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. 88307219 DYNABOOK(Standard Characters, see http://uspto.report/TM/88307219/mark.png) has been amended as follows:

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

This amendment and response is submitted in reply to the Office Action issued May 7, 2019.  The Office Action requested amendments to the goods and services, an explanation of the meaning or significance in the industry of DYNABOOK, and a copy of the foreign registration and English translation pursuant to Section 44.

 

GOODS AND SERVICES IDENTIFICATIONS

 

In response to the request for clarification of the identifications of goods and services, Applicant is submitting a revised description of the goods and services that reflects the recommendations of the Examining Attorney.  Accordingly, Applicant believes the amended description now meets the requirements for clarity.

 

SIGNIFICANCE OF “DYNABOOK”

 

The Examining Attorney has asked whether DYNABOOK has any significance as applied to the goods and/or services in the application, or as a term of art within Applicant’s industry. 

 

Insofar as Applicant is aware, DYNABOOK has no meaning or significance as applied to the goods and/or services in the application, nor is DYNABOOK a term of art within Applicant’s industry.  Instead, DYNABOOK is a coined term by Applicant.  Applicant notes also that DYNABOOK is the subject of a prior registration on the Principal Register, U.S. Trademark Registration No. 4395099, which registered on September 3, 2013.  The registration initially was issued to Applicant’s predecessor, Kabushiki Kaisha Toshiba TA Toshiba Corporation, and is now owned by Applicant.

FOREIGN REGISTRATION/BASIS FOR APPLICATION

 

The Examining Attorney also noted that the application specifies a claim of priority under Section 44(d) based on a foreign application with intent to perfect under Section 44(e).  Applicant’s Japanese trademark application, on which the 44(d) priority claim is based, registered under Japanese Trademark Reg. No. 6180342 on September 13, 2019.  Applicant is submitting herewith a copy of the Japanese registration and its English translation signed by the translator.

 

CONCLUSION

 

Applicant notes that the Examining Attorney has searched the Office records and found no prior registered or pending mark that would bar registration of Applicant’s mark under Section 2(d).  Upon submission of this response, it is believed that this application is now in condition for publication.  Such action is respectfully requested.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for AC adapters; power distribution or control machines and apparatus; rechargeable batteries; batteries and cells; battery packs for computer; event recorders; digital cameras; devices for wireless radio transmission; telecommunication machines and apparatus; parts and accessories for telecommunication machines and apparatus; mobile phones; smartphones; battery chargers for mobile phone and smartphone; parts and accessories for mobile phone and smartphone; covers and cases for mobile phone and smartphone; computer network adapters, switches, routers and hubs; TV tuners for computer; personal digital assistants; smartglasses; detachable computers; wearable computers; personal computers; computer servers; other electronic machine; computer security software (downloadable / recorded); computer system management software (downloadable / recorded); cloud computing software (downloadable / recorded); other computer software (downloadable / recorded); display units for computers; keyboards for computer; mice for computer; digitizer pens; computer styluses; port replicator units; memory boards for computer; computer peripherals and accessories; downloadable image files, video files, movie files via internet; electronic publications
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 2018-123031 filed 09/28/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: AC adapters; Electrical AC adapters; power distribution or control machines and apparatus; power distribution or control machines and apparatus, namely, electrical power distribution units; rechargeable batteries; batteries and cells; batteries and electrical cells; battery packs for computer; event recorders; digital cameras; devices for wireless radio transmission; telecommunication machines and apparatus; telecommunication machines and apparatus, namely, cell phones; parts and accessories for telecommunication machines and apparatus; parts and accessories for telecommunication machines and apparatus, namely, cell phone covers; mobile phones; smartphones; battery chargers for mobile phone and smartphone; parts and accessories for mobile phone and smartphone; parts and accessories for mobile phone and smartphone, namely, protective covers and cases for mobile phones and smartphones; covers and cases for mobile phone and smartphone; computer network adapters, switches, routers and hubs; TV tuners for computer; personal digital assistants; smartglasses; portable computers that can be detached from computer docking stations; detachable computers; portable computers that can be worn on a person's wrist; wearable computers; personal computers; computer servers; downloadable and recorded computer security software for use in data inspection; other electronic machine; downloadable and recorded computer software for use in computer system resource management; computer security software (downloadable / recorded); downloadable and recorded cloud computing software for managing virtual machines on a cloud computing platform; computer system management software (downloadable / recorded); downloadable and recorded computer software for database management; cloud computing software (downloadable / recorded); display apparatus adapted for use with computers, namely, computer monitors, computer monitor arms, and electronic display interfaces; other computer software (downloadable / recorded); keyboards for computer; display units for computers; mice for computer; electronic pens; computer styluses; digitizer pens; computer hardware in the nature of USB port replicators and video port replicators; memory boards for computer; port replicator units; computer peripherals and parts thereof; downloadable image files and downloadable multimedia files containing videos relating to the fields of education, sales and promotion; computer peripherals and accessories; downloadable electronic publications in the nature of electronic newsletters, books, journals, and magazines in the field of education, sales and promotion; downloadable image files, video files, movie files via internet; electronic publicationsClass 009 for Electrical AC adapters; power distribution or control machines and apparatus, namely, electrical power distribution units; rechargeable batteries; batteries and electrical cells; battery packs for computer; event recorders; digital cameras; devices for wireless radio transmission; telecommunication machines and apparatus, namely, cell phones; parts and accessories for telecommunication machines and apparatus, namely, cell phone covers; mobile phones; smartphones; battery chargers for mobile phone and smartphone; parts and accessories for mobile phone and smartphone, namely, protective covers and cases for mobile phones and smartphones; computer network adapters, switches, routers and hubs; TV tuners for computer; personal digital assistants; smartglasses; portable computers that can be detached from computer docking stations; portable computers that can be worn on a person's wrist; personal computers; computer servers; downloadable and recorded computer security software for use in data inspection; downloadable and recorded computer software for use in computer system resource management; downloadable and recorded cloud computing software for managing virtual machines on a cloud computing platform; downloadable and recorded computer software for database management; display apparatus adapted for use with computers, namely, computer monitors, computer monitor arms, and electronic display interfaces; keyboards for computer; mice for computer; electronic pens; computer styluses; computer hardware in the nature of USB port replicators and video port replicators; memory boards for computer; computer peripherals and parts thereof; downloadable image files and downloadable multimedia files containing videos relating to the fields of education, sales and promotion; downloadable electronic publications in the nature of electronic newsletters, books, journals, and magazines in the field of education, sales and promotion
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 2018-123031 filed 09/28/2018]. 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.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Japan registration number 6180342 registered 09/13/2019 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU0-42851130-144849066_._JP_Reg_Cert_and_English_translation.pdf
Converted PDF file(s) ( 6 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5
Foreign Registration-6

