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) |
Input Field |
Entered |
|
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SERIAL NUMBER | 88267131 | |
LAW OFFICE ASSIGNED | LAW OFFICE 108 | |
MARK SECTION | ||
MARK | http://uspto.report/TM/88267131/mark.png | |
LITERAL ELEMENT | SYNC | |
STANDARD CHARACTERS | YES | |
USPTO-GENERATED IMAGE | YES | |
MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. | |
ARGUMENT(S) | ||
In the United States Patent and Trademark Office
This response is submitted by Hypertherm, Inc., (“Applicant”), through its undersigned counsel, in response to the Office Action dated April 9, 2019 (“the Office Action”) for the above-referenced U.S. Trademark Application for the mark SYNC in International Classes 007 and 009 (“Applicant’s Mark”). Applicant submits that each of the issues raised by the Office Action is addressed by this paper. Accordingly, Applicant requests reconsideration and withdrawal of all rejections so that Applicant’s Mark may proceed to publication in due course. II. Acknowledgment of Search Results Applicant thanks the Examiner for the notification that no conflicting marks were found. III. Amendment of Identification of Goods Applicant hereby amends the identification of services in International Classes 007 and 009 as follows, with additions shown in underlining and deletions in double brackets or strikethrough: CLASS 007 – “Plasma arc cutting machines and replacement parts therefor; waterjet cutting machines and replacement parts therefor; machines and machine tools for the cutting, marking, scoring, and forming of materials; plasma arc systems[[, ]] comprised of plasma arc torches, power supplies, control panels, water supplies, high frequency consoles, gas consoles, noise and pollution suppressors, counter/timers, and replacement parts therefor; plasma arc cuttingtorches[[, ]]; plasma arc cutting torch cartridges[[, ]]; andplasma arc cutting torch consumables in the nature of nozzles, retaining caps, swirl rings, shields, shield caps, o-rings, cartridges, deflectors, and cooling tubes; waterjet systems[[, ]] comprised of waterjet cuttingmachines, pumps and consumables in the nature of nozzles, orifices, alignment inserts, housing inserts, adaptors, valves, tubes, nuts, threaded discs, seats, seals, hoops, back-ups, cylinders, stems, rings, bearings, caps, poppets, springs, adaptors, pins, filters, and needles.” CLASS 009 – “Electrical power supplies for plasma arc cutting machines and replacement parts therefor; electronic, electrical and computer-generated controls [[for]] in the nature of computer hardware and computer software for controlling plasma arc cutting machines and replacement parts therefor; electronic, electrical, computer hardware, and computer software controllers for waterjet machines and pumps.” Applicant has also entered these changes into the Internet form accompanying this Office Action response. By this amendment, Applicant intends only to advance prosecution and makes no concessions that the services were not registrable in their unamended form. IV. Explanation of Mark’s Significance The Office Action requests that applicant explain whether the wording “SYNC” in the mark “has any significance in the applicant’s industry or as applied to applicant’s goods, or if such wording is a ‘term of art’ within applicant’s industry.” Applicant states that to its knowledge “SYNC” is not a term of art in Applicant’s industry and has no significance in Applicant’s industry. As applied to Applicant’s goods, Applicant intends to use the mark in connection with certain of Applicant’s products in which certain associated components can be configured automatically upon taking a specified action. For example, if a consumable cartridge fitted with an RFID chip is installed in a plasma arc cutting torch having an RFID chip reader, the reader can sense an identity or characteristic of the specific cartridge installed and can automatically configure the torch’s power supply with certain appropriate parameters, e.g., a cutting current suitable for that cartridge. To Applicant’s knowledge, the wording “SYNC” has never been used in such a manner in connection with such components in Applicant’s industry other than by Applicant. V. Conclusion For the foregoing reasons, Applicant respectfully submits that all issues raised in the Office Action have been addressed. Accordingly, Applicant requests that the pending application proceed to publication in due course. If the Examining Attorney would like to discuss the application for any reason, the Examining Attorney is invited to contact the undersigned attorney at the below number. _________________________________ |
||
GOODS AND/OR SERVICES SECTION (007)(current) | ||
INTERNATIONAL CLASS | 007 | |
DESCRIPTION | ||
Plasma arc cutting machines and replacement parts therefor; waterjet cutting machines and replacement parts therefor; machines and machine tools for the cutting, marking, scoring, and forming of materials; plasma arc systems, torches, cartridges, and consumables; waterjet systems, machines, pumps and consumables | ||
FILING BASIS | Section 1(b) | |
