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)

---

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. 88482339 NITTO(Standard Characters, see http://uspto.report/TM/88482339/mark.png) has been amended as follows:

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

Please see Evidence section for arguments.

EVIDENCE
Evidence in the nature of argument and evidence has been attached.
JPG file(s):
Evidence-1
Original PDF file:
evi_10412919496-20200226101603142487_._Response_to_Office_Action-_NITTO__88482339_.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 001 for Chemical preparations for analyses in laboratories, other than for medical or veterinary purposes; bacterial preparations other than for medical and veterinary use; biological preparations for use in cell cultures other than for medical or veterinary purposes; chemical preparations for scientific purposes, other than for medical or veterinary use; chemical reagents, other than for medical or veterinary purposes; cultures of microorganisms, other than for medical and veterinary use; bacterial cultures for addition to agricultural fertilizer; bacterial cultures for addition to cultured fish feed; bacterial cultures for addition to livestock feed; unprocessed plastics; plastics in primary form; plastic adhesives not for stationery or household purposes; industrial chemicals; ceramic glazings in the nature of a dry chemical preparation for use in the manufacture of ceramics; wood pulp for manufacturing purposes; polymer beads for use in biosynthesis of nucleic acids
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: Chemical preparations for analyses in laboratories, other than for medical or veterinary purposes; bacterial preparations other than for medical and veterinary use; biological preparations for use in cell cultures other than for medical or veterinary purposes; chemical preparations for scientific purposes, other than for medical or veterinary use; chemical reagents, other than for medical or veterinary purposes; cultures of microorganisms, other than for medical and veterinary use; bacterial cultures for addition to agricultural fertilizer; bacterial cultures for addition to cultured fish feed; bacterial cultures for addition to livestock feed; unprocessed plastics; plastics in primary form; plastic adhesives not for stationery or household purposes; plastic adhesives for industrial use; industrial chemicals; ceramic glazings in the nature of a dry chemical preparation for use in the manufacture of ceramics; wood pulp for manufacturing purposes; polymer beads for use in biosynthesis of nucleic acidsClass 001 for Chemical preparations for analyses in laboratories, other than for medical or veterinary purposes; bacterial preparations other than for medical and veterinary use; biological preparations for use in cell cultures other than for medical or veterinary purposes; chemical preparations for scientific purposes, other than for medical or veterinary use; chemical reagents, other than for medical or veterinary purposes; cultures of microorganisms, other than for medical and veterinary use; bacterial cultures for addition to agricultural fertilizer; bacterial cultures for addition to cultured fish feed; bacterial cultures for addition to livestock feed; unprocessed plastics; plastics in primary form; plastic adhesives for industrial use; industrial chemicals; ceramic glazings in the nature of a dry chemical preparation for use in the manufacture of ceramics; wood pulp for manufacturing purposes; polymer beads for use in biosynthesis of nucleic acids
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.

Applicant proposes to amend the following:
Current: Class 005 for Vaccines; incontinence diapers; medicated transdermal therapeutic preparations; medicated transdermal therapeutic preparations for treatment of ischemic heart disease; pharmaceutical, veterinary and sanitary preparations; sanitary pads; sheet-like adhesive tapes for medical purpose; adhesives tapes for medical purpose; nucleic acid sequences for medical and veterinary purposes; heating sheets for medical purposes; adhesive plasters for medical purposes
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: Vaccines; incontinence diapers; medicated transdermal therapeutic preparations; medicated transdermal therapeutic preparations being patches, tapes and plasters for treatment of asthma; medicated transdermal therapeutic preparations for treatment of ischemic heart disease; medicated transdermal therapeutic preparations being patches, tapes and plasters in the nature of local anesthetics; pharmaceutical, veterinary and sanitary preparations; medicated transdermal therapeutic preparations being patches, tapes and plasters for treatment of hypertension; medicated transdermal therapeutic preparations being patches, tapes and plasters for treatment of ischemic heart disease; pharmaceutical preparations for wounds; sanitary preparations for medical use; sanitary pads; heating sheets for medical purposes; sheet-like adhesive tapes for medical purpose; adhesives tapes for medical purpose; nucleic acid sequences for medical and veterinary purposes; heating sheets in the nature of non-electric heating pads for medical purposes; adhesive plasters for medical purposes; plastic adhesives for dental useClass 005 for Vaccines; incontinence diapers; medicated transdermal therapeutic preparations being patches, tapes and plasters for treatment of asthma; medicated transdermal therapeutic preparations being patches, tapes and plasters in the nature of local anesthetics; medicated transdermal therapeutic preparations being patches, tapes and plasters for treatment of hypertension; medicated transdermal therapeutic preparations being patches, tapes and plasters for treatment of ischemic heart disease; pharmaceutical preparations for wounds; sanitary preparations for medical use; sanitary pads; sheet-like adhesive tapes for medical purpose; adhesives tapes for medical purpose; nucleic acid sequences for medical and veterinary purposes; heating sheets in the nature of non-electric heating pads for medical purposes; adhesive plasters for medical purposes; plastic adhesives for dental use
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.

