soil information, farm crops growing information, and information about crop yield, fertilizer level, seeding amount, planting amount and agricultural chemicals application rate via cable or wireless telecommunications networks and computer communications networks
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(e),Based on Foreign Registration: 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 and /or services, and submits a copy of [ Japan registration number 5982588 registered 09/22/2017 with a renewal date of __________ and an expiration date of 02/22/2027 ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.
Original PDF file:
FRN2-38107150106-140001213_._5982588.pdf
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Original PDF file:
FRN2-38107150106-140001213_._5982588_translation.pdf
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ADDITIONAL STATEMENTS
Miscellaneous Statement
The filing bases for this application are 1(b) and 44(e). The 44(e) filing bases are: Class 09: JP 2387104 registered on March 31, 1992; JP 2394091 registered on March 31, 1992; JP 5982588 registered on September 22, 2017; JP 2464700 registered on October 30, 1992. Please note that JP 2464700 is not listed on the filing basis section of the application as there is only space on the form for three registrations. Class 37: JP 3069805 registered on August 31, 1995; JP 3238991 registered on December 25, 1996; JP 5982588 registered on September 22, 2017. Class 42: JP 4127859 registered on March 27, 1998; JP 5982588 registered on September 22, 2017. Any registrations and translations listed for each class but not attached due to space are attached hereto.

Original PDF file:
mis-38107150106-20190913140001213297_._2394091.pdf
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mis-38107150106-20190913140001213297_._2394091_translation.pdf
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mis-38107150106-20190913140001213297_._2464700.pdf
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mis-38107150106-20190913140001213297_._3238991_translation.pdf
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FEE(S)
Fee(s) in the amount of $825 is being submitted.

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: /Christopher P. Sherwin/      Date: 09/13/2019
Signatory's Name: Christopher P. Sherwin, Registration No. 67,923
Signatory's Position: Attorney of Record, Pennsylvania bar member
Signatory's Phone Number: 412-471-8815


Response Signature
Signature: /Christopher P. Sherwin/     Date: 09/13/2019
Signatory's Name: Christopher P. Sherwin, Registration No. 67,923
Signatory's Position: Attorney of Record, Pennsylvania bar member

Signatory's Phone Number: 412-471-8815

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.

        
RAM Sale Number: 88246849
RAM Accounting Date: 09/13/2019
        
Serial Number: 88246849
Internet Transmission Date: Fri Sep 13 15:27:21 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201909131527219
86061-88246849-610ada82ca970bcdde3f5f690
948795e075bf4486d9d659462d42279e46e1811d
9-CC-27207267-20190913151447915536


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