NOTE TO THE FILE
SERIAL NUMBER: 88298093
DATE: 10/10/2019
NAME: kmoninghoff
NOTE:
Searched:
Lexis/Nexis
OneLook
Wikipedia
Acronym Finder Protest evidence reviewed
Other:Checked:
Geographic significance
Surname
Translation
ID with ID/CLASS mailboxChecked list of approved Canadian attorneys and agents
Discussed file with
Attorney/Applicant via:
phone Left message with
X email Attorney/ApplicantRequested Law Library search X Issued Examiner’s Amendment
for: and entered changes in TRADEUPSPRINT DO NOT PRINT Added design code in TRADEUPS
Description of the mark
Translation statement Re-imaged standard character
drawing
Negative translation statement
Consent of living individual Contacted TM MADRID ID/CLASS
about misclassified definite ID
Changed TRADEUPS to:X OTHER:
From: Aurini, Geoffrey <gaurini@HDP.com>
Sent: Thursday, October 10, 2019 1:56 PM
To: Moninghoff, Kim <Kim.Moninghoff@USPTO.GOV>
Cc: Troy Mail Room <mailroom@HDP.com>; Langlois, Pam <palanglois@HDP.com>
Subject: RE: Trademark Application #88298093 ELEXCORE (Docket #4041TK200031)
Many thanks!
Geoffrey D. Aurini | Attorney at Law, Principal
O | 248.641.1238 M | 248.227.0880
IP Causes Worldwide
From: Moninghoff, Kim <Kim.Moninghoff@USPTO.GOV>
Sent: Thursday, October 10, 2019 1:55 PM
To: Aurini, Geoffrey <gaurini@HDP.com>
Cc: Troy Mail Room <mailroom@HDP.com>; Langlois, Pam <palanglois@HDP.com>
Subject: RE: Trademark Application #88298093 ELEXCORE (Docket #4041TK200031)
EXTERNAL EMAIL
Sure, we can make that additional change. I’ll have the EA out to you this afternoon.
Kim Teresa Moninghoff
Trademark Examining Attorney
Law Office 113
Phone: 571-272-4738
All informal e-mail communications relevant to this application will be placed in the official application record.
From: Aurini, Geoffrey <gaurini@HDP.com>
Sent: Thursday, October 10, 2019 1:47 PM
To: Moninghoff, Kim <Kim.Moninghoff@USPTO.GOV>
Cc: Troy Mail Room <mailroom@HDP.com>; Langlois, Pam <palanglois@HDP.com>
Subject: RE: Trademark Application #88298093 ELEXCORE (Docket #4041TK200031)
Hi, Kim.
Please note that it is not necessary for our client to retain “computer hardware, base stations, cables, switches” of “telecommunication machines and apparatus, namely, computer hardware, base stations, cables, switches, and battery monitors”.
Can we take it out as highlighted below? If not, our client is ready to accept your proposal in its entirety. Thank you!
Regards,
/gda/
Geoffrey Aurini
Geoffrey D. Aurini | Attorney at Law, Principal
O | 248.641.1238 M | 248.227.0880
IP Causes Worldwide
From: Moninghoff, Kim <Kim.Moninghoff@USPTO.GOV>
Sent: Tuesday, October 8, 2019 10:48 AM
To: Aurini, Geoffrey <gaurini@HDP.com>
Cc: Troy Mail Room <mailroom@HDP.com>; Langlois, Pam <palanglois@HDP.com>
Subject: RE: Trademark Application #88298093 ELEXCORE (Docket #4041TK200031)
EXTERNAL EMAIL
Sure. I can give you until the end of this week.
Kim Teresa Moninghoff
Trademark Examining Attorney
Law Office 113
Phone: 571-272-4738
All informal e-mail communications relevant to this application will be placed in the official application record.
From: Aurini, Geoffrey <gaurini@HDP.com>
Sent: Tuesday, October 8, 2019 10:29 AM
To: Moninghoff, Kim <Kim.Moninghoff@USPTO.GOV>
Cc: Troy Mail Room <mailroom@HDP.com>; Langlois, Pam <palanglois@HDP.com>
Subject: RE: Trademark Application #88298093 ELEXCORE (Docket #4041TK200031)
Thank you Kim – I will seek instructions straightaway. I may receive instructions overnight but if not can you hold for another day or two?
