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. 88342265 47 MAGIC 107.86 (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8834226 5/large) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 001 for Chemicals used in industry and science; chemicals used in connection and joining technology in the nature of chemicals for industrial purposes; tempering preparations, and soldering chemicals; conductive pastes for use in the manufacture of electronic components, namely, chip resistors, chip capacitors, chip inductors, and their compound components; and conductive pastes used for connecting semi-conductor chips and electronic components to lead frames or boards; adhesives used in industry; all the aforesaid goods made in significant part of silver
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.


Proposed:

Tracked Text Description: Chemicals used in industry and science; Chemicals for use in industry and science; chemicals used in connection and joining technology in the nature of chemicals for industrial purposes; chemical products for use in connection technology; tempering preparations, and soldering chemicals; chemical agents for hardening, soldering and sintering metals; conductive pastes for use in the manufacture of electronic components, namely, chip resistors, chip capacitors, chip inductors, and their compound components; adhesives for industrial purposes, conductive adhesives for industrial purposes; and conductive pastes used for connecting semi-conductor chips and electronic components to lead frames or boards; conductive pastes for industrial purposes for further use in the manufacture of electronic components; adhesives used in industry; all of the aforesaid goods made in significant part of silver.; all the aforesaid goods made in significant part of silverClass 001 for Chemicals for use in industry and science; chemical products for use in connection technology; chemical agents for hardening, soldering and sintering metals; adhesives for industrial purposes, conductive adhesives for industrial purposes; conductive pastes for industrial purposes for further use in the manufacture of electronic components; all of the aforesaid goods made in significant part of silver.
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 009247231 registered 11/29/2010 with a renewal date of __________ and an expiration date of 06/29/2020 ], 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.
Original PDF file:
FRU0-69121125178-15515186 7_._88342265_-_home_regis tration.pdf
Converted PDF file(s) ( 6 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3Foreign Registration-4Foreign Registration-5Foreign Registration-6
Original PDF file:
FRU0-69121125178-15515186 7_._88342265_EU_file_info rmation.pdf
Converted PDF file(s) ( 4 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3Foreign Registration-4
Original PDF file:
FRU0-69121125178-15515186 7_._nfirming_transfer_of_ EU_registration_to_curren t_US_applicant.pdf
Converted PDF file(s) ( 2 pages) Foreign Registration-1Foreign Registration-2
Original PDF file:
FRU0-69121125178-15515186 7_._Heraeus_1184.1_-_Tran slation.pdf
Converted PDF file(s) ( 4 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3Foreign Registration-4

Applicant proposes to amend the following:

Current:
Class 006 for Solder metal pastes and solder pastes; all the aforesaid goods made in significant part of silver; precious metal compounds in the form of powders and pastes made from theses powders used in manufacturing, all for further manufacturing
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.


Proposed:

Tracked Text Description: Solder metal pastes and solder pastes; Metal pastes, namely, solder pastes; all the aforesaid goods made in significant part of silver; solder pastes; precious metal compounds in the form of powders and pastes made from theses powders used in manufacturing, all for further manufacturing; conductive pastes, namely, solder paste; all of the aforesaid goods made in significant part of silver.Class 006 for Metal pastes, namely, solder pastes; solder pastes; conductive pastes, namely, solder paste; all of the aforesaid goods made in significant part of silver.
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 009247231 registered 11/29/2010 with a renewal date of __________ and an expiration date of 06/29/2020 ], 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.
Original PDF file:
FRU1-69121125178-15515186 7_._88342265_-_home_regis tration.pdf
Converted PDF file(s) ( 6 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3Foreign Registration-4Foreign Registration-5Foreign Registration-6
Original PDF file:
FRU1-69121125178-15515186 7_._88342265_EU_file_info rmation.pdf
Converted PDF file(s) ( 4 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3Foreign Registration-4
Original PDF file:
FRU1-69121125178-15515186 7_._nfirming_transfer_of_ EU_registration_to_curren t_US_applicant.pdf
Converted PDF file(s) ( 2 pages) Foreign Registration-1Foreign Registration-2
Original PDF file:
FRU1-69121125178-15515186 7_._Heraeus_1184.1_-_Tran slation.pdf
Converted PDF file(s) ( 4 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3Foreign Registration-4

