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. 88303184 J-QUAD DYNAMICS(Standard Characters, see http://uspto.report/TM/88303184/mark.png) has been amended as follows:

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

Please see the actual argument text attached within the Evidence section.

EVIDENCE

Original PDF file:
evi_4013576142-20191113145722960968_._QUAD_Brand_seals_automotove_-_Google_Search.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_4013576142-20191113145722960968_._Amazon.pdf
Converted PDF file(s) ( 5 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Original PDF file:
evi_4013576142-20191113145722960968_._rand_Plastic_Exclusion_Seals_-_Minnesota_Rubber_and_Plastics.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Original PDF file:
evi_4013576142-20191113145722960968_._esota_Rubber_and_Plastics_Design_Guide_Quad-Ring_Brand_Seals.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_4013576142-20191113145722960968_._Quad-Ring_commercial_use.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_4013576142-20191113145722960968_._Specimens_for_QUAD-RING_sealing_rings.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_4013576142-20191113145722960968_._Reg._No._for_QUAD-RING_for_seals_for_oil.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_4013576142-20191113145722960968_._ens_for_QUAD_brand_products_submitted_under_Reg._No._0916740.pdf
Converted PDF file(s) ( 10 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Original PDF file:
evi_4013576142-20191113145722960968_._for_seals_for_oil_filter_cartriddges_for_automotive_vehicles.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_1-4013576142-20191113145722960968_._Response_to_Office_Action.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Original PDF file:
evi_4013576142-20191113145722960968_._JQuad_Products__no_products_matching_automobile_.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_4013576142-20191113145722960968_._JQuad_Products__1_product_matching_automotive_.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_4013576142-20191113145722960968_._JQuad_Products__landing_page_.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_4013576142-20191113145722960968_._JQuad_Products__no_software_.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_4013576142-20191113145722960968_._JQuad_Products.pdf
Converted PDF file(s) ( 1 page)
Evidence-1

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; downloadable computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; computer programs for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; downloadable computer programs for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; downloadable music files featuring the operation of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; downloadable video files and movie files featuring the operation of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; recorded video discs and video tapes featuring the operation of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; audio and video recordings featuring the operation of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; downloadable musical sound recordings; electronic publications, namely, book, magazine and manual featuring the operation of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control recorded on computer media; downloadable electronic publications, namely, book, magazine and manual featuring the operation of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control
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 2018-153009 filed 12/13/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; downloadable and recorded computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; downloadable computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; computer programs for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; downloadable and recorded computer programs for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; downloadable computer programs for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; downloadable music files featuring the operation of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; downloadable video files and movie files featuring instruction regarding the operation of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; downloadable video files and movie files featuring the operation of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; recorded video discs and video tapes featuring instruction regarding the operation of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; recorded video discs and video tapes featuring the operation of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; audio and video recordings featuring instruction regarding the operation of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; audio and video recordings featuring the operation of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; downloadable musical sound recordings; electronic publications, namely, books, magazines and manuals featuring instruction regarding the operation of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control recorded on computer media; electronic publications, namely, book, magazine and manual featuring the operation of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control recorded on computer media; downloadable electronic publications, namely, books, magazines and manuals featuring instruction regarding the operation of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; downloadable electronic publications, namely, book, magazine and manual featuring the operation of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion controlClass 009 for downloadable and recorded computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; downloadable computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; downloadable and recorded computer programs for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; downloadable computer programs for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; downloadable video files and movie files featuring instruction regarding the operation of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; recorded video discs and video tapes featuring instruction regarding the operation of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; audio and video recordings featuring instruction regarding the operation of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; downloadable musical sound recordings; electronic publications, namely, books, magazines and manuals featuring instruction regarding the operation of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control recorded on computer media; downloadable electronic publications, namely, books, magazines and manuals featuring instruction regarding the operation of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control
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 2018-153009 filed 12/13/2018]. 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 proposes to amend the following class of goods/services in the application:
Current: Class 042 for design, programming or maintenance of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; providing non-downloadable computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; providing non-downloadable computer programs for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; cloud computing featuring computer software for with electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; rental of electronic circuits, magnetic discs, magnetic tapes, optical discs, magnetic optical discs and other media recorded with computer programs for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; rental of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; rental of computers; design of machines, apparatus and instruments, and their parts, as well as systems composed thereof; technological advice relating to the operation of computers, automobiles and industrial machines; testing or research of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control
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 2018-153009 filed 12/13/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: design, programming or maintenance of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; design, programming and maintenance of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; providing non-downloadable computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; providing on-line, non-downloadable computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; providing non-downloadable computer programs for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; providing on-line, non-downloadable computer programs for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; cloud computing featuring computer software for with electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; rental of electronic circuits, magnetic discs, magnetic tapes, optical discs, magnetic optical discs and other media recorded with computer programs for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; rental of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; rental of computers; design of machines, apparatus and instruments, and their parts, as well as systems composed thereof; technological advice relating to the operation of computers, automobiles and industrial machines; testing or research of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; testing and research of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion controlClass 042 for design, programming and maintenance of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; providing on-line, non-downloadable computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; providing on-line, non-downloadable computer programs for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; cloud computing featuring computer software for with electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; rental of electronic circuits, magnetic discs, magnetic tapes, optical discs, magnetic optical discs and other media recorded with computer programs for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; rental of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control; rental of computers; design of machines, apparatus and instruments, and their parts, as well as systems composed thereof; technological advice relating to the operation of computers, automobiles and industrial machines; testing and research of computer software for electronic control unit (ECU) for automobile engines for the purpose of self-driving and vehicle motion control
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 2018-153009 filed 12/13/2018]. 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: Geoffrey D. Aurini. Geoffrey D. Aurini of HARNESS, DICKEY & PIERCE, P.L.C., is located at

