Response to Office Action

DICHTOMATIK

DICHTOMATIK VERTRIEBSGESELLSCHAFT FUR TECHNISCHE DICHTUNGEN MBH

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)

Response to Office Action


The table below presents the data as entered.

Input Field
Entered
SERIAL NUMBER 88505192
LAW OFFICE ASSIGNED LAW OFFICE 120
MARK SECTION
MARK http://uspto.report/TM/88505192/mark.png
LITERAL ELEMENT DICHTOMATIK
STANDARD CHARACTERS YES
USPTO-GENERATED IMAGE YES
MARK STATEMENT The mark consists of standard characters, without claim to any particular font style, size or color.
OWNER SECTION (current)
NAME Carl Freudenberg KG
STREET Hoehnerweg 2-4
CITY Weinheim
ZIP/POSTAL CODE 69469
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY Germany
OWNER SECTION (proposed)
NAME DICHTOMATIK VERTRIEBSGESELLSCHAFT FUR TECHNISCHE DICHTUNGEN MBH (by way of Assignment at Reel/Frame: 6858/0019)
STREET Albert-Schweitzer-Rina 1
CITY Hamburg
ZIP/POSTAL CODE 22045
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY Germany
EMAIL jsachs@hdp.com
LEGAL ENTITY SECTION (current)
TYPE kommanditgesellschaft (kg)
STATE/COUNTRY/REGION/JURISDICTION/U.S. TERRITORY WHERE LEGALLY ORGANIZED Germany
LEGAL ENTITY SECTION (proposed)
TYPE limited liability company
STATE/COUNTRY/REGION/JURISDICTION/U.S. TERRITORY WHERE LEGALLY ORGANIZED Germany
ARGUMENT(S)
This communication responds to the Office Action issued on September 28, 2019 in connection with the subject application. Reconsideration is respectfully requested in light of the following amendments and remarks. Section 2(d) Refusal ? The subject application was preliminarily refused in Class 17 based on a perceived likelihood of confusion with Registration No. 2623007 for DICHTOMATIK owned by Dichtomatik Vertriebsgesellschaft fur Technische Dichtungen mbH. Applicant has assigned the subject application to Dichtomatik Vertriebsgesellschaft fur Technische Dichtungen mbH. Consequently, because the subject application and the cited registration are now owned by the same entity, the citation is no longer warranted. The assignment was recorded with the USPTO at Reel/Frame 6858/0019 on February 6, 2020. A copy of the Notice of Recordation of Assignment Document is submitted herewith. Foreign Registration Certificate ? Applicant submits herewith the Certificate of Registration for EU Registration No. 018016745 for the mark in support of the Section 44(e) basis. Description of Goods and Services ? Applicant has amended the description of goods and services as requested by the Examining Attorney. Applicant notes that much of the amended wording is the same as the wording recently adopted by Applicant and accepted by the USPTO in connection with Registration No. 5,707,055 issued March 26, 2019 for the trademark SEVENTOMATIC (see TESS printout). In light of the foregoing, Applicant believes the application is now in condition for publication. Formal notice in that regard is respectfully requested.
EVIDENCE SECTION
        EVIDENCE FILE NAME(S)
       ORIGINAL PDF FILE evi_65183161130-20200217085744330302_._Assignment.pdf
       CONVERTED PDF FILE(S)
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       ORIGINAL PDF FILE evi_65183161130-20200217085744330302_._TESS_-_SEVENTOMATIC.pdf
       CONVERTED PDF FILE(S)
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DESCRIPTION OF EVIDENCE FILE evidence in support of Response to Office Action
GOODS AND/OR SERVICES SECTION (007) (current)
INTERNATIONAL CLASS 007
DESCRIPTION
Machines for processing metal, wood and plastic, machines for the chemical industry, agriculture, mining and the beverages industry, textile machines, construction machines, packaging machines and machine tools; Motors and engines (except for land vehicles); Machine coupling and transmission components (except for land vehicles); Agricultural implements other than hand-operated; Hydraulic accumulators for storing and providing pressure; Hydraulic accumulators, in particular diaphragm accumulators, piston accumulators, accumulators for axle suspension, wheel suspension and/or cab suspension; Belts for machines; Rollers for printing machines; pump and valve diaphragms; Antifriction bearings for machines; Ball bearings, roller bearings and plain bearings as machine parts; Self-lubricating bearings; Bearings for transmission shafts; Journal boxes (parts of machines); Gaskets being parts of machines or engines; Mechanical seals being parts of machines or engines, in particular being crankshaft seals; Mechanical seals being transmission seals, turbocharger seals or for sealing electric motors; Mechanical seals for hydrodynamic or pneumatic applications being parts of machines, engines or gearboxes; Rotary shaft seals being parts of machines or engines; Rod wipers and piston guide rings used in hydraulic and pneumatic cylinders; Guide and oil-removing elements for hydraulic and pneumocylinders; Intake manifolds for land, air and sea vehicles; Parts for motors and engines of air and water vehicles, namely, shaft couplings, Transmission shafts, Journals; Piston rings, guide rings, valves and parts therefor, bearings and guides, shaped parts and moulded parts for mechanical and apparatus engineering, in particular of plastic or predominantly of plastic, in particular of fluorocarbon resin or elastomers; Machine belts; Bellows; Blow guns, In particular folding bellows of rubber, folding bellows of TPE; Elastic bearings for machines or engines as noise and vibration absorption parts; Pneumatic springs and spring legs with bellows of elastomeric material for supporting vibrating vehicle and machine parts; Elastic springs for damping noise, vibration and shock insulation as parts of machines; Multilayer springs for damping noise, vibration and shock insulation as parts of machines; Parts of motors for damping and vibroinsulation; Gas-distributing and valve-actuating machinery; Parts for motors and engines of land vehicles, namely, bearing pins; Finished products of vulcanised perfluoroelastomers in the form of membranes for use in hydraulics, pneumatics and mechanical engineering
FILING BASIS Section 1(b)
FILING BASIS Section 44(d)
        FOREIGN APPLICATION NUMBER 018016745
       FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY European Union Trademark - EUTM
        FOREIGN FILING DATE 01/30/2019
GOODS AND/OR SERVICES SECTION (007) (proposed)
INTERNATIONAL CLASS 007
TRACKED TEXT DESCRIPTION
Machines for processing metal, wood and plastic, machines for the chemical industry, agriculture, mining and the beverages industry, textile machines, construction machines, packaging machines and machine tools; Machines for working metal, milling wood and processing plastic; Motors and engines (except for land vehicles); machines for the chemical industry, agriculture, mining and the beverages industry; Machine coupling and transmission components (except for land vehicles); textile bonding machines, concrete construction machines, packaging machines and metalworking machine tools; Agricultural implements other than hand-operated; Motors and engines, except for land vehicles; Hydraulic accumulators for storing and providing pressure; Machine coupling and transmission components, except for land vehicles; Hydraulic accumulators, in particular diaphragm accumulators, piston accumulators, accumulators for axle suspension, wheel suspension and/or cab suspension; Agricultural implements, namely, incorporators, rollers, harvesters, reapers, mowers; Hydraulic accumulators being parts of machines for storing and providing pressure; Hydraulic accumulators being parts of machines, namely, diaphragm accumulators, piston accumulators, accumulators for axle suspension, wheel suspension and cab suspension; Belts for machines; Antifriction bearings for machines; Rollers for printing machines; pump and valve diaphragms; Self-lubricating bearings; Anti-friction bearings for machines; Bearings for transmission shafts; Ball bearings, roller bearings and plain bearings as machine parts; Journal boxes (parts of machines); Self-lubricating bearings, as parts of machines; Gaskets being parts of machines or engines; Bearings for transmission shafts being parts of machines; Mechanical seals being parts of machines or engines, in particular being crankshaft seals; Journal boxes being parts of machines; Mechanical seals being transmission seals, turbocharger seals or for sealing electric motors; Pipe gaskets being parts of machines or engines; Mechanical seals for hydrodynamic or pneumatic applications being parts of machines, engines or gearboxes; Mechanical seals being parts of machines and engines, namely, crankshaft seals; Rotary shaft seals being parts of machines or engines; Mechanical seals being parts of machines, namely, transmission seals, turbocharger seals and for sealing electric motors; Rod wipers and piston guide rings used in hydraulic and pneumatic cylinders; Mechanical seals being parts of machines for hydrodynamic and pneumatic applications engines and gearboxes; Guide and oil-removing elements for hydraulic and pneumocylinders; Rotary shaft mechanical seals being parts of machines or engines; Intake manifolds for land, air and sea vehicles; Rod blowers and piston guide rings used in hydraulic and pneumatic cylinders being engine parts; Parts for motors and engines of air and water vehicles, namely, shaft couplings, Transmission shafts, Journals; Oil separators for hydraulic and pneumocylinders; Piston rings, guide rings, valves and parts therefor, bearings and guides, shaped parts and moulded parts for mechanical and apparatus engineering, in particular of plastic or predominantly of plastic, in particular of fluorocarbon resin or elastomers; Intake manifolds for internal combustion engines for land, air and sea vehicles; Parts for motors and engines of air and water vehicles, namely, shaft couplings, transmission shafts, other than for land vehicles, journal boxes; Bellows; Machine parts, namely, piston rings, guide rings, valves, bearings; Blow guns, In particular folding bellows of rubber, folding bellows of TPE; Machine belts; Elastic bearings for machines or engines as noise and vibration absorption parts; Bellows being machines; Pneumatic springs and spring legs with bellows of elastomeric material for supporting vibrating