Applicant proposes to amend the following:
Current: Class 009 for Magnets for industrial purposes; telecommunication devices and apparatus; electronic machines, apparatus and their parts; magnetic cores; resistance wires; electrodes; gloves for protection against accidents; dust masks; gas masks; welding masks; fireproof garments; phonograph records featuring music; metronomes; weight belts for scuba diving; wet suits for scuba diving; inflatable swimming floats for safety purpose; air tanks for scuba diving; swimming flutter boards; regulators for scuba diving; optical film for liquid crystal display; optical film for liquid crystal display, namely, polarizing film, retardation film, viewing angle compensation film, transparent conductive film and brightness enhancement film; printed circuit boards; power distribution or control machines and apparatus; transformers; electronic battery separator apparatus; data transmitters and receivers; electronic components; computer programs; computer programs for designing labels; data processing programs; semiconductors; electrical power supplies; battery separator membranes; separators between a battery's anode and cathode for preventing electrical short circuits; electric conductors; transparent electrical conductive film; semipermeable membranes, membrane modules, separators for liquid separation, gas separation and ion separation and filtration for laboratory use
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: Magnets for industrial purposes; telecommunication devices and apparatus; electronic machines, apparatus and their structural parts, namely, smartwatches, wearable computers, and label printers for use with computers, memory cards in the form of film, flexible electric circuits, flexible printed circuits; electronic machines, apparatus and their parts; magnetic cores; resistance wires; electrodes; gloves for protection against accidents; dust masks; gas masks; welding masks; fireproof garments; phonograph records featuring music; metronomes; weight belts for scuba diving; inflatable swimming floats for safety purpose; wet suits for scuba diving; air tanks for scuba diving; regulators for scuba diving; optical film for liquid crystal display, namely, polarizing film, retardation film, viewing angle compensation film, transparent conductive film and brightness enhancement film; swimming flutter boards; printed circuit boards; transformers; optical film for liquid crystal display; electronic battery separators; downloadable and recorded computer programs for use in the projection, design and analysis of water purification membrane; downloadable and recorded computer programs for designing labels; power distribution or control machines and apparatus; downloadable and recorded data processing programs for use in the projection, design and analysis of water purification membrane; semiconductors; electronic battery separator apparatus; electrical power supplies; data transmitters and receivers; battery separator membranes in the nature of films; electronic components; separators between a battery's anode and cathode for preventing electrical short circuits; computer programs; electric conductors; computer programs for designing labels; transparent electrical conductive film in the nature of battery separators; data processing programs; separators and separator modules in the form of membrane for liquid separation, gas separation and ion separation and filtration for laboratory use; battery separator membranes; transparent electrical conductive film; semipermeable membranes, membrane modules, separators for liquid separation, gas separation and ion separation and filtration for laboratory useClass 009 for Magnets for industrial purposes; electronic machines, apparatus and their structural parts, namely, smartwatches, wearable computers, and label printers for use with computers, memory cards in the form of film, flexible electric circuits, flexible printed circuits; magnetic cores; resistance wires; electrodes; gloves for protection against accidents; dust masks; gas masks; welding masks; fireproof garments; phonograph records featuring music; metronomes; weight belts for scuba diving; inflatable swimming floats for safety purpose; air tanks for scuba diving; regulators for scuba diving; optical film for liquid crystal display, namely, polarizing film, retardation film, viewing angle compensation film, transparent conductive film and brightness enhancement film; printed circuit boards; transformers; electronic battery separators; downloadable and recorded computer programs for use in the projection, design and analysis of water purification membrane; downloadable and recorded computer programs for designing labels; downloadable and recorded data processing programs for use in the projection, design and analysis of water purification membrane; semiconductors; electrical power supplies; battery separator membranes in the nature of films; separators between a battery's anode and cathode for preventing electrical short circuits; electric conductors; transparent electrical conductive film in the nature of battery separators; separators and separator modules in the form of membrane for liquid separation, gas separation and ion separation and filtration for laboratory use
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.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Nitto Denko Corporation, a corporation of Japan, having an address of
      1-2, Shimohozumi 1-chome, Ibaraki-shi
      Osaka, 567-8680
      Japan

Proposed: Nitto Denko Corporation, a corporation of Japan, having an address of
      1-2, Shimohozumi 1-chome, Ibaraki-shi
      Osaka, 567-8680
      Japan
      Email Address: phila_tmdocketing@ballardspahr.com
Correspondence Information (current):
      TANYA MARIE CURCIO
      PRIMARY EMAIL FOR CORRESPONDENCE: tmdocketing@ballardspahr.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 00316862.
Correspondence Information (proposed):
      Tanya Marie Curcio
      PRIMARY EMAIL FOR CORRESPONDENCE: tmdocketing@ballardspahr.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): curciot@ballardspahr.com

The docket/reference number is 00316862.

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).

ADDITIONAL STATEMENTS
Translation
The wording NITTO has no meaning in a foreign language.


SIGNATURE(S)
Response Signature
Signature: /tmc/     Date: 02/26/2020
Signatory's Name: Tanya Marie Curcio
Signatory's Position: Attorney of record, New York bar member

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:    TANYA MARIE CURCIO
   BALLARD SPAHR LLP
   
   1735 MARKET STREET, 51ST FLOOR
   PHILADELPHIA, Pennsylvania 19103-7599
Mailing Address:    Tanya Marie Curcio
   BALLARD SPAHR LLP
   1735 MARKET STREET, 51ST FLOOR
   PHILADELPHIA, Pennsylvania 19103-7599
        
Serial Number: 88482339
Internet Transmission Date: Wed Feb 26 10:35:56 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-202002261035565
69510-88482339-71042cb4195ee75ff89c74268
79f91431d60eb99cb8783d8d1bc437a665597c08
1-N/A-N/A-20200226101603142487