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Providing information concerning commercial sales; mediation of mail-order sales via internet; providing information concerning commercial sales via internet and electronic mail; providing information and conducting consultation concerning information technology innovation; retail services or wholesale services for electrical machinery and apparatuses; management of computerized files; computerized database management; compilation and systemization of information into computer databases
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 2018-123031 filed 09/28/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Providing information concerning commercial sales; mediation of mail-order sales via internet; mediation of mail-order sales via internet, namely, mediation of agreements regarding the mail-order sales and purchase of goods via the Internet; providing information concerning commercial sales via internet and electronic mail; providing information and conducting consultation concerning information technology innovation; providing business information and business consultation services concerning information technology innovation including suggestion on suitable computer compositions; retail services or wholesale services for electrical machinery and apparatuses; wholesale and retail store services featuring electrical machinery and apparatus; management of computerized files; computerized database management; compilation and systemization of information into computer databasesClass 035 for Providing information concerning commercial sales; mediation of mail-order sales via internet, namely, mediation of agreements regarding the mail-order sales and purchase of goods via the Internet; providing information concerning commercial sales via internet and electronic mail; providing business information and business consultation services concerning information technology innovation including suggestion on suitable computer compositions; wholesale and retail store services featuring electrical machinery and apparatus; management of computerized files; computerized database management; compilation and systemization of information into computer databases
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 2018-123031 filed 09/28/2018]. 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.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Japan registration number 6180342 registered 09/13/2019 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU1-42851130-144849066_._JP_Reg_Cert_and_English_translation.pdf
Converted PDF file(s) ( 6 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5
Foreign Registration-6

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 037 for Installation, maintenance and repair of computer hardware; repair or maintenance of electronic machines and apparatus; repair or maintenance of telecommunication machines and apparatus
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 2018-123031 filed 09/28/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed: Class 037 for Installation, maintenance and repair of computer hardware; repair or maintenance of electronic machines and apparatus; repair or maintenance of telecommunication machines and apparatus
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 2018-123031 filed 09/28/2018]. 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.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Japan registration number 6180342 registered 09/13/2019 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU2-42851130-144849066_._JP_Reg_Cert_and_English_translation.pdf
Converted PDF file(s) ( 6 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5
Foreign Registration-6

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 040 for Collection, sorting, recycling and disposal of industrial waste and trash
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 2018-123031 filed 09/28/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Collection, sorting, recycling and disposal of industrial waste and trash; Sorting of waste and recyclable material; recycling of industrial waste and trash; destruction of industrial waste and trashClass 040 for Sorting of waste and recyclable material; recycling of industrial waste and trash; destruction of industrial waste and trash
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 2018-123031 filed 09/28/2018]. 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.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Japan registration number 6180342 registered 09/13/2019 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU3-42851130-144849066_._JP_Reg_Cert_and_English_translation.pdf
Converted PDF file(s) ( 6 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5
Foreign Registration-6

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

The applicant's current attorney information: Helen Hill Minsker. Helen Hill Minsker of BANNER & WITCOFF, LTD., is located at

      71 S. WACKER DRIVE, SUITE 3600
      CHICAGO, Illinois 60606
      US
The docket/reference number is 001582.01106.

The phone number is 312-463-5000.

The fax number is 312-463-5001.

