TEAS Request Reconsideration after FOA

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 1960 (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 1960 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 88310502 SAUTER SPEED TOOL(Standard Characters, see http://uspto.report/TM/88310502/mark.png) has been amended as follows:

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

In the Final Office Action dated October 15, 2019, the Examining Attorney required further specification of the wording “rotary indexing tables”.  Applicant notes that “rotary indexing tables” is a commonly used term in Applicant’s industry, as shown by Applicant’s brochures, articles and examples of third-party use of this terminology submitted herewith.  Accordingly, respectfully submits that “rotary indexing tables” is sufficiently definite and does not require further specification.

EVIDENCE
Evidence in the nature of brochures, articles and third party use has been attached.
Original PDF file:
evi_208251192218-20200214142418264464_._Applicant_s_Brochure_1__04204452_.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_208251192218-20200214142418264464_._Applicant_s_Brochure_2__04204453_.pdf
Converted PDF file(s) ( 6 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Original PDF file:
evi_208251192218-20200214142418264464_._cles_and_Third_Party_Use_-_Rotary_Indexing_Tables__04215377_.pdf
Converted PDF file(s) ( 13 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 007 for Machine tools, for forming, shaping or machining metal or plastic or other rigid materials by cutting, boring, grinding, sharpening or finishing; milling, drilling, copying and turning machines, tool turrets and tool disc turrets; replacement and structural parts for the aforesaid machines and turrets, in particular electric, hydraulic and electromechanical drives, positioning devices, gears, couplings, fluid valves, hydraulic and pneumatic and lubricant-dispensing units; rotary indexing tables; tool stores, namely, tool magazines; machine tool holders; machine tool and workpiece positioning holders; workpiece holders being parts of machines, interchangeable chucks for machines excluding land vehicles; power tools being parts of machines, namely, motor-driven spindles with and without swiveling units; industrial robots for machine handling and positioning; industrial robots for separating, cutting, joining, welding, milling, deburring, grinding, peeling, rolling and polishing; machines for gripping, moving and positioning mechanical components, including workpieces and/or tools; tool changers being parts of machines for mechanical rotation, turning and lifting; machine parts in the nature of conversion apparatus and mechanically driven apparatus for retaining, tensioning and gripping workpieces; operating devices being parts of machines for the aforesaid machines
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(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 017953766 registered 01/23/2019 with a renewal date of 09/12/2028 and an expiration date of 09/12/2028 ], 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.

Proposed:
Tracked Text Description: Machine tools, for forming, shaping or machining metal or plastic or other rigid materials by cutting, boring, grinding, sharpening or finishing; Machine tools for forming, shaping and machining metal, plastic or other rigid materials by cutting, boring, grinding, sharpening or finishing; milling, drilling, copying and turning machines, tool turrets and tool disc turrets; milling machines; replacement and structural parts for the aforesaid machines and turrets, in particular electric, hydraulic and electromechanical drives, positioning devices, gears, couplings, fluid valves, hydraulic and pneumatic and lubricant-dispensing units; drilling machines; copying machines, namely, machine tools for machining metal, which copies the form of a sample item to a work piece; tool stores, namely, tool magazines; metalworking turning machines; machine tool turrets and tool disc turrets used to allow equipment to carry multiple cutting tools at one time and mount individual tools in the correct sequence; replacement and structural parts for the aforesaid machines and turrets, in particular electric, hydraulic and electromechanical drives, positioning devices, namely, vices, clamps and jaws for use in the precision clamping of work pieces, gears, couplings, fluid valves, hydraulic and pneumatic and lubricant-dispensing units; workpiece holders being parts of machines, interchangeable chucks for machines excluding land vehicles; rotary indexing tables; machine tool holders; machine tool and workpiece positioning holders; workpiece holders being parts of machines; interchangeable chucks for machines for power drills and excluding land vehicles; power tools being parts of machines, namely, motor-driven spindles with and without swiveling units; industrial robots for machine handling and positioning; operating devices being parts of machines for the aforesaid machines; industrial robots for separating, cutting, joining, welding, milling, deburring, grinding, peeling, rolling and polishing; machines for gripping, moving and positioning mechanical components, including workpieces and/or tools; tool changers being parts of machines for mechanical rotation, turning and lifting; machine parts in the nature of conversion apparatus and mechanically driven apparatus for retaining, tensioning and gripping workpiecesClass 007 for Machine tools for forming, shaping and machining metal, plastic or other rigid materials by cutting, boring, grinding, sharpening or finishing; milling machines; drilling machines; copying machines, namely, machine tools for machining metal, which copies the form of a sample item to a work piece; metalworking turning machines; machine tool turrets and tool disc turrets used to allow equipment to carry multiple cutting tools at one time and mount individual tools in the correct sequence; replacement and structural parts for the aforesaid machines and turrets, in particular electric, hydraulic and electromechanical drives, positioning devices, namely, vices, clamps and jaws for use in the precision clamping of work pieces, gears, couplings, fluid valves, hydraulic and pneumatic and lubricant-dispensing units; rotary indexing tables; machine tool holders; machine tool and workpiece positioning holders; workpiece holders being parts of machines; interchangeable chucks for machines for power drills and excluding land vehicles; power tools being parts of machines, namely, motor-driven spindles with and without swiveling units; industrial robots for machine handling and positioning; industrial robots for separating, cutting, joining, welding, milling, deburring, grinding, peeling, rolling and polishing; machines for gripping, moving and positioning mechanical components, including workpieces and/or tools; tool changers being parts of machines for mechanical rotation, turning and lifting; machine parts in the nature of conversion apparatus and mechanically driven apparatus for retaining, tensioning and gripping workpieces
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(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 017953766 registered 01/23/2019 with a renewal date of 09/12/2028 and an expiration date of 09/12/2028 ], and translation thereof, if appropriate, before the application may proceed to registration. 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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Industrial automation controls, in particular NC and CNC controls for machine tools of all types, and for tool turrets and tool disc turrets with computers and data processing devices connected thereto; computers; computer software for use in operating machine tools; measuring devices, namely, revolution counters, torguemeters, length measuring devices, vibration measuring devices, speed control devices, laser measurement apparatus; signaling devices, namely, position and torque sensors, inductive, capacitive and optical transducers, annunciators and indicator lights; supervision devices, namely, surveillance apparatus for controlling and monitoring the actual working situation of all kind of working machines and their parts, like tool turrets; computers and computer programs for controlling, regulating and simulating manufacturing installations, industrial robots, industrial mobile platforms and tools, and tool carriers
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(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 017953766 registered 01/23/2019 with a renewal date of 09/12/2028 and an expiration date of 09/12/2028 ], 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.

