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. 88307206 BLUE NEXUS (Stylized and/or with Design, see http://uspto.report/TM/88307206/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 007 for motors, electric, other than for land vehicles; parts of motors, electric, other than for land vehicles; parts of motors, electric, for land vehicles; alternators; direct current generators; starters for motors and engines; parts of machines, namely, electrically operated brushes; motors and engines, other than for land vehicles; parts of motors and engines; parts of motors and engines for land vehicles; machine elements, namely, power transmissions and gearing; machine elements, other than for land vehicles; fuel dispensing machines for service stations
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 2019-026793 filed 02/19/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: motors, electric, other than for land vehicles; parts of motors, electric, other than for land vehicles; parts of motors, electric, for land vehicles; parts of motors, electric, for land vehicles, namely motor generators; alternators; direct current generators; starters for motors and engines; parts of machines, namely, electrically operated brushes; motors and engines, other than for land vehicles; parts of motors and engines; parts of motors and engines for land vehicles; machine elements, other than for land vehicles; machine elements, namely, power transmissions and gearing; fuel dispensing machines for service stationsClass 007 for motors, electric, other than for land vehicles; parts of motors, electric, other than for land vehicles; parts of motors, electric, for land vehicles; parts of motors, electric, for land vehicles, namely motor generators; alternators; direct current generators; starters for motors and engines; parts of machines, namely, electrically operated brushes; motors and engines, other than for land vehicles; parts of motors and engines; parts of motors and engines for land vehicles; machine elements, namely, power transmissions and gearing; fuel dispensing machines for service stations
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 2019-026793 filed 02/19/2019]. 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 proposes to amend the following class of goods/services in the application:
Current: Class 009 for rotary converters; phase modifiers; power distribution or control machines and apparatus; lithium batteries; DC/DC converters; electrical cells and batteries; electronic machines, apparatus and their parts; computers; computer programs; computer software; electric or magnetic meters and testers; conductors, electric; telecommunication machines and apparatus; magnetic cores; resistance wires; electrodes
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 2019-026793 filed 02/19/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: rotary converters; phase modifiers; electric power distribution apparatus; power distribution or control machines and apparatus; electric power distribution or control machines and apparatus, namely, charging stations for electric vehicles; regulating apparatus, electric; lithium batteries; DC/DC converters; electronic machines, apparatus and their parts; electrical cells and batteries; electronic machines, apparatus and their parts, namely, vehicle power train control unit and computer operating programs and software therefor and lithium-ion battery electronic control unit and computer operating programs and software therefor; computer programs; computers; computer software; electric and magnetic meters and testers, namely, battery current sensors and battery monitoring units; electric or magnetic meters and testers; conductors, electric; telecommunication machines and apparatus, namely, computer hardware, base stations, cables, and switches; telecommunication machines and apparatus; magnetic cores; resistance wires; electrodesClass 009 for rotary converters; electric power distribution apparatus; electric power distribution or control machines and apparatus, namely, charging stations for electric vehicles; regulating apparatus, electric; lithium batteries; DC/DC converters; electrical cells and batteries; electronic machines, apparatus and their parts, namely, vehicle power train control unit and computer operating programs and software therefor and lithium-ion battery electronic control unit and computer operating programs and software therefor; computers; 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
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 2019-026793 filed 02/19/2019]. 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 proposes to amend the following class of goods/services in the application:
Current: Class 012 for motors, electric, for land vehicles; motors and engines, for land vehicles; automobiles and their parts and fittings; two-wheeled motor vehicles, bicycles and their parts and fittings; machine elements, for land vehicles
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 2019-026793 filed 02/19/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: motors, electric, for land vehicles; motors and engines, for land vehicles; automobiles and their parts and fittings; automobiles and their structural parts; two-wheeled motor vehicles, bicycles and their parts and fittings; parts and fittings for automobiles, namely, power transmission for vehicles, power transmission mechanisms for vehicles, power transmission parts for vehicles, hybrid transmission, hybrid drive unit, drive unit for electric vehicles in addition to power transmission for vehicles, power transmission mechanisms for vehicles, power transmission parts for vehicles; machine elements, for land vehicles; machine elements, for land vehicles, namely, drive modules for land vehicles and/or drive systems for land vehiclesClass 012 for motors, electric, for land vehicles; motors and engines, for land vehicles; automobiles and their structural parts; parts and fittings for automobiles, namely, power transmission for vehicles, power transmission mechanisms for vehicles, power transmission parts for vehicles, hybrid transmission, hybrid drive unit, drive unit for electric vehicles in addition to power transmission for vehicles, power transmission mechanisms for vehicles, power transmission parts for vehicles; machine elements, for land vehicles, namely, drive modules for land vehicles and/or drive systems for land vehicles
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 2019-026793 filed 02/19/2019]. 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: 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 4041TK200033.

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 4041TK200033.

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 4041TK200033.

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 4041TK200033.

The phone number is 248-641-1600.

The fax number is 248-641-0270.

The email address is troymailroom@hdp.com

ADDITIONAL STATEMENTS
Description of mark
The mark consists of the stylized blue wording "BLUE NEXUS".

Miscellaneous Statement
To assist the Examiner in proper examination of the application, Applicant has submitted detailed product information about the goods. Applicant informs Examiner that the foreign registration has not yet issued.

Original PDF file:
mis-4013576142-20190916131101751250_._Products_for_ELEXCORE.pdf
Converted PDF file(s) ( 10 pages)
Miscellaneous File1
Miscellaneous File2
Miscellaneous File3
Miscellaneous File4
Miscellaneous File5
Miscellaneous File6
Miscellaneous File7
Miscellaneous File8
Miscellaneous File9
Miscellaneous File10

SIGNATURE(S)
Response Signature
Signature: /gda/     Date: 09/16/2019
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: 88307206
Internet Transmission Date: Mon Sep 16 13:40:54 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2019091613405440
8792-88307206-61017ad9856ce4ae60943de3c6
4e751be446bf55a5bceefdc63e5fe35e537ec-N/
A-N/A-20190916131101751250