The email address is bwptotm@bannerwitcoff.com

The applicants proposed attorney information: Helen Hill Minsker. Other appointed attorneys are Helen Hill Minsker, Richard S. Stockton, Katherine L. Fink, Anna L. King, Maurine L. Knutsson, Heather R. Smith-Carra, Elizabeth A. Brodzinski, Janet J. Lee, William F. Rauchholz, Dale H. Hoscheit, Joseph M. Potenza, Robert F. Altherr, Ross A. Dannenberg, John M. Fleming, Jordan N. Bodner, Steve S. Chang, Gary D. Fedorochko, Christopher R. Glembocki, Lisa M. Hemmendinger, Sarah A. Kagan, Robert S. Katz, Christopher L. McKee, Frederic M. Meeker, Darrell G. Mottley, H. Wayne Porter, Christopher B. Roth, Joseph M. Skerpon, Benjamin C. Spehlmann, Susan A. Wolffe, Bradley C. Wright, Paul M. Rivard, C. Andy Mu, Evan M. Clark, Michael Cuviello, Joseph J. Berghammer, Marc S. Cooperman, J. Pieter van Es, Michael L. Krashin, Jon O. Nelson, Christopher J. Renk, Binal J. Patel, Charles W. Shifley, William Allen, Matthew P. Becker, Scott A. Burow, Michael Harris, Erik S. Maurer, Charles L. Miller, Janice V. Mitrius, Thomas K. Pratt, Robert H. Resis, Gregory G. Schlenz, Jason Shull, Timothy C. Meece, Sheldon W. Witcoff, Katie L. Becker, Bradley J. Van Pelt, Timothy J. Rechtien, Aseet Patel, Matthew May, Aimee B. Kolz, Louis DiSanto, Azuka Dike, Audra Eidem Heinze, Sean Jungels, Gregory J. Cohan, John P. Iwanicki, Ernest V. Linek, Eric Hamp, Victoria R. M. Webb, Brian Emfinger, Rajit Kapur, Elizabeth Almeter, Peter Nigrelli, Kevin Keenan, Joshua Davenport, Camille Sauer, Shambhavi Patel, Pei Wu, John A. Webb, Jr., Robert Boyd, Bennett Ingvoldstad, Justin Philpott, Eric Zelepegus, Zach Getzelman, Kim Devine, Kurt Riester, Alisa Abbott, Joshua Schneider, Kirk Sigmon, Kevin Dam, Anthony J. Denis, Kerry Creeron, Craig Kronenthal, Brian Apel, John H. Curry, Manav Das, Christopher J. Galfano, Apurv Gaurav, John R. Hutchins, Scott M. Kelly, Novaira Paul, Patrick Richey, Blair Silver, Brent Whitlock. Helen Hill Minsker of BANNER & WITCOFF, LTD., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      71 S. WACKER DRIVE, SUITE 3600
      CHICAGO, Illinois 60606
      United States
The docket/reference number is 001582.01106.

The phone number is 312-463-5000.

The fax number is 312-463-5001.

The email address is bwptotm@bannerwitcoff.com

Helen Hill Minsker 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: HELEN HILL MINSKER. HELEN HILL MINSKER of BANNER & WITCOFF, LTD., is located at

      71 S. WACKER DRIVE, SUITE 3600
      CHICAGO, Illinois 60606
      US
The docket/reference number is 001582.01106.

The phone number is 312-463-5000.

The fax number is 312-463-5001.

The email address is bwptotm@bannerwitcoff.com; hminsker@bannerwitcoff.com; sward@bannerwitcoff.com

The applicants proposed correspondence information: Helen Hill Minsker. Helen Hill Minsker of BANNER & WITCOFF, LTD., is located at

      71 S. WACKER DRIVE, SUITE 3600
      CHICAGO, Illinois 60606
      United States
The docket/reference number is 001582.01106.

The phone number is 312-463-5000.

The fax number is 312-463-5001.

The email address is bwptotm@bannerwitcoff.com

ADDITIONAL STATEMENTS
Claim of Active Prior Registration(s)
The applicant claims ownership of active prior U.S. Registration Number(s) 4395099.


Significance of wording, letter(s), or numeral(s)
DYNABOOK appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as used in connection with the goods/services/collective membership organization listed in the application, or any geographical significance.


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: /helen hill minsker/     Date: 11/04/2019
Signatory's Name: Helen Hill Minsker
Signatory's Position: Attorney of record, Illinois and DC bar member

Signatory's Phone Number: 312-463-5000

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:    HELEN HILL MINSKER
   BANNER & WITCOFF, LTD.
   
   71 S. WACKER DRIVE, SUITE 3600
   CHICAGO, Illinois 60606
Mailing Address:    Helen Hill Minsker
   BANNER & WITCOFF, LTD.
   71 S. WACKER DRIVE, SUITE 3600
   CHICAGO, Illinois 60606
        
Serial Number: 88307219
Internet Transmission Date: Mon Nov 04 15:03:59 EST 2019
TEAS Stamp: USPTO/ROA-X.XX.XX.XXX-201911041503592231
32-88307219-700e88afdc8163e2f83dfe2ecb72
ccb465251def36abe7817baedfee83e7d1b2af-N
/A-N/A-20191104144849066722