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. 88322553 PROMAX(Standard Characters, see http://uspto.report/TM/88322553/mark.png) has been amended as follows:

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

1. Please amend the identification of goods to read as follows: "coordinate measuring machines and their parts; parts and accessories for coordinate measuring machines, namely, styli, styli racks and their parts." Applicant respectfully disagrees with the Examining Attorney's assertion that "coordinate measuring machines and their parts" is indefinite. The Trademark ID Manual indicates that this wording is acceptable. See, e.g., the Manual's listings for "Microscopes and their parts" (009-1967), "Umbrellas and their parts" (018-200), "Elevators and parts thereof" (007-687), and "Microscopes and their parts (009-1967), and "Machine guns and parts thereof" (013-98). 2. Applicant has requested the German intellectual property office to provide it with documentary confirmation of the renewal of its German ProMax registration. Applicant, which was not the original German registrant, does not currently have this document. It will be submitted following its receipt by Applicant.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for coordinate measuring machines and their parts; styli for coordinate measuring machines, styli racks and their parts for coordinate measuring 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(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Germany registration number 30093866 registered 03/12/2001 with a renewal date of 01/01/2011 and an expiration date of 12/31/2020 ], 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: coordinate measuring machines and their parts; styli for coordinate measuring machines, styli racks and their parts for coordinate measuring machines; parts and accessories for coordinate measuring machines, namely, styli, styli racks and their partsClass 009 for coordinate measuring machines and their parts; parts and accessories for coordinate measuring machines, namely, styli, styli racks and their parts
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 [ Germany registration number 30093866 registered 03/12/2001 with a renewal date of 01/01/2011 and an expiration date of 12/31/2020 ], 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.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Carl Zeiss 3D Automation GmbH, a limited liability company legally organized under the laws of Germany, having an address of
      Carl-Zeiss-Strasse 32
      Aalen, 73431
      Germany
      +00-
Proposed: Carl Zeiss 3D Automation GmbH, a limited liability company legally organized under the laws of Germany, having an address of
      Carl-Zeiss-Strasse 32
      Aalen, 73431
      Germany
      Email Address: XXXX
      +00-
Correspondence Information (current):
      Ronald S. Kadden
      PRIMARY EMAIL FOR CORRESPONDENCE: rkadden@vonmaltitz.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): ddonnelly@vonmaltitz.com

The docket/reference number is 4500.
Correspondence Information (proposed):
      Ronald S. Kadden
      PRIMARY EMAIL FOR CORRESPONDENCE: rkadden@vonmaltitz.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): ddonnelly@vonmaltitz.com

The docket/reference number is 4500.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /Ronald S. Kadden/     Date: 05/11/2020
Signatory's Name: Ronald S. Kadden
Signatory's Position: Attorney of record, New York Bar member

Signatory's Phone Number: 212-661-1400

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:    Ronald S. Kadden
   VON MALTITZ DERENBERG KUNIN JANSSEN & GIORDANO
   
   60 EAST 42ND STREET
   NEW YORK, New York 10165
Mailing Address:    Ronald S. Kadden
   VON MALTITZ DERENBERG KUNIN JANSSEN & GIORDANO
   60 EAST 42ND STREET
   NEW YORK, New York 10165
        
Serial Number: 88322553
Internet Transmission Date: Mon May 11 13:27:17 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XX-20200511132717939
040-88322553-710562a2b85e3fd21ab88d32458
cf54b82128129de841975ac6362aac6f2a53-N/A
-N/A-20200511130247677967