vehicle and machine parts; Pneumatic blow guns for use in a manufacturing process to blow dust off parts, workstations or wherever necessary; Elastic springs for damping noise, vibration and shock insulation as parts of machines; Parts for pneumatic blow guns, namely, folding bellows of rubber, folding bellows of TPE; Multilayer springs for damping noise, vibration and shock insulation as parts of machines; Bellows being machines of rubber; Parts of motors for damping and vibroinsulation; Elastic bearings for machines and engines as noise and vibration absorption parts; Gas-distributing and valve-actuating machinery; Pneumatic springs and spring legs being parts of machines with bellows of elastomeric material for supporting vibrating vehicle and machine parts; Elastic springs being parts of machines for damping noise, vibration and shock insulation as parts of machines; Finished products of vulcanised perfluoroelastomers in the form of membranes for use in hydraulics, pneumatics and mechanical engineering; Multilayer springs being parts of machines for damping noise, vibration and shock insulation as parts of machines; Parts of motors for damping and vibroinsulation, namely, compressors, pumps, and taps; Valves being parts of machines, namely, gas-distributing valves and valve-actuating machinery; Parts for motors and engines of land vehicles, namely, bearing pins; Filters being parts of machines in the form of membranes for use in hydraulics, pneumatics and mechanical engineering; Non-metal machine parts, namely, radial shaft seals, shaft sealing rings, cassette seals; Non-metal machine parts, namely, combination seals; Non-metal machine parts, namely, rotary seals; Non-metal machine parts, namely, packings for static seals; Non-metal machine parts, namely, valve stem seals; Non-metal machine parts, namely, hydraulic brake seals, O-ring seals for vehicles, support seals, composite seals, fibrous gaskets, butterfly valve seals, seals for shock-absorbers and gas springs, valve spindle seals, seals for hydraulic braking systems, seals for hydraulic and pneumocylinders, sealing rings, flat seals; Mechanical seals in the nature of profile seals, axle seals, hydraulic and pneumatic seals, in particular, rod seals; Mechanical seals, namely, piston seals; Mechanical seals, namely, rod wiper seals; Mechanical seals, namely, buffer seals; Wiper rings and guide rings for sealing against oil, grease or air in hydraulic and pneumatic cylinders as parts of machines; Screw seal rings, in particular USIT rings; Mechanical seals, namely, rotary pressure seals; Pump diaphragms, namely, accumulator and separator diaphragms, pump diaphragms, regulating and switching diaphragms; Pump diaphragms, namely, partition diaphragms and diaphragms of elastomers; Machine parts, namely, molds of polytetrafluoroethylene for use in the manufacture of seals; Machine parts, namely, molds of liquid silicon for use in the manufacture of seals; Machine parts, namely, molds of polytetrafluoroethylene for use in the manufacture of seals; Mechanical seals, namely, static and dynamic seals; Mechanical seals, namely, static cylinder cover seals; V-packings as multiple lip chevron packing seals designed to seal static reciprocating and centrifugal applications, where the male and female adapters are used to complete a set of vees
FINAL DESCRIPTION
Machines for working metal, milling wood and processing plastic; machines for the chemical industry, agriculture, mining and the beverages industry; textile bonding machines, concrete construction machines, packaging machines and metalworking machine tools; Motors and engines, except for land vehicles; Machine coupling and transmission components, except for land vehicles; Agricultural implements, namely, incorporators, rollers, harvesters, reapers, mowers; Hydraulic accumulators being parts of machines for storing and providing pressure; Hydraulic accumulators being parts of machines, namely, diaphragm accumulators, piston accumulators, accumulators for axle suspension, wheel suspension and cab suspension; Belts for machines; Rollers for printing machines; pump and valve diaphragms; Anti-friction bearings for machines; Ball bearings, roller bearings and plain bearings as machine parts; Self-lubricating bearings, as parts of machines; Bearings for transmission shafts being parts of machines; Journal boxes being parts of machines; Pipe gaskets being parts of machines or engines; Mechanical seals being parts of machines and engines, namely, crankshaft seals; Mechanical seals being parts of machines, namely, transmission seals, turbocharger seals and for sealing electric motors; Mechanical seals being parts of machines for hydrodynamic and pneumatic applications engines and gearboxes; Rotary shaft mechanical seals being parts of machines or engines; Rod blowers and piston guide rings used in hydraulic and pneumatic cylinders being engine parts; Oil separators for hydraulic and pneumocylinders; Intake manifolds for internal combustion engines for land, air and sea vehicles; Parts for motors and engines of air and water vehicles, namely, shaft couplings, transmission shafts, other than for land vehicles, journal boxes; Machine parts, namely, piston rings, guide rings, valves, bearings; Machine belts; Bellows being machines; Pneumatic blow guns for use in a manufacturing process to blow dust off parts, workstations or wherever necessary; Parts for pneumatic blow guns, namely, folding bellows of rubber, folding bellows of TPE; Bellows being machines of rubber; Elastic bearings for machines and engines as noise and vibration absorption parts; Pneumatic springs and spring legs being parts of machines with bellows of elastomeric material for supporting vibrating vehicle and machine parts; Elastic springs being parts of machines for damping noise, vibration and shock insulation as parts of machines; Multilayer springs being parts of machines for damping noise, vibration and shock insulation as parts of machines; Parts of motors for damping and vibroinsulation, namely, compressors, pumps, and taps; Valves being parts of machines, namely, gas-distributing valves and valve-actuating machinery; Parts for motors and engines of land vehicles, namely, bearing pins; Filters being parts of machines in the form of membranes for use in hydraulics, pneumatics and mechanical engineering; Non-metal machine parts, namely, radial shaft seals, shaft sealing rings, cassette seals; Non-metal machine parts, namely, combination seals; Non-metal machine parts, namely, rotary seals; Non-metal machine parts, namely, packings for static seals; Non-metal machine parts, namely, valve stem seals; Non-metal machine parts, namely, hydraulic brake seals, O-ring seals for vehicles, support seals, composite seals, fibrous gaskets, butterfly valve seals, seals for shock-absorbers and gas springs, valve spindle seals, seals for hydraulic braking systems, seals for hydraulic and pneumocylinders, sealing rings, flat seals; Mechanical seals in the nature of profile seals, axle seals, hydraulic and pneumatic seals, in particular, rod seals; Mechanical seals, namely, piston seals; Mechanical seals, namely, rod wiper seals; Mechanical seals, namely, buffer seals; Wiper rings and guide rings for sealing against oil, grease or air in hydraulic and pneumatic cylinders as parts of machines; Screw seal rings, in particular USIT rings; Mechanical seals, namely, rotary pressure seals; Pump diaphragms, namely, accumulator and separator diaphragms, pump diaphragms, regulating and switching diaphragms; Pump diaphragms, namely, partition diaphragms and diaphragms of elastomers; Machine parts, namely, molds of polytetrafluoroethylene for use in the manufacture of seals; Machine parts, namely, molds of liquid silicon for use in the manufacture of seals; Machine parts, namely, molds of polytetrafluoroethylene for use in the manufacture of seals; Mechanical seals, namely, static and dynamic seals; Mechanical seals, namely, static cylinder cover seals; V-packings as multiple lip chevron packing seals designed to seal static reciprocating and centrifugal applications, where the male and female adapters are used to complete a set of vees
FILING BASIS Section 1(b)
FILING BASIS Section 44(d)
       FOREIGN APPLICATION NUMBER 018016745
       FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY European Union Trademark - EUTM
       FOREIGN FILING DATE 01/30/2019
       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)
       FOREIGN REGISTRATION NUMBER 018016745
       FOREIGN REGISTRATION
       COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
European Union Trademark - EUTM
       FOREIGN REGISTRATION
       DATE
08/06/2019
       FOREIGN EXPIRATION DATE 01/30/2029
       FOREIGN REGISTRATION FILE NAME(S)
       ORIGINAL PDF FILE FRU0-65183161130-085744330_._EU_018016745_for_DICHTOMATIK.pdf
       CONVERTED PDF FILE(S)
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       STANDARD CHARACTERS
       OR EQUIVALENT
YES
GOODS AND/OR SERVICES SECTION (017) (current)
INTERNATIONAL CLASS 017
DESCRIPTION
