Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88267131 SYNC(Standard Characters, see http://uspto.report/TM/88267131/mark.png) has been amended as follows:

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

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

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 007 for 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
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.

Proposed:
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; plasma arc systems, torches, cartridges, and consumables; 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; waterjet systems, machines, pumps and consumables; 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 needlesClass 007 for 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), 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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for 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
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.

Proposed:
Tracked Text 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; 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; controllers for waterjet machines and pumps; electronic, electrical, computer hardware, and computer software controllers for waterjet machines and pumpsClass 009 for 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), 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.

The applicant's current attorney information: Joseph A. Capraro Jr.. Joseph A. Capraro Jr. of PROSKAUER ROSE LLP, is located at

      ONE INTERNATIONAL PLACE
      BOSTON, Massachusetts 02110
      US
The docket/reference number is HYP-659.

The phone number is 617-526-9600.

The email address is docketingpatentboston@proskauer.com

The applicants proposed attorney information: Joseph A. Capraro Jr.. Other appointed attorneys are S. James Boumil III and other attorneys associated with Customer Number 42532. Joseph A. Capraro Jr. of PROSKAUER ROSE LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      ONE INTERNATIONAL PLACE
      BOSTON, Massachusetts 02110
      United States
The docket/reference number is HYP-659.

The phone number is 617-526-9600.

The email address is docketingpatentboston@proskauer.com

Joseph A. Capraro Jr. submitted the following statement: I attest that I am an 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).
The applicant's current correspondence information: JOSEPH A. CAPRARO JR.. JOSEPH A. CAPRARO JR. of PROSKAUER ROSE LLP, is located at

      ONE INTERNATIONAL PLACE
      BOSTON, Massachusetts 02110
      US
The docket/reference number is HYP-659.

The phone number is 617-526-9600.

The email address is docketingpatentboston@proskauer.com; jboumil@proskauer.com

The applicants proposed correspondence information: Joseph A. Capraro Jr.. Joseph A. Capraro Jr. of PROSKAUER ROSE LLP, is located at

      ONE INTERNATIONAL PLACE
      BOSTON, Massachusetts 02110
      United States
The docket/reference number is HYP-659.

The phone number is 617-526-9600.

The email address is docketingpatentboston@proskauer.com; jboumil@proskauer.com

SIGNATURE(S)
Response Signature
Signature: /S. James Boumil III/     Date: 08/16/2019
Signatory's Name: S. James Boumil III
Signatory's Position: Attorney of record, Massachusetts Bar member

Signatory's Phone Number: 617-526-9618

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    JOSEPH A. CAPRARO JR.
   PROSKAUER ROSE LLP
   
   ONE INTERNATIONAL PLACE
   BOSTON, Massachusetts 02110
Mailing Address:    Joseph A. Capraro Jr.
   PROSKAUER ROSE LLP
   ONE INTERNATIONAL PLACE
   BOSTON, Massachusetts 02110
        
Serial Number: 88267131
Internet Transmission Date: Fri Aug 16 15:32:34 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20190816153234
938438-88267131-61066dfb69afc8c92ee9477f
7a53a56e724fce524e9282951cd12497a546585e
7f-N/A-N/A-20190816151026107739