Regards,
/gda/
Geoff
Geoffrey D. Aurini | Attorney at Law, Principal
O | 248.641.1238 M | 248.227.0880
IP Causes Worldwide
From: Moninghoff, Kim <Kim.Moninghoff@USPTO.GOV>
Sent: Tuesday, October 8, 2019 8:26 AM
To: Aurini, Geoffrey <gaurini@HDP.com>
Cc: Troy Mail Room <mailroom@HDP.com>; Langlois, Pam <palanglois@HDP.com>
Subject: RE: Trademark Application #88298093 ELEXCORE (Docket #4041TK200031)
EXTERNAL EMAIL
Good morning,
The battery monitoring units were added in the September 16, 2019, response and I considered them to be acceptable because the wording “electric and magnetic meters and testers” that precedes them is definite. If you want to add them to the list of telecommunications equipment, can we delete the term “units” or can you clarify what this is intended to add? The following amendment for Class 9 would be acceptable:
rotary converters; electric power distribution apparatus; electric power distribution apparatus, namely, inverters for vehicles and charging stations for electric vehicles; regulating apparatus, electric; lithium batteries; DC/DC converters; electrical cells and batteries; computers; electronic apparatus, namely, vehicle power train control units sold together as a unit with computer operating programs and software therefor; electronic apparatus, namely, lithium-ion battery electronic control units sold together as a unit with computer operating programs and software therefor; electric and magnetic meters and testers, namely, battery current sensors; conductors, electric; telecommunication machines and apparatus, namely,
computer hardware, base stations, cables, switches, andbattery monitors; magnetic cores; resistance wires; electrodes, other than welding electrodes and medical electrodes; parts and fittings for automobiles, namely, electrical door lock actuators, in Class 9.
Because inverters are classified in Class 9, we would need to do something like the following in Class 12:
Electric AC and DC motors for land vehicles; AC and DC motors and engines, for land vehicles; automobiles and their structural parts; parts and fittings for automobiles, namely, windshield washer tanks; two-wheeled motor vehicles, bicycles and their structural parts; machine elements, for land vehicles, namely, drive modules and drive systems, comprised primarily of motors and transaxles, and also including inverters; windshield wipers for automobiles, in Class 12.
If these additional amendments are acceptable, please let me know.
Kim Teresa Moninghoff
Trademark Examining Attorney
Law Office 113
Phone: 571-272-4738
All informal e-mail communications relevant to this application will be placed in the official application record.
From: Aurini, Geoffrey <gaurini@HDP.com>
Sent: Monday, October 7, 2019 2:58 PM
To: Moninghoff, Kim <Kim.Moninghoff@USPTO.GOV>
Cc: Troy Mail Room <mailroom@HDP.com>; Langlois, Pam <palanglois@HDP.com>
Subject: RE: Trademark Application #88298093 ELEXCORE (Docket #4041TK200031)
Importance: High
Hi, Kim. Could you let me know if you would accept the below proposals in red (class 7 is fine)? Many thanks!
Best Regards,
/gda/
Geoff Aurini
Electric AC and DC motors, other than for land vehicles; parts of electric AC and DC motors, other than for land vehicles; parts of electric AC and DC motors, for land vehicles, namely, motor generators; alternators; direct current generators; starters for motors and engines; electrically operated parts of machines, namely, brushes; AC and DC motors and engines, other than for land vehicles; power transmissions and gearing for machines and not for land vehicles; fuel dispensing machines for service stations; parts and fittings for automobiles, namely, windshield wiper motors, windshield washer pump motors, headlamp actuator motors, sun roof motors, power window motors, headlamp wiper motors, blower motors for radiator cooling, remote control mirror motors, oil pumps, actuator motors for power antennas, and pulse motors for directional control of rearview mirrors and for automatic spraying or jetting of cleansing fluid, in Class 7.
rotary converters; electric power distribution apparatus; electric power distribution apparatus, namely, inverters for vehicles and charging stations for electric vehicles; regulating apparatus, electric; lithium batteries; DC/DC converters; electrical cells and batteries; computers; electronic apparatus, namely, vehicle power train control units sold together as a unit with computer operating programs and software therefor; electronic apparatus, namely, lithium-ion battery electronic control units sold together as a unit with computer operating programs and software therefor; electric and magnetic meters and testers, namely, battery current sensors and battery monitoring units; conductors, electric; telecommunication machines and apparatus, namely, computer hardware, base stations, cables, and switches; magnetic cores; resistance wires; electrodes, other than welding electrodes and medical electrodes; parts and fittings for automobiles, namely, electrical door lock actuators, in Class 9.
In relation to the suggested wording highlighted in yellow, our client wishes to modify the part into "electric and magnetic meters and testers, namely, battery current sensors; telecommunication machines and apparatus, namely, battery monitoring unit", since our client considers that "battery monitoring unit" is a kind of telecommunication machines and apparatus.