Rubber, gutta-percha, gum, asbestos, mica; Plastics in extruded form for use in manufacture; Packing, stopping and insulating materials; Sealing and packing cord, Packing and stopping materials, Seals for sensors; Gasket support rings; Artificial resins, in particular fluorocarbon resins or elastomers, being semi-finished products in the form of plates, tubes, rods, blocks, flexible pipes, not of metal, fittings, expansion joints, films for sealing purposes, filling material for reaction columns, balls, filter material in the form of fibres or porous plates; Guide tubes, insulating tubes and insulating parts for electrical purposes, having springs with corrosion-resistant coatings for sealing purposes, in particular for mechanical seals, corrugated tubes for vacuum operation and being spring washers; All of the aforesaid goods being made of or predominantly of plastic, in particular of fluorocarbon resin or elastomers; Shaft seals of polytetrafluoroethylene, gum or highly elastic and thermoplastic plastics, including combined with metal or other plastics, in particular lip seals for moveable parts of machines; radial shaft seals, Shaft sealing rings, Cassette seals; Combination seals; Rotary seals; Packings for static seals; Valve stem seals; Hydraulic brake seals; O-ring seals; Support seals; Composite seals; fibrous gaskets; Butterfly valve seals; Sealing plugs being metal-elastomer composite parts (predominantly of elastomers); Seals for shock-absorbers and gas springs; Valve spindle seals; Seals for hydraulic braking systems; Seals for hydraulic and pneumocylinders; Sealing rings; O-rings; Flat seals; Profile seals; Axle seals; Sealing plates; Insulating foils; Sealing frames; Hydraulic and pneumatic seals, in particular rod seals; Piston seals; Rod wiper seals; Buffer seals; Wiper rings and guide rings for sealing against oil, grease or air in hydraulic and pneumatic cylinders; Plastics in extruded form for use in manufacture, being elastic rubber-like plastics, in particular including combined with metals and other plastics, in particular moulded parts, including boards, sheets and flaps, profiles, discs and washers; Screw seal rings, in particular USIT rings; Rotary pressure seals; Diaphragms, in particular accumulator and separator diaphragms, pump diaphragms, regulating and switching diaphragms; Partitions, being diaphragms, in particular being diaphragms of elastomers; Moulded parts of polytetrafluoroethylene; Solid silicone parts, in particular jet formers for showers, seals, diaphragms, housing parts, injection-moulded parts; Moulded parts for machine elements made of liquid silicon; Liquid silicone seals; Plastics in the form of sheets, blocks, spheres, rods and tubes; Moulded parts of PTFE; Grooved rings, in particular including grooved rings of PTFE; Static and dynamic seals; Static cylinder cover seals; V-packings as multiple lip (chevron) packing seals designed to seal static reciprocating and centrifugal applications, where the male and female adapters are used to complete a set of vees; Stuffing box packings (seals); Micro-parts of plastic or elastomeric material (semi-finished products); Non-metal seals, namely, oil seals, fluid seals, insulating seals, reinforced seals, elastomeric seals, seals for pistons and rods, namely, cups, rings, packings and gaskets, all the foregoing for sealing oil, grease or air in hydraulic and pneumatic applications; Packaging materials for moulded seals for sealing and insulation purposes; Plates of graphite-based materials for use as sealing rings, packing seals and heat insulation; Slide ring packings, Sliding ring seals and Gasket support rings; Glide ring packings, seals, and sealing support rings for sealing oil, grease or air in hydraulic and pneumatic applications; Guide elements for hydraulic and pneumatic applications, in particular guide rings and bearing rings for protecting cylinder rods and pistons; Damping elements, in particular for pneumatic applications; Sound insulating multilayered sheets and formed parts of foam and/or plastics for vehicle cabins, for the building industry and for industrial machines; Perfluoroelastomers being films, plates and rods (semi-finished products); Moulded semi-finished parts and finished products of vulcanised perfluoroelastomers, in particular in the form of seals and o-rings, for use in hydraulics, pneumatics and mechanical engineering; Barrier materials; Polymeric membranes, Polymeric porous membranes in hollow fibre form, Transfer membranes of polyamides, Waterproof membranes made of polymers, Insulating water proofing membranes, Waterproof membranes of vulcanised fibre
FILING BASIS Section 1(b)
FILING BASIS Section 44(d)
        FOREIGN APPLICATION NUMBER 018016745
       FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY European Union Trademark - EUTM
        FOREIGN FILING DATE 01/30/2019
GOODS AND/OR SERVICES SECTION (017) (proposed)
INTERNATIONAL CLASS 017
TRACKED TEXT DESCRIPTION
Rubber, gutta-percha, gum, asbestos, mica; Rubber, raw or semi-worked; Plastics in extruded form for use in manufacture; gutta-percha; Packing, stopping and insulating materials; gum, raw or semi-worked; Sealing and packing cord, Packing and stopping materials, Seals for sensors; asbestos mortar; Gasket support rings; mica; Artificial resins, in particular fluorocarbon resins or elastomers, being semi-finished products in the form of plates, tubes, rods, blocks, flexible pipes, not of metal, fittings, expansion joints, films for sealing purposes, filling material for reaction columns, balls, filter material in the form of fibres or porous plates; Plastics in extruded form for use in further manufacturing; Guide tubes, insulating tubes and insulating parts for electrical purposes, having springs with corrosion-resistant coatings for sealing purposes, in particular for mechanical seals, corrugated tubes for vacuum operation and being spring washers; Packing, stopping and insulating materials of rubber or plastics; All of the aforesaid goods being made of or predominantly of plastic, in particular of fluorocarbon resin or elastomers; Cords of rubber, namely, sealing and packing cords; Shaft seals of polytetrafluoroethylene, gum or highly elastic and thermoplastic plastics, including combined with metal or other plastics, in particular lip seals for moveable parts of machines; sealing materials for sensors; radial shaft seals, Shaft sealing rings, Cassette seals; Rubber sealing and packing cord; Combination seals; Packing materials for forming seals for use with sensors; Rotary seals; Gasket support rings, namely, non-metal gaskets for use in the food and beverage, medical, automotive, oil and gas, and agriculture industries; Packings for static seals; Artificial resins, in particular fluorocarbon resins and elastomers, being semi-finished products in the form of plates, tubes, rods, blocks, flexible pipes, not of metal, expansion joints, films for sealing purposes, filling material for reaction columns, balls as packing and filling material, filter material in the form of fibres or porous plates; Valve stem seals; Non-metal flexible tubing, namely, guide tubes, insulating tubes for electrical purposes, having springs with corrosion-resistant coatings for sealing purposes for mechanical seals, corrugated tubes for vacuum operation and being spring washers; Hydraulic brake seals; Non-metal shaft seals of polytetrafluoroethylene, gum and highly elastic and thermoplastic plastics, namely, lip seals for moveable parts of machines; O-ring seals; Sealing plugs made primarily from rubber, namely, metal-elastomer composite parts; Support seals; Sealing materials, namely, sealing plates; Composite seals; Foils of metal for insulating; fibrous gaskets; Sealing materials, namely, sealing frames; Butterfly valve seals; Plastics in extruded form for use in manufacture, being elastic rubber-like plastics, namely, molded plastic boards, sheets and flaps, profiles, discs and washers, all of which can be joined with metal and other plastic objects; Sealing plugs being metal-elastomer composite parts (predominantly of elastomers); Solid silicone parts, in particular jet formers for showers, seals, diaphragms, housing parts, injection-moulded parts; Seals for shock-absorbers and gas springs; Liquid silicone seals; Valve spindle seals; Plastics in the form of sheets, blocks, spheres, rods and tubes; Seals for hydraulic braking systems; Grooved rings, in particular including grooved rings of PTFE; Seals for hydraulic and pneumocylinders; Packing material for making seals, namely, stuffing box packings; Sealing rings; Non-metal seals, namely, oil seals, fluid seals, insulating seals, reinforced seals, elastomeric seals, seals for pistons and rods, namely, cups, rings, packings and gaskets for sealing oil, grease and air in hydraulic and pneumatic applications; O-rings; Packaging materials, namely, stuffing box packing for moulded seals for sealing and insulation purposes; Flat seals; Synthetic plastic as semi-finished products in form of plates of graphite-based materials for use as sealing rings, packing seals and heat insulation; Profile seals; Waterproof packings, namely, slide ring packings for pumps, mixers, blowers, and compressors; Axle seals; Glide ring packings, seals, and sealing support rings for sealing oil, grease or air in hydraulic and pneumatic applications; Sealing plates; Guide elements for hydraulic and pneumatic applications, namely, guide rings and bearing rings for protecting cylinder rods and pistons; Insulating foils; Sound dampening blankets for pneumatic applications; Sealing frames; Sound insulating multilayered sheets, foam and plastics in the nature of sound dampening blankets for vehicle cabins, for the building industry and for use with industrial machines; Hydraulic and pneumatic seals, in particular rod seals; Perfluoroelastomer, semi-processed plastic in the form of films, plates and rods; Piston seals; Moulded semi-finished parts and finished products of vulcanised perfluoroelastomers in the form of sealing materials, for use in hydraulics, pneumatics and mechanical engineering; Rod wiper seals; Barrier materials made of elastomer; Buffer seals; Insulating waterproofing membranes, namely, polymeric membranes, polymeric porous membranes in hollow fibre form, transfer membranes of polyamides; Wiper rings and guide rings for sealing against oil, grease or air in hydraulic and pneumatic cylinders; Insulating waterproofing membranes made of polymers, Insulating water proofing membranes, Insulating waterproofing membranes of vulcanised fibre; Plastics in extruded form for use in manufacture, being elastic rubber-like plastics, in particular including combined with metals and other plastics, in particular moulded parts, including boards, sheets and flaps, profiles, discs and washers; Shaped parts and moulded parts for mechanical and apparatus engineering of plastic, namely, fluorocarbon resin and elastomer expansion joints; Screw seal rings, in particular USIT rings; Rotary pressure seals; Diaphragms, in particular accumulator and separator diaphragms, pump diaphragms, regulating and switching diaphragms; Partitions, being diaphragms, in particular being diaphragms of elastomers; Moulded parts of polytetrafluoroethylene; Moulded parts for machine elements made of liquid silicon; Moulded parts of PTFE; Static and dynamic seals; Static cylinder cover seals; V-packings as multiple lip (chevron) packing seals designed