GOODS AND/OR SERVICES SECTION (007)(proposed) | ||
INTERNATIONAL CLASS | 007 | |
TRACKED TEXT DESCRIPTION | ||
Plasma arc cutting machines and replacement parts therefor; waterjet cutting machines and
replacement parts therefor; machines and machine tools for the cutting, marking, scoring, and forming of materials; |
||
FINAL DESCRIPTION | ||
Plasma arc cutting machines and replacement parts therefor; waterjet cutting machines and replacement parts therefor; machines and machine tools for the cutting, marking, scoring, and forming of materials; plasma arc systems comprised of plasma arc torches, power supplies, control panels, water supplies, high frequency consoles, gas consoles, noise and pollution suppressors, counter/timers, and replacement parts therefor; plasma arc cutting torches; plasma arc cutting torch cartridges and plasma arc cutting torch consumables in the nature of nozzles, retaining caps, swirl rings, shields, shield caps, o-rings, cartridges, deflectors, and cooling tubes; waterjet systems comprised of waterjet cutting machines, pumps and consumables in the nature of nozzles, orifices, alignment inserts, housing inserts, adaptors, valves, tubes, nuts, threaded discs, seats, seals, hoops, back-ups, cylinders, stems, rings, bearings, caps, poppets, springs, adaptors, pins, filters, and needles | ||
FILING BASIS | Section 1(b) | |
GOODS AND/OR SERVICES SECTION (009)(current) | ||
INTERNATIONAL CLASS | 009 | |
DESCRIPTION | ||
Electrical power supplies for plasma arc cutting machines and replacement parts therefor; electronic, electrical and computer-generated controls for plasma arc cutting machines and replacement parts therefor; controllers for waterjet machines and pumps | ||
FILING BASIS | Section 1(b) | |
GOODS AND/OR SERVICES SECTION (009)(proposed) | ||
INTERNATIONAL CLASS | 009 | |
TRACKED TEXT DESCRIPTION | ||
Electrical power supplies for plasma arc cutting machines and replacement parts therefor; |
||
FINAL DESCRIPTION | ||
Electrical power supplies for plasma arc cutting machines and replacement parts therefor; electronic, electrical and computer-generated controls in the nature of computer hardware and computer software for controlling plasma arc cutting machines and replacement parts therefor; electronic, electrical, computer hardware, and computer software controllers for waterjet machines and pumps | ||
FILING BASIS | Section 1(b) | |
ATTORNEY SECTION (current) | ||
NAME | Joseph A. Capraro Jr. | |
ATTORNEY BAR MEMBERSHIP NUMBER | NOT SPECIFIED | |
YEAR OF ADMISSION | NOT SPECIFIED | |
U.S. STATE/ COMMONWEALTH/ TERRITORY | NOT SPECIFIED | |
FIRM NAME | PROSKAUER ROSE LLP | |
STREET | ONE INTERNATIONAL PLACE | |
CITY | BOSTON | |
STATE | Massachusetts | |
POSTAL CODE | 02110 | |
COUNTRY | US | |
PHONE | 617-526-9600 | |
docketingpatentboston@proskauer.com | ||
AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes | |
DOCKET/REFERENCE NUMBER | HYP-659 | |
ATTORNEY SECTION (proposed) | ||
NAME | Joseph A. Capraro Jr. | |
ATTORNEY BAR MEMBERSHIP NUMBER | XXX | |
YEAR OF ADMISSION | XXXX | |
U.S. STATE/ COMMONWEALTH/ TERRITORY | XX | |
FIRM NAME | PROSKAUER ROSE LLP | |
STREET | ONE INTERNATIONAL PLACE | |
CITY | BOSTON | |
STATE | Massachusetts | |
POSTAL CODE | 02110 | |
COUNTRY | United States | |
PHONE | 617-526-9600 | |
docketingpatentboston@proskauer.com | ||
AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes | |
DOCKET/REFERENCE NUMBER | HYP-659 | |
OTHER APPOINTED ATTORNEY | S. James Boumil III and other attorneys associated with Customer Number 42532 | |
CORRESPONDENCE SECTION (current) | ||
NAME | JOSEPH A. CAPRARO JR. | |
FIRM NAME | PROSKAUER ROSE LLP | |
STREET | ONE INTERNATIONAL PLACE | |
CITY | BOSTON | |
STATE | Massachusetts | |
POSTAL CODE | 02110 | |
COUNTRY | US | |
PHONE | 617-526-9600 | |
docketingpatentboston@proskauer.com; jboumil@proskauer.com | ||
AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes | |
DOCKET/REFERENCE NUMBER | HYP-659 | |
CORRESPONDENCE SECTION (proposed) | ||
NAME | Joseph A. Capraro Jr. | |
FIRM NAME | PROSKAUER ROSE LLP | |
STREET | ONE INTERNATIONAL PLACE | |
CITY | BOSTON | |
STATE | Massachusetts | |
POSTAL CODE | 02110 | |
COUNTRY | United States | |
PHONE | 617-526-9600 | |
docketingpatentboston@proskauer.com; jboumil@proskauer.com | ||
AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes | |
DOCKET/REFERENCE NUMBER | HYP-659 | |
SIGNATURE SECTION | ||
RESPONSE SIGNATURE | /S. James Boumil III/ | |
SIGNATORY'S NAME | S. James Boumil III | |
SIGNATORY'S POSITION | Attorney of record, Massachusetts Bar member | |
SIGNATORY'S PHONE NUMBER | 617-526-9618 | |
DATE SIGNED | 08/16/2019 | |
AUTHORIZED SIGNATORY | YES | |
FILING INFORMATION SECTION | ||
SUBMIT DATE | Fri Aug 16 15:32:34 EDT 2019 | |
TEAS STAMP | USPTO/ROA-XXX.XXX.XXX.XXX -20190816153234938438-882 67131-61066dfb69afc8c92ee 9477f7a53a56e724fce524e92 82951cd12497a546585e7f-N/ A-N/A-2019081615102610773 9 |
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) |
In the United States Patent and Trademark Office
Serial No.: 88/267,131 Mark: SYNC (Standard character mark) Int’l Classes: 007 and 009 Atty. Docket: HYP-659 |
I.
