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)

---

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. 88292370 APDIS(Standard Characters, see http://uspto.report/TM/88292370/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Non-contact 3D measuring instruments; three dimensional measuring apparatus; detectors; precision measuring apparatus; lasers for measuring; laser measuring systems; measuring apparatus; measuring instruments; electric measuring apparatus and instruments; levelling instruments; coordinate measuring instruments; optical sensors; software; software for non-contact 3D measuring instruments; computer software for 3D measuring apparatus; software for GPS navigation systems; computer programs, downloadable; computer software applications, downloadable; mobile software applications, downloadable; computer software for processing digital images; computer software for computer-aided design; operating system programs; scanners; 3D scanners; radar apparatus; radar detectors; GPS navigation device; optical lenses; microscopes
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(d), Priority based on foreign filing: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Japan application number 2019-020487 filed 02/04/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Non-contact 3D measuring instruments; Non-contact 3D measuring instruments for use in precision measuring of size, surfaces, seals and edges of large manufactured goods; three dimensional measuring apparatus; three dimensional measuring apparatus for use in precision measuring of size, surfaces and edges of large manufactured goods; detectors; precision measuring apparatus; lasers for measuring; laser measuring systems; coordinate measuring instruments; measuring apparatus; optical sensors; measuring instruments; downloadable and recorded operating software for measuring instruments; electric measuring apparatus and instruments; downloadable and recorded operating software for non-contact 3D measuring instruments; levelling instruments; downloadable and recorded computer software for operating 3D measuring apparatus and for processing measurement data; downloadable and recorded software for GPS navigation systems; mobile software applications, downloadable and recorded for operating 3D measuring apparatus and for processing measurement data; software; downloadable and recorded computer software for processing digital images; software for non-contact 3D measuring instruments; downloadable and recorded computer software for computer-aided design; computer software for 3D measuring apparatus; downloadable and recorded operating system programs; software for GPS navigation systems; scanners; computer programs, downloadable; 3D scanners; computer software applications, downloadable; radar apparatus; mobile software applications, downloadable; radar detectors; computer software for processing digital images; GPS navigation devices; computer software for computer-aided design; optical lenses; operating system programs; microscopes; GPS navigation deviceClass 009 for Non-contact 3D measuring instruments for use in precision measuring of size, surfaces, seals and edges of large manufactured goods; three dimensional measuring apparatus for use in precision measuring of size, surfaces and edges of large manufactured goods; detectors; lasers for measuring; laser measuring systems; coordinate measuring instruments; optical sensors; downloadable and recorded operating software for measuring instruments; downloadable and recorded operating software for non-contact 3D measuring instruments; downloadable and recorded computer software for operating 3D measuring apparatus and for processing measurement data; downloadable and recorded software for GPS navigation systems; mobile software applications, downloadable and recorded for operating 3D measuring apparatus and for processing measurement data; downloadable and recorded computer software for processing digital images; downloadable and recorded computer software for computer-aided design; downloadable and recorded operating system programs; scanners; 3D scanners; radar apparatus; radar detectors; GPS navigation devices; optical lenses; microscopes
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(d), Priority based on foreign filing:For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Japan application number 2019-020487 filed 02/04/2019]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Applicant hereby adds the following class of goods/services to the application:
New: Class 042 for Online non-downloadable software for operating measuring instruments for precision measuring of size, surfaces, seals and edges of large manufactured goods; Online non-downloadable software for noncontact 3D measuring instruments; Online non-downloadable computer software for 3D measuring apparatus; Online non-downloadable software for GPS navigation systems; Online non-downloadable computer software for processing digital images; Online non-downloadable computer software for computer-aided design
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(d), Priority based on foreign filing:For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Japan application number 2019-020487 filed 02/04/2019]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

The applicant's current attorney information: Karen Lim. Karen Lim of FROSS ZELNICK LEHRMAN & ZISSU, P.C., is located at

      4 TIMES SQUARE, 17TH FLOOR
      NEW YORK, New York 10036
      US
The docket/reference number is NIKN 1902115.

The phone number is 212-813-8296.

The email address is KLim-Docket@fzlz.com

The applicants proposed attorney information: Karen Lim. Other appointed attorneys are Lawrence E. Apolzon, Andrew N. Fredbeck, Allison Strickland Ricketts, Nancy Sabarra, Charles T.J. Weigell, Ashford Tucker, Tamar Niv Bessinger. Karen Lim of Fross Zelnick Lehrman & Zissu, P.C., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      151 W. 42nd Street, 17th Floor
      New York, New York 10036
      United States
The docket/reference number is NIKN 1902115.

The phone number is 212-813-5900.

The email address is Weigell-Docket@fzlz.com

Karen Lim submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: KAREN LIM. KAREN LIM of FROSS ZELNICK LEHRMAN & ZISSU, P.C., is located at

      4 TIMES SQUARE, 17TH FLOOR
      NEW YORK, New York 10036
      US
The docket/reference number is NIKN 1902115.

The phone number is 212-813-8296.

The email address is KLim-Docket@fzlz.com

The applicants proposed correspondence information: Karen Lim. Karen Lim of Fross Zelnick Lehrman & Zissu, P.C., is located at

      151 W. 42nd Street, 17th Floor
      New York, New York 10036
      United States
The docket/reference number is NIKN 1902115.

The phone number is 212-813-5900.

The email address is Weigell-Docket@fzlz.com

ADDITIONAL STATEMENTS
Miscellaneous Statement
Applicant requests the application be suspended pending issuance of the foreign registration certificate.


FEE(S)
Fee(s) in the amount of $275 is being submitted.

SIGNATURE(S)
Declaration Signature
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice.
Response Signature
Signature: /ctw/     Date: 10/28/2019
Signatory's Name: Charles T. J. Weigell
Signatory's Position: Partner, Fross Zelnick Lehrman & Zissu, P.C., New York State Bar member

Signatory's Phone Number: 212-813-8239

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

Mailing Address:    KAREN LIM
   FROSS ZELNICK LEHRMAN & ZISSU, P.C.
   
   4 TIMES SQUARE, 17TH FLOOR
   NEW YORK, New York 10036
Mailing Address:    Karen Lim
   Fross Zelnick Lehrman & Zissu, P.C.
   151 W. 42nd Street, 17th Floor
   New York, New York 10036
        
RAM Sale Number: 88292370
RAM Accounting Date: 10/28/2019
        
Serial Number: 88292370
Internet Transmission Date: Mon Oct 28 16:36:15 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-201910281636158
58144-88292370-700e74722746c73e69de6a2a8
155f8b6cf791473c9159239b74792c714aa4aac7
-DA-36153899-20191028142920480205