Electric AC and DC motors for land vehicles; AC and DC motors and engines, for land vehicles; automobiles and their structural parts; parts and fittings for automobiles, namely, windshield washer tanks; two-wheeled motor vehicles, bicycles and their structural parts; machine elements, for land vehicles, namely, drive modules and drive systems, comprised of clutches, transmissions, drive shafts, and differentials; windshield wipers for automobiles, in Class 12.
In relation to the suggested wording highlighted in yellow, our client wishes to modify the part into "machine elements, for land vehicles, namely, drive modules and drive systems, comprised of inverters, motors and transaxle", since the client considers the relevant goods to be driving modules for electric vehicles.
Geoffrey D. Aurini | Attorney at Law, Principal
O | 248.641.1238 M | 248.227.0880
IP Causes Worldwide
From: Aurini, Geoffrey
Sent: Tuesday, October 1, 2019 11:28 AM
To: 'Moninghoff, Kim' <Kim.Moninghoff@USPTO.GOV>
Cc: Troy Mail Room <mailroom@HDP.com>; Langlois, Pam <palanglois@HDP.com>
Subject: RE: Trademark Application #88298093 ELEXCORE (Docket #4041TK200031)
Hi, Kim-thank you for your email. I have just written to our client requesting instructions in advance of next Wednesday.
Regards,
Geoff
Geoffrey D. Aurini | Attorney at Law, Principal
O | 248.641.1238 M | 248.227.0880
IP Causes Worldwide
From: Moninghoff, Kim <Kim.Moninghoff@USPTO.GOV>
Sent: Tuesday, October 1, 2019 8:11 AM
To: Aurini, Geoffrey <gaurini@HDP.com>
Cc: Troy Mail Room <mailroom@HDP.com>
Subject: Trademark Application #88298093 ELEXCORE (Docket #4041TK200031)
EXTERNAL EMAIL
Mr. Aurini,
I’ve reviewed the response you filed for this application. Some of the wording in Classes 7, 9, and 12 needs some further amendments, either because it is indefinite/overbroad/misclassified, or because it exceeds the scope of the goods in the foreign registration. The following amendments would address these issues:
Electric AC and DC motors, other than for land vehicles; parts of electric AC and DC motors, other than for land vehicles; parts of electric AC and DC motors, for land vehicles, namely, motor generators; alternators; direct current generators; starters for motors and engines; electrically operated parts of machines, namely, brushes; AC and DC motors and engines, other than for land vehicles; power transmissions and gearing for machines and not for land vehicles; fuel dispensing machines for service stations; parts and fittings for automobiles, namely, windshield wiper motors, windshield washer pump motors, headlamp actuator motors, sun roof motors, power window motors, headlamp wiper motors, blower motors for radiator cooling, remote control mirror motors, oil pumps, actuator motors for power antennas, and pulse motors for directional control of rearview mirrors and for automatic spraying or jetting of cleansing fluid, in Class 7.
rotary converters; electric power distribution apparatus; electric power distribution apparatus, namely, inverters for vehicles and charging stations for electric vehicles; regulating apparatus, electric; lithium batteries; DC/DC converters; electrical cells and batteries; computers; electronic apparatus, namely, vehicle power train control units sold together as a unit with computer operating programs and software therefor; electronic apparatus, namely, lithium-ion battery electronic control units sold together as a unit with computer operating programs and software therefor; electric and magnetic meters and testers, namely, battery current sensors and battery monitoring units; conductors, electric; telecommunication machines and apparatus, namely, computer hardware, base stations, cables, and switches; magnetic cores; resistance wires; electrodes, other than welding electrodes and medical electrodes; parts and fittings for automobiles, namely, electrical door lock actuators, in Class 9.
Electric AC and DC motors for land vehicles; AC and DC motors and engines, for land vehicles; automobiles and their structural parts; parts and fittings for automobiles, namely, windshield washer tanks; two-wheeled motor vehicles, bicycles and their structural parts; machine elements, for land vehicles, namely, drive modules and drive systems, comprised of clutches, transmissions, drive shafts, and differentials; windshield wipers for automobiles, in Class 12.
If you consent to these amendments, you can let me know by reply email or phone and I will enter them by Examiner’s Amendment and approve the mark for publication. If you have any questions, please let me know.
If I don’t hear back from you by the end of the day next Wednesday (10/9), I will issue a new non-Final Office action with an identification requirement for the above issues and a related information requirement. If you need more time than this to consult with the applicant, please let me know. Thank you.
Kim Teresa Moninghoff
Trademark Examining Attorney
Law Office 113
Phone: 571-272-4738
All informal e-mail communications relevant to this application will be placed in the official application record.
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