Proposed:
Tracked Text Description: Industrial automation controls, in particular NC and CNC controls for machine tools of all types, and for tool turrets and tool disc turrets with computers and data processing devices connected thereto; computers; computer software for use in operating machine tools; computer software for operating machine tools; measuring devices, namely, revolution counters, torguemeters, length measuring devices, vibration measuring devices, speed control devices, laser measurement apparatus; measuring devices, namely, revolution counters, torguemeters, length measuring devices, vibration measuring devices, speed control devices and laser measurement apparatus; signaling devices, namely, position and torque sensors, inductive, capacitive and optical transducers, annunciators and indicator lights; signalling devices, namely, position and torque sensors, inductive, capacitive and optical transducers, annunciators and indicator lights; supervision devices, namely, surveillance apparatus for controlling and monitoring the actual working situation of all kind of working machines and their parts, like tool turrets; supervision devices, namely, surveillance apparatus, namely, software for controlling and monitoring the actual working situation of all kind of working machines and their parts, like tool turrets; computers and computer programs for controlling, regulating and simulating manufacturing installations, industrial robots, industrial mobile platforms and tools, and tool carriersClass 009 for Industrial automation controls, in particular NC and CNC controls for machine tools of all types, and for tool turrets and tool disc turrets with computers and data processing devices connected thereto; computers; computer software for operating machine tools; measuring devices, namely, revolution counters, torguemeters, length measuring devices, vibration measuring devices, speed control devices and laser measurement apparatus; signalling devices, namely, position and torque sensors, inductive, capacitive and optical transducers, annunciators and indicator lights; supervision devices, namely, surveillance apparatus, namely, software for controlling and monitoring the actual working situation of all kind of working machines and their parts, like tool turrets; computers and computer programs for controlling, regulating and simulating manufacturing installations, industrial robots, industrial mobile platforms and tools, and tool carriers
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(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 017953766 registered 01/23/2019 with a renewal date of 09/12/2028 and an expiration date of 09/12/2028 ], and translation thereof, if appropriate, before the application may proceed to registration. 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.

SIGNATURE(S)
Request for Reconsideration Signature
Signature: /Jeffrey H. Handelsman/     Date: 02/14/2020
Signatory's Name: Jeffrey H. Handelsman
Signatory's Position: Attorney for Applicant, MD Bar (Ref.: T57260)

Signatory's Phone Number: 703-716-1191

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.

The applicant is not filing a Notice of Appeal in conjunction with this Request for Reconsideration.

        
Serial Number: 88310502
Internet Transmission Date: Fri Feb 14 14:29:15 EST 2020
TEAS Stamp: USPTO/RFR-XXX.XXX.XXX.XXX-20200214142915
614347-88310502-70037fff12a67a2fc8389b21
4eff638ec709f1a65ed828e2a1ebd2eaef386f1d
7-N/A-N/A-20200214142418264464