Introduction
This response is submitted by Hypertherm, Inc., (“Applicant”), through its undersigned counsel, in response to the Office Action dated April 9, 2019 (“the Office Action”) for the above-referenced U.S. Trademark Application for the mark SYNC in International Classes 007 and 009 (“Applicant’s Mark”).
Applicant submits that each of the issues raised by the Office Action is addressed by this paper. Accordingly, Applicant requests reconsideration and withdrawal of all rejections so that Applicant’s Mark may proceed to publication in due course.
II. Acknowledgment of Search Results
Applicant thanks the Examiner for the notification that no conflicting marks were found.
III. Amendment of Identification of Goods
Applicant hereby amends the identification of services in International Classes 007 and 009 as follows, with additions shown in underlining and deletions in double brackets or strikethrough:
CLASS 007 – “Plasma arc cutting machines and replacement parts therefor; waterjet cutting machines and replacement parts therefor; machines and machine tools for the cutting, marking, scoring, and forming of materials; plasma arc systems[[, ]] comprised of plasma arc torches, power supplies, control panels, water supplies, high frequency consoles, gas consoles, noise and pollution suppressors, counter/timers, and replacement parts therefor; plasma arc cuttingtorches[[, ]]; plasma arc cutting torch cartridges[[, ]]; andplasma arc cutting torch consumables in the nature of nozzles, retaining caps, swirl rings, shields, shield caps, o-rings, cartridges, deflectors, and cooling tubes; waterjet systems[[, ]] comprised of waterjet cuttingmachines, pumps and consumables in the nature of nozzles, orifices, alignment inserts, housing inserts, adaptors, valves, tubes, nuts, threaded discs, seats, seals, hoops, back-ups, cylinders, stems, rings, bearings, caps, poppets, springs, adaptors, pins, filters, and needles.”
CLASS 009 – “Electrical power supplies for plasma arc cutting machines and replacement parts therefor; electronic, electrical and computer-generated controls [[for]] in the nature of computer hardware and computer software for controlling plasma arc cutting machines and replacement parts therefor; electronic, electrical, computer hardware, and computer software controllers for waterjet machines and pumps.”
Applicant has also entered these changes into the Internet form accompanying this Office Action response. By this amendment, Applicant intends only to advance prosecution and makes no concessions that the services were not registrable in their unamended form.
IV. Explanation of Mark’s Significance
The Office Action requests that applicant explain whether the wording “SYNC” in the mark “has any significance in the applicant’s industry or as applied to applicant’s goods, or if such wording is a ‘term of art’ within applicant’s industry.” Applicant states that to its knowledge “SYNC” is not a term of art in Applicant’s industry and has no significance in Applicant’s industry. As applied to Applicant’s goods, Applicant intends to use the mark in connection with certain of Applicant’s products in which certain associated components can be configured automatically upon taking a specified action. For example, if a consumable cartridge fitted with an RFID chip is installed in a plasma arc cutting torch having an RFID chip reader, the reader can sense an identity or characteristic of the specific cartridge installed and can automatically configure the torch’s power supply with certain appropriate parameters, e.g., a cutting current suitable for that cartridge. To Applicant’s knowledge, the wording “SYNC” has never been used in such a manner in connection with such components in Applicant’s industry other than by Applicant.
V. Conclusion
For the foregoing reasons, Applicant respectfully submits that all issues raised in the Office Action have been addressed. Accordingly, Applicant requests that the pending application proceed to publication in due course. If the Examining Attorney would like to discuss the application for any reason, the Examining Attorney is invited to contact the undersigned attorney at the below number.
_________________________________
S. James Boumil, III
Attorney for the Applicant
Proskauer Rose LLP
One International Place
Boston, MA 02110-2600
Tel. No.: (617) 526-9618
Fax No.: (617) 526-9899