Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88530326 1NW(Standard Characters, see http://uspto.report/TM/88530326/mark.png) has been amended as follows:

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

In response to the Office Action of August 20, 2019, Applicant amends the application to seek registration on the Supplemental Register. Applicant does not have information or documentation to provide at this time, as the products have not been publicly announced. Further, in response to the Examiner's inquiries: Question 1 - Do applicant?s goods and services referenced in this application pertain in whole or in part to ?nanowatt computing?? - No. Question 2 - Do applicant?s goods produce power measured in nanowatts, i.e. ?nW? units? ? No.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Semi-conductors; semi-conductor memories; semiconductor devices; semiconductor components; integrated circuits; chips (integrated circuits); blank flash memory cards; blank USB Flash drives; solid state drives; Downloadable and recorded software for use in semiconductor manufacturing; Downloadable and recorded computer software for use in integrated circuit design; Downloadable and recorded computer software for improving and increasing efficiency in the field of semiconductor manufacturing; Downloadable and recorded computer software for use in designing and manufacturing of semiconductor systems and for designing of semiconductor cell library and integrated circuits
Original Filing Basis:
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 018096466 filed 07/18/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Semi-conductors; semi-conductor memories; semiconductor devices; semiconductor components; integrated circuits; chips (integrated circuits); electronic chips for the manufacture of integrated circuits; blank flash memory cards; blank USB Flash drives; solid state drives; Downloadable and recorded software for use in semiconductor manufacturing; Downloadable and recorded computer software for use in integrated circuit design; Downloadable and recorded computer software for improving and increasing efficiency in the field of semiconductor manufacturing; Downloadable and recorded computer software for use in designing and manufacturing of semiconductor systems and for designing of semiconductor cell library and integrated circuitsClass 009 for Semi-conductors; semi-conductor memories; semiconductor devices; semiconductor components; integrated circuits; electronic chips for the manufacture of integrated circuits; blank flash memory cards; blank USB Flash drives; solid state drives; Downloadable and recorded software for use in semiconductor manufacturing; Downloadable and recorded computer software for use in integrated circuit design; Downloadable and recorded computer software for improving and increasing efficiency in the field of semiconductor manufacturing; Downloadable and recorded computer software for use in designing and manufacturing of semiconductor systems and for designing of semiconductor cell library and integrated circuits
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 018096466 filed 07/18/2019]. 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 018096466 registered 11/19/2019 with a renewal date of __________ and an expiration date of 07/18/2029 ], 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:
FRU0-19821116034-145903191_._Registration_Certificate_-_1NW_-_EUTM_-_84078239_1.pdf
Converted PDF file(s) ( 7 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5
Foreign Registration-6
Foreign Registration-7

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 class of goods/services in the application:
Current: Class 040 for Foundry services, namely, custom manufacturing and assembly of semiconductor devices; custom assembling of circuit boards and semiconductors; custom manufacturing and assembling services relating to semi-conductor parts and integrated circuits; processing of parts for semiconductor manufacturing; processing of semiconductors
Original Filing Basis:
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 018096466 filed 07/18/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Foundry services, namely, custom manufacturing and assembly of semiconductor devices; custom assembling of circuit boards and semiconductors; custom manufacturing and assembling services relating to semi-conductor parts and integrated circuits; processing of parts for semiconductor manufacturing; materials processing of component semiconductor parts for semiconductor manufacturing; processing of semiconductorsClass 040 for Foundry services, namely, custom manufacturing and assembly of semiconductor devices; custom assembling of circuit boards and semiconductors; custom manufacturing and assembling services relating to semi-conductor parts and integrated circuits; materials processing of component semiconductor parts for semiconductor manufacturing; processing of semiconductors
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 018096466 filed 07/18/2019]. 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 018096466 registered 11/19/2019 with a renewal date of __________ and an expiration date of 07/18/2029 ], 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:
FRU1-19821116034-145903191_._Registration_Certificate_-_1NW_-_EUTM_-_84078239_1.pdf
Converted PDF file(s) ( 7 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5
Foreign Registration-6
Foreign Registration-7