to seal static reciprocating and centrifugal applications, where the male and female adapters are used to complete a set of vees; Stuffing box packings (seals); Micro-parts of plastic or elastomeric material (semi-finished products); Non-metal seals, namely, oil seals, fluid seals, insulating seals, reinforced seals, elastomeric seals, seals for pistons and rods, namely, cups, rings, packings and gaskets, all the foregoing for sealing oil, grease or air in hydraulic and pneumatic applications; Packaging materials for moulded seals for sealing and insulation purposes; Plates of graphite-based materials for use as sealing rings, packing seals and heat insulation; Slide ring packings, Sliding ring seals and Gasket support rings; Guide elements for hydraulic and pneumatic applications, in particular guide rings and bearing rings for protecting cylinder rods and pistons; Damping elements, in particular for pneumatic applications; Sound insulating multilayered sheets and formed parts of foam and/or plastics for vehicle cabins, for the building industry and for industrial machines; Perfluoroelastomers being films, plates and rods (semi-finished products); Moulded semi-finished parts and finished products of vulcanised perfluoroelastomers, in particular in the form of seals and o-rings, for use in hydraulics, pneumatics and mechanical engineering; Barrier materials; Polymeric membranes, Polymeric porous membranes in hollow fibre form, Transfer membranes of polyamides, Waterproof membranes made of polymers, Insulating water proofing membranes, Waterproof membranes of vulcanised fibre
FINAL DESCRIPTION
Rubber, raw or semi-worked; gutta-percha; gum, raw or semi-worked; asbestos mortar; mica; Plastics in extruded form for use in further manufacturing; Packing, stopping and insulating materials of rubber or plastics; Cords of rubber, namely, sealing and packing cords; sealing materials for sensors; Rubber sealing and packing cord; Packing materials for forming seals for use with sensors; Gasket support rings, namely, non-metal gaskets for use in the food and beverage, medical, automotive, oil and gas, and agriculture industries; Artificial resins, in particular fluorocarbon resins and elastomers, being semi-finished products in the form of plates, tubes, rods, blocks, flexible pipes, not of metal, expansion joints, films for sealing purposes, filling material for reaction columns, balls as packing and filling material, filter material in the form of fibres or porous plates; Non-metal flexible tubing, namely, guide tubes, insulating tubes for electrical purposes, having springs with corrosion-resistant coatings for sealing purposes for mechanical seals, corrugated tubes for vacuum operation and being spring washers; Non-metal shaft seals of polytetrafluoroethylene, gum and highly elastic and thermoplastic plastics, namely, lip seals for moveable parts of machines; Sealing plugs made primarily from rubber, namely, metal-elastomer composite parts; Sealing materials, namely, sealing plates; Foils of metal for insulating; Sealing materials, namely, sealing frames; Plastics in extruded form for use in manufacture, being elastic rubber-like plastics, namely, molded plastic boards, sheets and flaps, profiles, discs and washers, all of which can be joined with metal and other plastic objects; Solid silicone parts, in particular jet formers for showers, seals, diaphragms, housing parts, injection-moulded parts; Liquid silicone seals; Plastics in the form of sheets, blocks, spheres, rods and tubes; Grooved rings, in particular including grooved rings of PTFE; Packing material for making seals, namely, stuffing box packings; Non-metal seals, namely, oil seals, fluid seals, insulating seals, reinforced seals, elastomeric seals, seals for pistons and rods, namely, cups, rings, packings and gaskets for sealing oil, grease and air in hydraulic and pneumatic applications; Packaging materials, namely, stuffing box packing for moulded seals for sealing and insulation purposes; Synthetic plastic as semi-finished products in form of plates of graphite-based materials for use as sealing rings, packing seals and heat insulation; Waterproof packings, namely, slide ring packings for pumps, mixers, blowers, and compressors; Glide ring packings, seals, and sealing support rings for sealing oil, grease or air in hydraulic and pneumatic applications; Guide elements for hydraulic and pneumatic applications, namely, guide rings and bearing rings for protecting cylinder rods and pistons; Sound dampening blankets for pneumatic applications; Sound insulating multilayered sheets, foam and plastics in the nature of sound dampening blankets for vehicle cabins, for the building industry and for use with industrial machines; Perfluoroelastomer, semi-processed plastic in the form of films, plates and rods; Moulded semi-finished parts and finished products of vulcanised perfluoroelastomers in the form of sealing materials, for use in hydraulics, pneumatics and mechanical engineering; Barrier materials made of elastomer; Insulating waterproofing membranes, namely, polymeric membranes, polymeric porous membranes in hollow fibre form, transfer membranes of polyamides; Insulating waterproofing membranes made of polymers, Insulating water proofing membranes, Insulating waterproofing membranes of vulcanised fibre; Shaped parts and moulded parts for mechanical and apparatus engineering of plastic, namely, fluorocarbon resin and elastomer expansion joints
FILING BASIS Section 1(b)
FILING BASIS Section 44(d)
       FOREIGN APPLICATION NUMBER 018016745
       FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY European Union Trademark - EUTM
       FOREIGN FILING DATE 01/30/2019
       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)
       FOREIGN REGISTRATION NUMBER 018016745
       FOREIGN REGISTRATION
       COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
European Union Trademark - EUTM
       FOREIGN REGISTRATION
       DATE
08/06/2019
       FOREIGN EXPIRATION DATE 01/30/2029
       FOREIGN REGISTRATION FILE NAME(S)
       ORIGINAL PDF FILE FRU1-65183161130-085744330_._EU_018016745_for_DICHTOMATIK.pdf
       CONVERTED PDF FILE(S)
       (25 pages)
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       STANDARD CHARACTERS
       OR EQUIVALENT
YES
GOODS AND/OR SERVICES SECTION (042) (current)
INTERNATIONAL CLASS 042
DESCRIPTION
Technical consultation in the field of industrial seals, development and design of seals
FILING BASIS Section 1(b)
FILING BASIS Section 44(d)
        FOREIGN APPLICATION NUMBER 018016745
       FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY European Union Trademark - EUTM
        FOREIGN FILING DATE 01/30/2019
GOODS AND/OR SERVICES SECTION (042) (proposed)
INTERNATIONAL CLASS 042
TRACKED TEXT DESCRIPTION
Technical consultation in the field of industrial seals, development and design of seals; Technical consulting services in the field of mechanical engineering of industrial seals; development and design of machinery seals
FINAL DESCRIPTION
Technical consulting services in the field of mechanical engineering of industrial seals; development and design of machinery seals
FILING BASIS Section 1(b)
FILING BASIS Section 44(d)
       FOREIGN APPLICATION NUMBER 018016745
       FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY European Union Trademark - EUTM
       FOREIGN FILING DATE 01/30/2019
       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)
       FOREIGN REGISTRATION NUMBER 018016745
       FOREIGN REGISTRATION
       COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
European Union Trademark - EUTM
       FOREIGN REGISTRATION
       DATE
08/06/2019
       FOREIGN EXPIRATION DATE 01/30/2029
       FOREIGN REGISTRATION FILE NAME(S)
       ORIGINAL PDF FILE FRU2-65183161130-085744330_._EU_018016745_for_DICHTOMATIK.pdf
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       (25 pages)
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       STANDARD CHARACTERS
       OR EQUIVALENT
YES
ATTORNEY INFORMATION (current)
NAME Jessica S. Sachs
ATTORNEY BAR MEMBERSHIP NUMBER NOT SPECIFIED
YEAR OF ADMISSION NOT SPECIFIED
U.S. STATE/ COMMONWEALTH/ TERRITORY NOT SPECIFIED
FIRM NAME HARNESS, DICKEY & PIERCE, P.L.C.
INTERNAL ADDRESS SUITE 200
STREET 5445 CORPORATE DRIVE
CITY TROY
STATE Michigan
POSTAL CODE 48098
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY United States
PHONE 248-641-1600
FAX 248-641-0270
EMAIL troymailroom@hdp.com
DOCKET/REFERENCE NUMBER 8470TF200283
ATTORNEY INFORMATION (proposed)
NAME Jessica S. Sachs
ATTORNEY BAR MEMBERSHIP NUMBER XXX
YEAR OF ADMISSION XXXX
U.S. STATE/ COMMONWEALTH/ TERRITORY XX
FIRM NAME HARNESS, DICKEY & PIERCE, P.L.C.
INTERNAL ADDRESS SUITE 200
STREET 5445 CORPORATE DRIVE
CITY TROY
STATE Michigan
POSTAL CODE 48098
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY United States
PHONE 248-641-1600
FAX 248-641-0270
EMAIL troymailroom@hdp.com
DOCKET/REFERENCE NUMBER 8470TF200283
OTHER APPOINTED ATTORNEY Any and all attorneys associated with Harness, Dickey & Pierce, P.L.C.
CORRESPONDENCE INFORMATION (current)
NAME JESSICA S. SACHS
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE troymailroom@hdp.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) jsachs@hdp.com; hrowe@hdp.com
DOCKET/REFERENCE NUMBER 8470TF200283
CORRESPONDENCE INFORMATION (proposed)
NAME Jessica S. Sachs
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE troymailroom@hdp.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) jsachs@hdp.com; hrowe@hdp.com
DOCKET/REFERENCE NUMBER 8470TF200283
SIGNATURE SECTION
DECLARATION SIGNATURE /jss/
SIGNATORY'S NAME Jessica S. Sachs
SIGNATORY'S POSITION Attorney for Applicant; Attorney with Harness, Dickey & Pierce, P.L.C.
SIGNATORY'S PHONE NUMBER 248-641-1292
DATE SIGNED 02/17/2020
RESPONSE SIGNATURE /jss/
SIGNATORY'S NAME Jessica S. Sachs
SIGNATORY'S POSITION Attorney for Applicant; Attorney with Harness, Dickey & Pierce, P.L.C.
SIGNATORY'S PHONE NUMBER 248-641-1292
DATE SIGNED 02/17/2020
AUTHORIZED SIGNATORY YES
FILING INFORMATION SECTION
SUBMIT DATE Mon Feb 17 09:43:38 ET 2020
TEAS STAMP USPTO/ROA-XX.XXX.XXX.XXX-
20200217094338042140-8850
5192-71080ec8f939019cdd43
52af2d1ac8bdff973f4d6ef13
cab6da7921c6c1fbf1eee-N/A
-N/A-20200217085744330302



