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. 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 response to the Office Action issued on May 7, 2019, Applicant hereby submits a claim of acquired distinctiveness based on its prior Registration Nos. 0900711 and 4284633.  Accordingly, Applicant respectfully requests that the Examining Attorney withdraw the surname refusal and approve the application for publication.

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, milling, drilling, copying and turning machines, tool turrets and tool disc turrets, parts for the aforesaid machines and turrets, in particular electric, hydraulic and electromechanical drives, including positioning devices, gears, couplings, fluid valves, hydraulic and pneumatic and lubricant-dispensing units; Rotary indexing tables, tool magazines, tool holders, tool and workpiece positioning units, workpiece holders, interchangeable chucks; Power tools; Robots (machines), Handling apparatus and Positioning devices; Robots (machines) 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, mechanical rotation, turning, lifting and conversion apparatus and mechanically driven apparatus for retaining, tensioning and gripping workpieces; Operating devices 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(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[ European Union Trademark - EUTM application number 017953766 filed 09/12/2018]. 15 U.S.C.Section 1126(d), as amended.

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, milling, drilling, copying and turning machines, tool turrets and tool disc turrets, parts for the aforesaid machines and turrets, in particular electric, hydraulic and electromechanical drives, including positioning devices, gears, couplings, fluid valves, hydraulic and pneumatic and lubricant-dispensing units; Machine tools, for forming, shaping or machining metal or plastic or other rigid materials by cutting, boring, grinding, sharpening or finishing; Rotary indexing tables, tool magazines, tool holders, tool and workpiece positioning units, workpiece holders, interchangeable chucks; milling, drilling, copying and turning machines, tool turrets and tool disc turrets; Power tools; 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; Robots (machines), Handling apparatus and Positioning devices; rotary indexing tables; Robots (machines) for separating, cutting, joining, welding, milling, deburring, grinding, peeling, rolling and polishing; tool stores, namely, tool magazines; machine tool holders; Tool changers, mechanical rotation, turning, lifting and conversion apparatus and mechanically driven apparatus for retaining, tensioning and gripping workpieces; machine tool and workpiece positioning holders; Operating devices for the aforesaid machines; 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 machinesClass 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
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 [ European Union Trademark - EUTM application number 017953766 filed 09/12/2018]. 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 [ 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 Controls, in particular NC and CNC controls for machine tools of all types, and for tool turrets and tool disc turrets, computers and data processing devices connected thereto, computers, software; Measuring, signalling and checking (supervision) apparatus; Computers and computer programs, in particular for controlling, regulating and simulating manufacturing installations, robots, 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(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[ European Union Trademark - EUTM application number 017953766 filed 09/12/2018]. 15 U.S.C.Section 1126(d), as amended.

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: Controls, in particular NC and CNC controls for machine tools of all types, and for tool turrets and tool disc turrets, computers and data processing devices connected thereto, computers, software; 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; Measuring, signalling and checking (supervision) apparatus; computers; Computers and computer programs, in particular for controlling, regulating and simulating manufacturing installations, robots, mobile platforms and tools, and tool carriers; 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; 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; 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 use in operating machine tools; measuring devices, namely, revolution counters, torguemeters, length measuring devices, vibration measuring devices, speed control devices, laser measurement apparatus; 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; 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(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 [ European Union Trademark - EUTM application number 017953766 filed 09/12/2018]. 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 [ 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.

The applicant's current attorney information: Jeffrey H. Handelsman. Jeffrey H. Handelsman of GREENBLUM & BERNSTEIN, P.L.C., is located at

      1950 ROLAND CLARKE PLACE
      RESTON, Virginia 20191-1411
      US
The docket/reference number is T57260.

The phone number is 703-716-1191.

The fax number is 703-716-1180.

The email address is eteas@gbpatent.com

The applicants proposed attorney information: Jeffrey H. Handelsman. Other appointed attorneys are Neil F. Greenblum; Bruce H. Bernstein; William S. Boshnick; Jill M. Browning; and the attorneys of Greenblum & Bernstein, P.L.C.. Jeffrey H. Handelsman of GREENBLUM & BERNSTEIN, 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

      1950 ROLAND CLARKE PLACE
      RESTON, Virginia 20191-1411
      United States
The docket/reference number is T57260.

The phone number is 703-716-1191.

The fax number is 703-716-1180.

The email address is eteas@gbpatent.com

Jeffrey H. Handelsman 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: JEFFREY H. HANDELSMAN. JEFFREY H. HANDELSMAN of GREENBLUM & BERNSTEIN, P.L.C., is located at

      1950 ROLAND CLARKE PLACE
      RESTON, Virginia 20191-1411
      US
The docket/reference number is T57260.

The phone number is 703-716-1191.

The fax number is 703-716-1180.

The email address is eteas@gbpatent.com

The applicants proposed correspondence information: Jeffrey H. Handelsman. Jeffrey H. Handelsman of GREENBLUM & BERNSTEIN, P.L.C., is located at

      1950 ROLAND CLARKE PLACE
      RESTON, Virginia 20191-1411
      United States
The docket/reference number is T57260.

The phone number is 703-716-1191.

The fax number is 703-716-1180.

The email address is eteas@gbpatent.com

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use "SPEED TOOL" apart from the mark as shown.


Claim of Active Prior Registration(s)
The applicant claims ownership of active prior U.S. Registration Number(s) 0900711 and 4284633.


Significance of wording, letter(s), or numeral(s)
"SPEED TOOL" 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.


SECTION 2(f) Claim of Acquired Distinctiveness, IN PART, based on Active Prior Registration(s)
"SAUTER" has become distinctive of the goods/services as evidenced by the ownership on the Principal Register for the same mark for sufficiently similar goods/services of active U.S. Registration No(s). 0900711 and 4284633


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: /Jeffrey H. Handelsman/     Date: 10/07/2019
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.

Mailing Address:    JEFFREY H. HANDELSMAN
   GREENBLUM & BERNSTEIN, P.L.C.
   
   1950 ROLAND CLARKE PLACE
   RESTON, Virginia 20191-1411
Mailing Address:    Jeffrey H. Handelsman
   GREENBLUM & BERNSTEIN, P.L.C.
   1950 ROLAND CLARKE PLACE
   RESTON, Virginia 20191-1411
        
Serial Number: 88310502
Internet Transmission Date: Mon Oct 07 16:25:31 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20191007162531
496794-88310502-61002a6c6220f2ca9f94b4cc
a0f206c75a4c62d9e3b68de81c9e87d4b8d52b1-
N/A-N/A-20191007161545683610