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 class of goods/services in the application:
Current: Class 042 for Product research, custom design and testing for new product development regarding semiconductors; technology consultation services regarding semiconductors; design of semiconductors or integrated circuits; technical research in the field of semiconductor design; research services relating to semiconductors; design of semiconductor chips; research in the area of semiconductor processing technology; design of semiconductor manufacturing machines; design of semiconductors; Software as a Service (SaaS) featuring software for processing for the semiconductor industry; Software as a Service (SaaS) featuring software for integrated circuit designs
Original Filing Basis:
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 018096466 filed 07/18/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed: Class 042 for Product research, custom design and testing for new product development regarding semiconductors; technology consultation services regarding semiconductors; design of semiconductors or integrated circuits; technical research in the field of semiconductor design; research services relating to semiconductors; design of semiconductor chips; research in the area of semiconductor processing technology; design of semiconductor manufacturing machines; design of semiconductors; Software as a Service (SaaS) featuring software for processing for the semiconductor industry; Software as a Service (SaaS) featuring software for integrated circuit designs
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 018096466 filed 07/18/2019]. 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 018096466 registered 11/19/2019 with a renewal date of __________ and an expiration date of 07/18/2029 ], 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:
FRU2-19821116034-145903191_._Registration_Certificate_-_1NW_-_EUTM_-_84078239_1.pdf
Converted PDF file(s) ( 7 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5
Foreign Registration-6
Foreign Registration-7

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.

The applicant's current attorney information: Kevin A. Thompson. Kevin A. Thompson of LADAS & PARRY LLP, is located at

      SUITE 1600
      224 SOUTH MICHIGAN AVENUE
      CHICAGO, Illinois 60604
      US
The docket/reference number is 3T19717842.

The phone number is 312-427-1300.

The fax number is 3124276663.

The email address is chiustm@ladas.net

The applicants proposed attorney information: Kevin A. Thompson. Other appointed attorneys are Boris Umansky, Burton S. Ehrlich, David C. Brezina, John P. Luther, James B. Conte and Richard J. Streit. Kevin A. Thompson of LADAS & PARRY LLP, 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 1600
      224 SOUTH MICHIGAN AVENUE
      CHICAGO, Illinois 60604
      United States
The docket/reference number is 3T19717842.

The phone number is 312-427-1300.

The fax number is 3124276663.

The email address is chiustm@ladas.net

Kevin A. Thompson submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: KEVIN A. THOMPSON. KEVIN A. THOMPSON of LADAS & PARRY LLP, is located at

      SUITE 1600
      224 SOUTH MICHIGAN AVENUE
      CHICAGO, Illinois 60604
      US
The docket/reference number is 3T19717842.

The phone number is 312-427-1300.

The fax number is 3124276663.

The email address is chiustm@ladas.net

The applicants proposed correspondence information: Kevin A. Thompson. Kevin A. Thompson of LADAS & PARRY LLP, is located at

      SUITE 1600
      224 SOUTH MICHIGAN AVENUE
      CHICAGO, Illinois 60604
      United States
The docket/reference number is 3T19717842.

The phone number is 312-427-1300.

The fax number is 3124276663.

The email address is chiustm@ladas.net

ADDITIONAL STATEMENTS
Supplemental Register
The applicant seeks registration of the mark on the Supplemental Register (i.e., a change of the words 'Principal Register' to 'Supplemental Register').


Miscellaneous Statement
Applicant has had a bona fide and effective commercial establishment in the European Union as of the filing date of the foreign application and its subsequent registration.


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: /kevinathompson/      Date: 02/12/2020
Signatory's Name: Kevin A. Thompson
Signatory's Position: Attorney of record, Illinois Bar member
Signatory's Phone Number: 312 427 1300


Response Signature
Signature: /kevinathompson/     Date: 02/12/2020
Signatory's Name: Kevin A. Thompson
Signatory's Position: Attorney of record, Illinois Bar member

Signatory's Phone Number: 312 427 1300

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:    KEVIN A. THOMPSON
   LADAS & PARRY LLP
   SUITE 1600
   224 SOUTH MICHIGAN AVENUE
   CHICAGO, Illinois 60604
Mailing Address:    Kevin A. Thompson
   LADAS & PARRY LLP
   SUITE 1600
   224 SOUTH MICHIGAN AVENUE
   CHICAGO, Illinois 60604
        
Serial Number: 88530326
Internet Transmission Date: Wed Feb 12 15:17:42 EST 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-202002121517427
26016-88530326-700485980c736cdcd639d3072
fa31e918aa7c09b27597695e929f0526b4281d39
a-N/A-N/A-20200212145903191739