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. 88505192 DICHTOMATIK(Standard Characters, see http://uspto.report/TM/88505192/mark.png) has been amended as follows:

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

This communication responds to the Office Action issued on September 28, 2019 in connection with the subject application. Reconsideration is respectfully requested in light of the following amendments and remarks. Section 2(d) Refusal ? The subject application was preliminarily refused in Class 17 based on a perceived likelihood of confusion with Registration No. 2623007 for DICHTOMATIK owned by Dichtomatik Vertriebsgesellschaft fur Technische Dichtungen mbH. Applicant has assigned the subject application to Dichtomatik Vertriebsgesellschaft fur Technische Dichtungen mbH. Consequently, because the subject application and the cited registration are now owned by the same entity, the citation is no longer warranted. The assignment was recorded with the USPTO at Reel/Frame 6858/0019 on February 6, 2020. A copy of the Notice of Recordation of Assignment Document is submitted herewith. Foreign Registration Certificate ? Applicant submits herewith the Certificate of Registration for EU Registration No. 018016745 for the mark in support of the Section 44(e) basis. Description of Goods and Services ? Applicant has amended the description of goods and services as requested by the Examining Attorney. Applicant notes that much of the amended wording is the same as the wording recently adopted by Applicant and accepted by the USPTO in connection with Registration No. 5,707,055 issued March 26, 2019 for the trademark SEVENTOMATIC (see TESS printout). In light of the foregoing, Applicant believes the application is now in condition for publication. Formal notice in that regard is respectfully requested.