Applicant proposes to amend the following:

Current:
Class 009 for Electrical conductors, namely, metal paste for use in the manufacture of electronic devices; electric contact materials with a precious metal base for use in the manufacture of electronic devices, namely, electrical components in the nature of electric contactors; all the aforesaid goods made in significant part of silver
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.


Proposed:
Class 009 for Electrical conductors, namely, metal paste for use in the manufacture of electronic devices; electric contact materials with a precious metal base for use in the manufacture of electronic devices, namely, electrical components in the nature of electric contactors; all the aforesaid goods made in significant part of silver
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 009247231 registered 11/29/2010 with a renewal date of __________ and an expiration date of 06/29/2020 ], 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.
Original PDF file:
FRU2-69121125178-15515186 7_._88342265_-_home_regis tration.pdf
Converted PDF file(s) ( 6 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3Foreign Registration-4Foreign Registration-5Foreign Registration-6
Original PDF file:
FRU2-69121125178-15515186 7_._88342265_EU_file_info rmation.pdf
Converted PDF file(s) ( 4 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3Foreign Registration-4
Original PDF file:
FRU2-69121125178-15515186 7_._nfirming_transfer_of_ EU_registration_to_curren t_US_applicant.pdf
Converted PDF file(s) ( 2 pages) Foreign Registration-1Foreign Registration-2
Original PDF file:
FRU2-69121125178-15515186 7_._Heraeus_1184.1_-_Tran slation.pdf
Converted PDF file(s) ( 4 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3Foreign Registration-4

Applicant proposes to amend the following:

Current:
Class 014 for Precious metals, precious metal alloys, and precious metal compounds in particular for connection and joining technology, all for use in manufacturing electrical and electronic components; precious metals; precious metal alloys and precious metal compounds in the form of powders and pastes made from these powders used in manufacturing, all for use in manufacturing electrical and electronic components; all the aforesaid goods made in significant part of silver
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.


Proposed:

Tracked Text Description: Precious metals, precious metal alloys, and precious metal compounds in particular for connection and joining technology, all for use in manufacturing electrical and electronic components; Precious metals, precious metal alloys, and precious metal compounds, in particular for connection technology; precious metals; precious metal alloys and precious metal compounds in the form of powders and pastes made from these powders used in manufacturing, all for use in manufacturing electrical and electronic components; all the aforesaid goods made in significant part of silver; precious metal compounds in the form of powders and pastes made from these powders used in manufacturing, all for further manufacturing, but not for use in painting, decorating, printing, art or in manufacturing jewelry; all of the aforesaid goods made in significant part of silver.Class 014 for Precious metals, precious metal alloys, and precious metal compounds, in particular for connection technology; precious metals; precious metal alloys and precious metal compounds in the form of powders and pastes made from these powders used in manufacturing, all for use in manufacturing electrical and electronic components; precious metal compounds in the form of powders and pastes made from these powders used in manufacturing, all for further manufacturing, but not for use in painting, decorating, printing, art or in manufacturing jewelry; all of the aforesaid goods made in significant part of silver.
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 009247231 registered 11/29/2010 with a renewal date of __________ and an expiration date of 06/29/2020 ], 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.
Original PDF file:
FRU3-69121125178-15515186 7_._88342265_-_home_regis tration.pdf
Converted PDF file(s) ( 6 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3Foreign Registration-4Foreign Registration-5Foreign Registration-6
Original PDF file:
FRU3-69121125178-15515186 7_._88342265_EU_file_info rmation.pdf
Converted PDF file(s) ( 4 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3Foreign Registration-4
Original PDF file:
FRU3-69121125178-15515186 7_._nfirming_transfer_of_ EU_registration_to_curren t_US_applicant.pdf
Converted PDF file(s) ( 2 pages) Foreign Registration-1Foreign Registration-2
Original PDF file:
FRU3-69121125178-15515186 7_._Heraeus_1184.1_-_Tran slation.pdf
Converted PDF file(s) ( 4 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3Foreign Registration-4