      SUITE 200
      5445 CORPORATE DRIVE
      TROY, Michigan 48098
      US
The docket/reference number is 4041TK200032.

The phone number is 248-641-1600.

The fax number is 248-641-0270.

The email address is troymailroom@hdp.com

The applicants proposed attorney information: Geoffrey D. Aurini. Other appointed attorneys are any and all attorneys associated with Harness, Dickey & Pierce, P.L.C.. Geoffrey D. Aurini of HARNESS, DICKEY & PIERCE, P.L.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

      SUITE 200
      5445 CORPORATE DRIVE
      TROY, Michigan 48098
      United States
The docket/reference number is 4041TK200032.

The phone number is 248-641-1600.

The fax number is 248-641-0270.

The email address is troymailroom@hdp.com

Geoffrey D. Aurini 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: GEOFFREY D. AURINI. GEOFFREY D. AURINI of HARNESS, DICKEY & PIERCE, P.L.C., is located at

      SUITE 200
      5445 CORPORATE DRIVE
      TROY, Michigan 48098
      US
The docket/reference number is 4041TK200032.

The phone number is 248-641-1600.

The fax number is 248-641-0270.

The email address is troymailroom@hdp.com

The applicants proposed correspondence information: Geoffrey D. Aurini. Geoffrey D. Aurini of HARNESS, DICKEY & PIERCE, P.L.C., is located at

      SUITE 200
      5445 CORPORATE DRIVE
      TROY, Michigan 48098
      United States
The docket/reference number is 4041TK200032.

The phone number is 248-641-1600.

The fax number is 248-641-0270.

The email address is troymailroom@hdp.com

SIGNATURE(S)
Response Signature
Signature: /gda/     Date: 11/13/2019
Signatory's Name: Geoffrey D. Aurini
Signatory's Position: Attorney of Record, Michigan Bar Member

Signatory's Phone Number: 248-641-1238

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:    GEOFFREY D. AURINI
   HARNESS, DICKEY & PIERCE, P.L.C.
   SUITE 200
   5445 CORPORATE DRIVE
   TROY, Michigan 48098
Mailing Address:    Geoffrey D. Aurini
   HARNESS, DICKEY & PIERCE, P.L.C.
   SUITE 200
   5445 CORPORATE DRIVE
   TROY, Michigan 48098
        
Serial Number: 88303184
Internet Transmission Date: Wed Nov 13 15:12:51 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2019111315125117
9882-88303184-700d51dbe122a18e1bf453b1c8
0525bbc7fe024c03db0e1b52d744573486920-N/
A-N/A-20191113145722960968