EVIDENCE
Evidence in the nature of evidence in support of Response to Office Action has been attached.
Original PDF file:
evi_65183161130-20200217085744330302_._Assignment.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_65183161130-20200217085744330302_._TESS_-_SEVENTOMATIC.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 007 for Machines for processing metal, wood and plastic, machines for the chemical industry, agriculture, mining and the beverages industry, textile machines, construction machines, packaging machines and machine tools; Motors and engines (except for land vehicles); Machine coupling and transmission components (except for land vehicles); Agricultural implements other than hand-operated; Hydraulic accumulators for storing and providing pressure; Hydraulic accumulators, in particular diaphragm accumulators, piston accumulators, accumulators for axle suspension, wheel suspension and/or cab suspension; Belts for machines; Rollers for printing machines; pump and valve diaphragms; Antifriction bearings for machines; Ball bearings, roller bearings and plain bearings as machine parts; Self-lubricating bearings; Bearings for transmission shafts; Journal boxes (parts of machines); Gaskets being parts of machines or engines; Mechanical seals being parts of machines or engines, in particular being crankshaft seals; Mechanical seals being transmission seals, turbocharger seals or for sealing electric motors; Mechanical seals for hydrodynamic or pneumatic applications being parts of machines, engines or gearboxes; Rotary shaft seals being parts of machines or engines; Rod wipers and piston guide rings used in hydraulic and pneumatic cylinders; Guide and oil-removing elements for hydraulic and pneumocylinders; Intake manifolds for land, air and sea vehicles; Parts for motors and engines of air and water vehicles, namely, shaft couplings, Transmission shafts, Journals; Piston rings, guide rings, valves and parts therefor, bearings and guides, shaped parts and moulded parts for mechanical and apparatus engineering, in particular of plastic or predominantly of plastic, in particular of fluorocarbon resin or elastomers; Machine belts; Bellows; Blow guns, In particular folding bellows of rubber, folding bellows of TPE; Elastic bearings for machines or engines as noise and vibration absorption parts; Pneumatic springs and spring legs with bellows of elastomeric material for supporting vibrating vehicle and machine parts; Elastic springs for damping noise, vibration and shock insulation as parts of machines; Multilayer springs for damping noise, vibration and shock insulation as parts of machines; Parts of motors for damping and vibroinsulation; Gas-distributing and valve-actuating machinery; Parts for motors and engines of land vehicles, namely, bearing pins; Finished products of vulcanised perfluoroelastomers in the form of membranes for use in hydraulics, pneumatics and mechanical engineering
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 018016745 filed 01/30/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Machines for processing metal, wood and plastic, machines for the chemical industry, agriculture, mining and the beverages industry, textile machines, construction machines, packaging machines and machine tools; Machines for working metal, milling wood and processing plastic; Motors and engines (except for land vehicles); machines for the chemical industry, agriculture, mining and the beverages industry; Machine coupling and transmission components (except for land vehicles); textile bonding machines, concrete construction machines, packaging machines and metalworking machine tools; Agricultural implements other than hand-operated; Motors and engines, except for land vehicles; Hydraulic accumulators for storing and providing pressure; Machine coupling and transmission components, except for land vehicles; Hydraulic accumulators, in particular diaphragm accumulators, piston accumulators, accumulators for axle suspension, wheel suspension and/or cab suspension; Agricultural implements, namely, incorporators, rollers, harvesters, reapers, mowers; Hydraulic accumulators being parts of machines for storing and providing pressure; Hydraulic accumulators being parts of machines, namely, diaphragm accumulators, piston accumulators, accumulators for axle suspension, wheel suspension and cab suspension; Belts for machines; Antifriction bearings for machines; Rollers for printing machines; pump and valve diaphragms; Self-lubricating bearings; Anti-friction bearings for machines; Bearings for transmission shafts; Ball bearings, roller bearings and plain bearings as machine parts; Journal boxes (parts of machines); Self-lubricating bearings, as parts of machines; Gaskets being parts of machines or engines; Bearings for transmission shafts being parts of machines; Mechanical seals being parts of machines or engines, in particular being crankshaft seals; Journal boxes being parts of machines; Mechanical seals being transmission seals, turbocharger seals or for sealing electric motors; Pipe gaskets being parts of machines or engines; Mechanical seals for hydrodynamic or pneumatic applications being parts of machines, engines or gearboxes; Mechanical seals being parts of machines and engines, namely, crankshaft seals; Rotary shaft seals being parts of machines or engines; Mechanical seals being parts of machines, namely, transmission seals, turbocharger seals and for sealing electric motors; Rod wipers and piston guide rings used in hydraulic and pneumatic cylinders; Mechanical seals being parts of machines for hydrodynamic and pneumatic applications engines and gearboxes; Guide and oil-removing elements for hydraulic and pneumocylinders; Rotary shaft mechanical seals being parts of machines or engines; Intake manifolds for land, air and sea vehicles; Rod blowers and piston guide rings used in hydraulic and pneumatic cylinders being engine parts; Parts for motors and engines of air and water vehicles, namely, shaft couplings, Transmission shafts, Journals; Oil separators for hydraulic and pneumocylinders; Piston rings, guide rings, valves and parts therefor, bearings and guides, shaped parts and moulded parts for mechanical and apparatus engineering, in particular of plastic or predominantly of plastic, in particular of fluorocarbon resin or elastomers; Intake manifolds for internal combustion engines for land, air and sea vehicles; Parts for motors and engines of air and water vehicles, namely, shaft couplings, transmission shafts, other than for land vehicles, journal boxes; Bellows; Machine parts, namely, piston rings, guide rings, valves, bearings; Blow guns, In particular folding bellows of rubber, folding bellows of TPE; Machine belts; Elastic bearings for machines or engines as noise and vibration absorption parts; Bellows being machines; Pneumatic springs and spring legs with bellows of elastomeric material for supporting vibrating vehicle and machine parts; Pneumatic blow guns for use in a manufacturing process to blow dust off parts, workstations or wherever necessary; Elastic springs for damping noise, vibration and shock insulation as parts of machines; Parts for pneumatic blow guns, namely, folding bellows of rubber, folding bellows of TPE; Multilayer springs for damping noise, vibration and shock insulation as parts of machines; Bellows being machines of rubber; Parts of motors for damping and vibroinsulation; Elastic bearings for machines and engines as noise and vibration absorption parts; Gas-distributing and valve-actuating machinery; Pneumatic springs and spring legs being parts of machines with bellows of elastomeric material for supporting vibrating vehicle and machine parts; Elastic springs being parts of machines for damping noise, vibration and shock insulation as parts of machines; Finished products of vulcanised perfluoroelastomers in the form of membranes for use in hydraulics, pneumatics and mechanical engineering; Multilayer springs being parts of machines for damping noise, vibration and shock insulation as parts of machines; Parts of motors for damping and vibroinsulation, namely, compressors, pumps, and taps; Valves being parts of machines, namely, gas-distributing valves and valve-actuating machinery; Parts for motors and engines of land vehicles, namely, bearing pins; Filters being parts of machines in the form of membranes for use in hydraulics, pneumatics and mechanical engineering; Non-metal machine parts, namely, radial shaft seals, shaft sealing rings, cassette seals; Non-metal machine parts, namely, combination seals; Non-metal machine parts, namely, rotary seals; Non-metal machine parts, namely, packings for static seals; Non-metal machine parts, namely, valve stem seals; Non-metal machine parts, namely, hydraulic brake seals, O-ring seals for vehicles, support seals, composite seals, fibrous gaskets, butterfly valve seals, seals for shock-absorbers and gas springs, valve spindle seals, seals for hydraulic braking systems, seals for hydraulic and pneumocylinders, sealing rings, flat seals; Mechanical seals in the nature of profile seals, axle seals, hydraulic and pneumatic seals, in particular, rod seals; Mechanical seals, namely, piston seals; Mechanical seals, namely, rod wiper seals; Mechanical seals, namely, buffer seals; Wiper rings and guide rings for sealing against oil, grease or air in hydraulic and pneumatic cylinders as parts of machines; Screw seal rings, in particular USIT rings; Mechanical seals, namely, rotary pressure seals; Pump diaphragms, namely, accumulator and separator diaphragms, pump diaphragms, regulating and switching diaphragms; Pump diaphragms, namely, partition diaphragms and diaphragms of elastomers; Machine parts, namely, molds of polytetrafluoroethylene for use in the manufacture of seals; Machine parts, namely, molds of liquid silicon for use in the manufacture of seals; Machine parts, namely, molds of polytetrafluoroethylene for use in the manufacture of seals; Mechanical seals, namely, static and dynamic seals; Mechanical seals, namely, static cylinder cover seals; V-packings as multiple lip chevron packing seals designed to seal static reciprocating and centrifugal applications, where the male and female adapters are used to complete a set of veesClass 007 for Machines for working metal, milling wood and processing plastic; machines for the chemical industry, agriculture, mining and the beverages industry; textile bonding machines, concrete construction machines, packaging machines and metalworking machine tools; Motors and engines, except for land vehicles; Machine coupling and transmission components, except for land vehicles; Agricultural implements, namely, incorporators, rollers, harvesters, reapers, mowers; Hydraulic accumulators being parts of machines for storing and providing pressure; Hydraulic accumulators being parts of machines, namely, diaphragm accumulators, piston accumulators, accumulators for axle suspension, wheel suspension and cab suspension; Belts for machines; Rollers for printing machines; pump and valve diaphragms; Anti-friction bearings for machines; Ball bearings, roller bearings and plain bearings as machine parts; Self-lubricating bearings, as parts of machines; Bearings for transmission shafts being parts of machines; Journal boxes being parts of machines; Pipe gaskets being parts of machines or engines; Mechanical seals being parts of machines and engines, namely, crankshaft seals; Mechanical seals being parts of machines, namely, transmission seals, turbocharger seals and for sealing electric motors; Mechanical seals being parts of machines for hydrodynamic and pneumatic applications engines and gearboxes; Rotary shaft mechanical seals being parts of machines or engines; Rod blowers and piston guide rings used in hydraulic and pneumatic cylinders being engine parts; Oil separators for hydraulic and pneumocylinders; Intake manifolds for internal combustion engines for land, air and sea vehicles; Parts for motors and engines of air and water vehicles, namely, shaft couplings, transmission shafts, other than for land vehicles, journal boxes; Machine parts, namely, piston rings, guide rings, valves, bearings; Machine belts; Bellows being machines; Pneumatic blow guns for use in a manufacturing process to blow dust off parts, workstations or wherever necessary; Parts for pneumatic blow guns, namely, folding bellows of rubber, folding bellows of TPE; Bellows being machines of rubber; Elastic bearings for machines and engines as noise and vibration absorption parts; Pneumatic springs and spring legs being parts of machines with bellows of elastomeric material for supporting vibrating vehicle and machine parts; Elastic springs being parts of machines for damping noise, vibration and shock insulation as parts of machines; Multilayer springs being parts of machines for damping noise, vibration and shock insulation as parts of machines; Parts of motors for damping and vibroinsulation, namely, compressors, pumps, and taps; Valves being parts of machines, namely, gas-distributing valves and valve-actuating machinery; Parts for motors and engines of land vehicles, namely, bearing pins; Filters being parts of machines in the form of membranes for use in hydraulics, pneumatics and mechanical engineering; Non-metal machine parts, namely, radial shaft seals, shaft sealing rings, cassette seals; Non-metal machine parts, namely, combination seals; Non-metal machine parts, namely, rotary seals; Non-metal machine parts, namely, packings for static seals; Non-metal machine parts, namely, valve stem seals; Non-metal machine parts, namely, hydraulic brake seals, O-ring seals for vehicles, support seals, composite seals, fibrous gaskets, butterfly valve seals, seals for shock-absorbers and gas springs, valve spindle seals, seals for hydraulic braking systems, seals for hydraulic and pneumocylinders, sealing rings, flat seals; Mechanical seals in the nature of profile seals, axle seals, hydraulic and pneumatic seals, in particular, rod seals; Mechanical seals, namely, piston seals; Mechanical seals, namely, rod wiper seals; Mechanical seals, namely, buffer seals; Wiper rings and guide rings for sealing against oil, grease or air in hydraulic and pneumatic cylinders as parts of machines; Screw seal rings, in particular USIT rings; Mechanical seals, namely, rotary pressure seals; Pump diaphragms, namely, accumulator and separator diaphragms, pump diaphragms, regulating and switching diaphragms; Pump diaphragms, namely, partition diaphragms and diaphragms of elastomers; Machine parts, namely, molds of polytetrafluoroethylene for use in the manufacture of seals; Machine parts, namely, molds of liquid silicon for use in the manufacture of seals; Machine parts, namely, molds of polytetrafluoroethylene for use in the manufacture of seals; Mechanical seals, namely, static and dynamic seals; Mechanical seals, namely, static cylinder cover seals; V-packings as multiple lip chevron packing seals designed to seal static reciprocating and centrifugal applications, where the male and female adapters are used to complete a set of vees
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 018016745 filed 01/30/2019]. 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 018016745 registered 08/06/2019 with a renewal date of __________ and an expiration date of 01/30/2029 ], 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:
FRU0-65183161130-085744330_._EU_018016745_for_DICHTOMATIK.pdf
Converted PDF file(s) ( 25 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5
Foreign Registration-6
Foreign Registration-7
Foreign Registration-8
Foreign Registration-9
Foreign Registration-10
Foreign Registration-11
Foreign Registration-12
Foreign Registration-13
Foreign Registration-14
Foreign Registration-15
Foreign Registration-16
Foreign Registration-17
Foreign Registration-18
Foreign Registration-19
Foreign Registration-20
Foreign Registration-21
Foreign Registration-22
Foreign Registration-23
Foreign Registration-24
Foreign Registration-25