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Heraeus Deutschland GmbH & Co. KG, a limited liability company legally organized under the laws of Germany, having an address of
      Heraeusstrasse 12-14
      Hanau, 63450
      Germany

Proposed: Heraeus Deutschland GmbH & Co. KG, a limited liability company legally organized under the laws of Germany, having an address of
      Heraeusstrasse 12-14
      Hanau, 63450
      Germany
      Email Address: XXXX

ADDITIONAL STATEMENTS
Description of mark
The mark consists of a stylized representation of a periodic table element comprised of a square with the numbering "47" in the upper-left corner and the numbering "107.86" in the lower-right corner. The stylized word "MAGIC" overlays the square with the lettering "AG" in the aforementioned word displayed in a different font.

Miscellaneous Statement


Original PDF file:
mis-69121125178-202004031 55151867481_._SN_88342265 __Miscellaneous_Statement.pdf
Converted PDF file(s) ( 7 pages) Miscellaneous File1Miscellaneous File2Miscellaneous File3Miscellaneous File4Miscellaneous File5Miscellaneous File6Miscellaneous File7

The owner's/holder's current attorney information:  Nathaniel Kramer of KIRSCHSTEIN, ISRAEL, SCHIFFMILLER & PIERONI, P.C., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      5TH FLOOR
      425 FIFTH AVENUE
      NEW YORK, New York 10016
      United States
The docket/reference number is HERAE 1184.1.
      The phone number is 212-697-3750 x135.
      The email address is ndkramer@mindspring.com

The owner's/holder's proposed attorney information:  Nathaniel Kramer of KIRSCHSTEIN, ISRAEL, SCHIFFMILLER & PIERONI, P.C., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      5TH FLOOR
      425 FIFTH AVENUE
      NEW YORK, New York 10016
      United States
The docket/reference number is HERAE 1184.1.
      The phone number is 212-697-3750 x135.
      The email address is ndkramer@mindspring.com

Nathaniel Kramer 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.Correspondence Information (current):
      Nathaniel Kramer
      PRIMARY EMAIL FOR CORRESPONDENCE: ndkramer@mindspring.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is HERAE 1184.1.
Correspondence Information (proposed):
      Nathaniel Kramer
      PRIMARY EMAIL FOR CORRESPONDENCE: ndkramer@mindspring.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is HERAE 1184.1.

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)
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.
Request for Reconsideration Signature
Signature: /Nathaniel Kramer/     Date: 04/04/2020
Signatory's Name: Nathaniel Kramer
Signatory's Position: Attorney of record, New York Bar member

Signatory's Phone Number: 212-697-3750 x 135

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.

Mailing Address:    Nathaniel Kramer
   KIRSCHSTEIN, ISRAEL, SCHIFFMILLER & PIERONI, P.C.
   5TH FLOOR
   425 FIFTH AVENUE
   NEW YORK, New York 10016
Mailing Address:    Nathaniel Kramer
   KIRSCHSTEIN, ISRAEL, SCHIFFMILLER & PIERONI, P.C.
   5TH FLOOR
   425 FIFTH AVENUE
   NEW YORK, New York 10016
        
Serial Number: 88342265
Internet Transmission Date: Sat Apr 04 14:25:59 ET 2020
TEAS Stamp: USPTO/RFR-XX.XXX.XXX.XXX-202004041425590
83251-88342265-710b654958a7a51abddff9a81
e648eccd05a4bb04ae9553a4cd44d1f2277ca9a5
-N/A-N/A-20200404141915961519