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant proposes to amend the following:
Current: Class 017 for Rubber, gutta-percha, gum, asbestos, mica; Plastics in extruded form for use in manufacture; Packing, stopping and insulating materials; Sealing and packing cord, Packing and stopping materials, Seals for sensors; Gasket support rings; Artificial resins, in particular fluorocarbon resins or elastomers, being semi-finished products in the form of plates, tubes, rods, blocks, flexible pipes, not of metal, fittings, expansion joints, films for sealing purposes, filling material for reaction columns, balls, filter material in the form of fibres or porous plates; Guide tubes, insulating tubes and insulating parts for electrical purposes, having springs with corrosion-resistant coatings for sealing purposes, in particular for mechanical seals, corrugated tubes for vacuum operation and being spring washers; All of the aforesaid goods being made of or predominantly of plastic, in particular of fluorocarbon resin or elastomers; Shaft seals of polytetrafluoroethylene, gum or highly elastic and thermoplastic plastics, including combined with metal or other plastics, in particular lip seals for moveable parts of machines; radial shaft seals, Shaft sealing rings, Cassette seals; Combination seals; Rotary seals; Packings for static seals; Valve stem seals; Hydraulic brake seals; O-ring seals; Support seals; Composite seals; fibrous gaskets; Butterfly valve seals; Sealing plugs being metal-elastomer composite parts (predominantly of elastomers); Seals for shock-absorbers and gas springs; Valve spindle seals; Seals for hydraulic braking systems; Seals for hydraulic and pneumocylinders; Sealing rings; O-rings; Flat seals; Profile seals; Axle seals; Sealing plates; Insulating foils; Sealing frames; Hydraulic and pneumatic seals, in particular rod seals; Piston seals; Rod wiper seals; Buffer seals; Wiper rings and guide rings for sealing against oil, grease or air in hydraulic and pneumatic cylinders; Plastics in extruded form for use in manufacture, being elastic rubber-like plastics, in particular including combined with metals and other plastics, in particular moulded parts, including boards, sheets and flaps, profiles, discs and washers; Screw seal rings, in particular USIT rings; Rotary pressure seals; Diaphragms, in particular accumulator and separator diaphragms, pump diaphragms, regulating and switching diaphragms; Partitions, being diaphragms, in particular being diaphragms of elastomers; Moulded parts of polytetrafluoroethylene; Solid silicone parts, in particular jet formers for showers, seals, diaphragms, housing parts, injection-moulded parts; Moulded parts for machine elements made of liquid silicon; Liquid silicone seals; Plastics in the form of sheets, blocks, spheres, rods and tubes; Moulded parts of PTFE; Grooved rings, in particular including grooved rings of PTFE; Static and dynamic seals; Static cylinder cover seals; V-packings as multiple lip (chevron) packing seals designed to seal static reciprocating and centrifugal applications, where the male and female adapters are used to complete a set of vees; Stuffing box packings (seals); Micro-parts of plastic or elastomeric material (semi-finished products); Non-metal seals, namely, oil seals, fluid seals, insulating seals, reinforced seals, elastomeric seals, seals for pistons and rods, namely, cups, rings, packings and gaskets, all the foregoing for sealing oil, grease or air in hydraulic and pneumatic applications; Packaging materials for moulded seals for sealing and insulation purposes; Plates of graphite-based materials for use as sealing rings, packing seals and heat insulation; Slide ring packings, Sliding ring seals and Gasket support rings; Glide ring packings, seals, and sealing support rings for sealing oil, grease or air in hydraulic and pneumatic applications; Guide elements for hydraulic and pneumatic applications, in particular guide rings and bearing rings for protecting cylinder rods and pistons; Damping elements, in particular for pneumatic applications; Sound insulating multilayered sheets and formed parts of foam and/or plastics for vehicle cabins, for the building industry and for industrial machines; Perfluoroelastomers being films, plates and rods (semi-finished products); Moulded semi-finished parts and finished products of vulcanised perfluoroelastomers, in particular in the form of seals and o-rings, for use in hydraulics, pneumatics and mechanical engineering; Barrier materials; Polymeric membranes, Polymeric porous membranes in hollow fibre form, Transfer membranes of polyamides, Waterproof membranes made of polymers, Insulating water proofing membranes, Waterproof membranes of vulcanised fibre
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 018016745 filed 01/30/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Rubber, gutta-percha, gum, asbestos, mica; Rubber, raw or semi-worked; Plastics in extruded form for use in manufacture; gutta-percha; Packing, stopping and insulating materials; gum, raw or semi-worked; Sealing and packing cord, Packing and stopping materials, Seals for sensors; asbestos mortar; Gasket support rings; mica; Artificial resins, in particular fluorocarbon resins or elastomers, being semi-finished products in the form of plates, tubes, rods, blocks, flexible pipes, not of metal, fittings, expansion joints, films for sealing purposes, filling material for reaction columns, balls, filter material in the form of fibres or porous plates; Plastics in extruded form for use in further manufacturing; Guide tubes, insulating tubes and insulating parts for electrical purposes, having springs with corrosion-resistant coatings for sealing purposes, in particular for mechanical seals, corrugated tubes for vacuum operation and being spring washers; Packing, stopping and insulating materials of rubber or plastics; All of the aforesaid goods being made of or predominantly of plastic, in particular of fluorocarbon resin or elastomers; Cords of rubber, namely, sealing and packing cords; Shaft seals of polytetrafluoroethylene, gum or highly elastic and thermoplastic plastics, including combined with metal or other plastics, in particular lip seals for moveable parts of machines; sealing materials for sensors; radial shaft seals, Shaft sealing rings, Cassette seals; Rubber sealing and packing cord; Combination seals; Packing materials for forming seals for use with sensors; Rotary seals; Gasket support rings, namely, non-metal gaskets for use in the food and beverage, medical, automotive, oil and gas, and agriculture industries; Packings for static seals; Artificial resins, in particular fluorocarbon resins and elastomers, being semi-finished products in the form of plates, tubes, rods, blocks, flexible pipes, not of metal, expansion joints, films for sealing purposes, filling material for reaction columns, balls as packing and filling material, filter material in the form of fibres or porous plates; Valve stem seals; Non-metal flexible tubing, namely, guide tubes, insulating tubes for electrical purposes, having springs with corrosion-resistant coatings for sealing purposes for mechanical seals, corrugated tubes for vacuum operation and being spring washers; Hydraulic brake seals; Non-metal shaft seals of polytetrafluoroethylene, gum and highly elastic and thermoplastic plastics, namely, lip seals for moveable parts of machines; O-ring seals; Sealing plugs made primarily from rubber, namely, metal-elastomer composite parts; Support seals; Sealing materials, namely, sealing plates; Composite seals; Foils of metal for insulating; fibrous gaskets; Sealing materials, namely, sealing frames; Butterfly valve seals; Plastics in extruded form for use in manufacture, being elastic rubber-like plastics, namely, molded plastic boards, sheets and flaps, profiles, discs and washers, all of which can be joined with metal and other plastic objects; Sealing plugs being metal-elastomer composite parts (predominantly of elastomers); Solid silicone parts, in particular jet formers for showers, seals, diaphragms, housing parts, injection-moulded parts; Seals for shock-absorbers and gas springs; Liquid silicone seals; Valve spindle seals; Plastics in the form of sheets, blocks, spheres, rods and tubes; Seals for hydraulic braking systems; Grooved rings, in particular including grooved rings of PTFE; Seals for hydraulic and pneumocylinders; Packing material for making seals, namely, stuffing box packings; Sealing rings; Non-metal seals, namely, oil seals, fluid seals, insulating seals, reinforced seals, elastomeric seals, seals for pistons and rods, namely, cups, rings, packings and gaskets for sealing oil, grease and air in hydraulic and pneumatic applications; O-rings; Packaging materials, namely, stuffing box packing for moulded seals for sealing and insulation purposes; Flat seals; Synthetic plastic as semi-finished products in form of plates of graphite-based materials for use as sealing rings, packing seals and heat insulation; Profile seals; Waterproof packings, namely, slide ring packings for pumps, mixers, blowers, and compressors; Axle seals; Glide ring packings, seals, and sealing support rings for sealing oil, grease or air in hydraulic and pneumatic applications; Sealing plates; Guide elements for hydraulic and pneumatic applications, namely, guide rings and bearing rings for protecting cylinder rods and pistons; Insulating foils; Sound dampening blankets for pneumatic applications; Sealing frames; Sound insulating multilayered sheets, foam and plastics in the nature of sound dampening blankets for vehicle cabins, for the building industry and for use with industrial machines; Hydraulic and pneumatic seals, in particular rod seals; Perfluoroelastomer, semi-processed plastic in the form of films, plates and rods; Piston seals; Moulded semi-finished parts and finished products of vulcanised perfluoroelastomers in the form of sealing materials, for use in hydraulics, pneumatics and mechanical engineering; Rod wiper seals; Barrier materials made of elastomer; Buffer seals; Insulating waterproofing membranes, namely, polymeric membranes, polymeric porous membranes in hollow fibre form, transfer membranes of polyamides; Wiper rings and guide rings for sealing against oil, grease or air in hydraulic and pneumatic cylinders; Insulating waterproofing membranes made of polymers, Insulating water proofing membranes, Insulating waterproofing membranes of vulcanised fibre; Plastics in extruded form for use in manufacture, being elastic rubber-like plastics, in particular including combined with metals and other plastics, in particular moulded parts, including boards, sheets and flaps, profiles, discs and washers; Shaped parts and moulded parts for mechanical and apparatus engineering of plastic, namely, fluorocarbon resin and elastomer expansion joints; Screw seal rings, in particular USIT rings; Rotary pressure seals; Diaphragms, in particular accumulator and separator diaphragms, pump diaphragms, regulating and switching diaphragms; Partitions, being diaphragms, in particular being diaphragms of elastomers; Moulded parts of polytetrafluoroethylene; Moulded parts for machine elements made of liquid silicon; Moulded parts of PTFE; Static and dynamic seals; Static cylinder cover seals; V-packings as multiple lip (chevron) packing seals designed to seal static reciprocating and centrifugal applications, where the male and female adapters are used to complete a set of vees; Stuffing box packings (seals); Micro-parts of plastic or elastomeric material (semi-finished products); Non-metal seals, namely, oil seals, fluid seals, insulating seals, reinforced seals, elastomeric seals, seals for pistons and rods, namely, cups, rings, packings and gaskets, all the foregoing for sealing oil, grease or air in hydraulic and pneumatic applications; Packaging materials for moulded seals for sealing and insulation purposes; Plates of graphite-based materials for use as sealing rings, packing seals and heat insulation; Slide ring packings, Sliding ring seals and Gasket support rings; Guide elements for hydraulic and pneumatic applications, in particular guide rings and bearing rings for protecting cylinder rods and pistons; Damping elements, in particular for pneumatic applications; Sound insulating multilayered sheets and formed parts of foam and/or plastics for vehicle cabins, for the building industry and for industrial machines; Perfluoroelastomers being films, plates and rods (semi-finished products); Moulded semi-finished parts and finished products of vulcanised perfluoroelastomers, in particular in the form of seals and o-rings, for use in hydraulics, pneumatics and mechanical engineering; Barrier materials; Polymeric membranes, Polymeric porous membranes in hollow fibre form, Transfer membranes of polyamides, Waterproof membranes made of polymers, Insulating water proofing membranes, Waterproof membranes of vulcanised fibreClass 017 for Rubber, raw or semi-worked; gutta-percha; gum, raw or semi-worked; asbestos mortar; mica; Plastics in extruded form for use in further manufacturing; Packing, stopping and insulating materials of rubber or plastics; Cords of rubber, namely, sealing and packing cords; sealing materials for sensors; Rubber sealing and packing cord; Packing materials for forming seals for use with sensors; Gasket support rings, namely, non-metal gaskets for use in the food and beverage, medical, automotive, oil and gas, and agriculture industries; Artificial resins, in particular fluorocarbon resins and elastomers, being semi-finished products in the form of plates, tubes, rods, blocks, flexible pipes, not of metal, expansion joints, films for sealing purposes, filling material for reaction columns, balls as packing and filling material, filter material in the form of fibres or porous plates; Non-metal flexible tubing, namely, guide tubes, insulating tubes for electrical purposes, having springs with corrosion-resistant coatings for sealing purposes for mechanical seals, corrugated tubes for vacuum operation and being spring washers; Non-metal shaft seals of polytetrafluoroethylene, gum and highly elastic and thermoplastic plastics, namely, lip seals for moveable parts of machines; Sealing plugs made primarily from rubber, namely, metal-elastomer composite parts; Sealing materials, namely, sealing plates; Foils of metal for insulating; Sealing materials, namely, sealing frames; Plastics in extruded form for use in manufacture, being elastic rubber-like plastics, namely, molded plastic boards, sheets and flaps, profiles, discs and washers, all of which can be joined with metal and other plastic objects; Solid silicone parts, in particular jet formers for showers, seals, diaphragms, housing parts, injection-moulded parts; Liquid silicone seals; Plastics in the form of sheets, blocks, spheres, rods and tubes; Grooved rings, in particular including grooved rings of PTFE; Packing material for making seals, namely, stuffing box packings; Non-metal seals, namely, oil seals, fluid seals, insulating seals, reinforced seals, elastomeric seals, seals for pistons and rods, namely, cups, rings, packings and gaskets for sealing oil, grease and air in hydraulic and pneumatic applications; Packaging materials, namely, stuffing box packing for moulded seals for sealing and insulation purposes; Synthetic plastic as semi-finished products in form of plates of graphite-based materials for use as sealing rings, packing seals and heat insulation; Waterproof packings, namely, slide ring packings for pumps, mixers, blowers, and compressors; Glide ring packings, seals, and sealing support rings for sealing oil, grease or air in hydraulic and pneumatic applications; Guide elements for hydraulic and pneumatic applications, namely, guide rings and bearing rings for protecting cylinder rods and pistons; Sound dampening blankets for pneumatic applications; Sound insulating multilayered sheets, foam and plastics in the nature of sound dampening blankets for vehicle cabins, for the building industry and for use with industrial machines; Perfluoroelastomer, semi-processed plastic in the form of films, plates and rods; Moulded semi-finished parts and finished products of vulcanised perfluoroelastomers in the form of sealing materials, for use in hydraulics, pneumatics and mechanical engineering; Barrier materials made of elastomer; Insulating waterproofing membranes, namely, polymeric membranes, polymeric porous membranes in hollow fibre form, transfer membranes of polyamides; Insulating waterproofing membranes made of polymers, Insulating water proofing membranes, Insulating waterproofing membranes of vulcanised fibre; Shaped parts and moulded parts for mechanical and apparatus engineering of plastic, namely, fluorocarbon resin and elastomer expansion joints
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 018016745 filed 01/30/2019]. 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 018016745 registered 08/06/2019 with a renewal date of __________ and an expiration date of 01/30/2029 ], 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:
FRU1-65183161130-085744330_._EU_018016745_for_DICHTOMATIK.pdf
Converted PDF file(s) ( 25 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5
Foreign Registration-6
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The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant proposes to amend the following:
Current: Class 042 for Technical consultation in the field of industrial seals, development and design of seals
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 018016745 filed 01/30/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Technical consultation in the field of industrial seals, development and design of seals; Technical consulting services in the field of mechanical engineering of industrial seals; development and design of machinery sealsClass 042 for Technical consulting services in the field of mechanical engineering of industrial seals; development and design of machinery seals
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 018016745 filed 01/30/2019]. 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 018016745 registered 08/06/2019 with a renewal date of __________ and an expiration date of 01/30/2029 ], 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:
FRU2-65183161130-085744330_._EU_018016745_for_DICHTOMATIK.pdf
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The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Carl Freudenberg KG a(n) kommanditgesellschaft (kg), legally organized under the laws of Germany, having an address of
      Hoehnerweg 2-4
      Weinheim, 69469
      Germany

Proposed: DICHTOMATIK VERTRIEBSGESELLSCHAFT FUR TECHNISCHE DICHTUNGEN MBH (by way of Assignment at Reel/Frame: 6858/0019), limited liability company legally organized under the laws of Germany, having an address of
      Albert-Schweitzer-Rina 1
      Hamburg, 22045
      Germany
      Email Address: jsachs@hdp.com

The owner's/holder's current attorney information: Jessica S. Sachs. Jessica S. Sachs of HARNESS, DICKEY & PIERCE, P.L.C., is located at

      SUITE 200
      5445 CORPORATE DRIVE
      TROY, Michigan 48098
      United States
The docket/reference number is 8470TF200283.
      The phone number is 248-641-1600.
      The fax number is 248-641-0270.
      The email address is troymailroom@hdp.com

The owner's/holder's proposed attorney information: Jessica S. Sachs. Other appointed attorneys are Any and all attorneys associated with Harness, Dickey & Pierce, P.L.C.. Jessica S. Sachs of HARNESS, DICKEY & PIERCE, 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

      SUITE 200
      5445 CORPORATE DRIVE
      TROY, Michigan 48098
      United States
The docket/reference number is 8470TF200283.
      The phone number is 248-641-1600.
      The fax number is 248-641-0270.
      The email address is troymailroom@hdp.com

Jessica S. Sachs 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):
      JESSICA S. SACHS
      PRIMARY EMAIL FOR CORRESPONDENCE: troymailroom@hdp.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): jsachs@hdp.com; hrowe@hdp.com

The docket/reference number is 8470TF200283.
Correspondence Information (proposed):
      Jessica S. Sachs
      PRIMARY EMAIL FOR CORRESPONDENCE: troymailroom@hdp.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): jsachs@hdp.com; hrowe@hdp.com

The docket/reference number is 8470TF200283.

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

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.



Signature: /jss/      Date: 02/17/2020
Signatory's Name: Jessica S. Sachs
Signatory's Position: Attorney for Applicant; Attorney with Harness, Dickey & Pierce, P.L.C.
Signatory's Phone Number: 248-641-1292


Response Signature
Signature: /jss/     Date: 02/17/2020
Signatory's Name: Jessica S. Sachs
Signatory's Position: Attorney for Applicant; Attorney with Harness, Dickey & Pierce, P.L.C.

Signatory's Phone Number: 248-641-1292

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:    JESSICA S. SACHS
   HARNESS, DICKEY & PIERCE, P.L.C.
   SUITE 200
   5445 CORPORATE DRIVE
   TROY, Michigan 48098
Mailing Address:    Jessica S. Sachs
   HARNESS, DICKEY & PIERCE, P.L.C.
   SUITE 200
   5445 CORPORATE DRIVE
   TROY, Michigan 48098
        
Serial Number: 88505192
Internet Transmission Date: Mon Feb 17 09:43:38 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-202002170943380
42140-88505192-71080ec8f939019cdd4352af2
d1ac8bdff973f4d6ef13cab6da7921c6c1fbf1ee
e-N/A-N/A-20200217085744330302


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