Response to Office Action

PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

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PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 90139017 SUPRA (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/9013901 7/large) has been amended as follows:

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

This is filed in response to Office Action issued on January 5, 2021.

The Examining Attorney has refused registration of the mark in the present application because of a likelihood of confusion with the mark in U.S. Registration No. 2189199. The mark in U.S. Registration No. 2189199 is for the mark “SUPRA”, and specifies in its identification of goods, “metal cutting machinery, namely, surface grinders.” In contrast, the present application, as amended, specifies the good of “strip machine apparatus for semiconductor wafer”. A “strip machine apparatus for semiconductor wafer” is a machine for semiconductor wafer that serves to remove photoresist (PR) residue left after an exposure process is performed. The machine is highly specialized, and with machines of the subject application and the machine of U.S. Registration No. 2189199 performing vastly different functions, the chances of consumers confusing the two marks is highly unlikely. In addition, given the expense of the products, purchasers would certainly be able to distinguish the source of these goods. Finally, as the consumers are highly sophisticated and would exercise enormous care in purchasing machines for semiconductors, any likelihood of confusion is minimal. See, e.g., In re N.A.D., Inc., 754 F.2d 996 (Fed. Cir. 1985) (finding no likelihood of confusion between the marks NARCO and NARKOMED because only sophisticated purchasers exercising great care would purchase the relevant goods).

For the foregoing reasons, Applicant believes there is no likelihood of confusion between the mark of the U.S. Registration No. 2189199 and the mark of the present application. Therefore, Applicant respectfully requests the Examining Attorney to reconsider her Section 2(d) refusal and withdraw it.

With regard to Applicant’s intent to perfect the Section 44(e) requirement, the foreign foreign application is still pending, and a foreign registration is not yet available. As such, Applicant respectfully request that the U.S. application be suspended until a copy of the foreign registration is available.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 007 for semiconductor processing machines; semiconductor wafer processing equipment; machines for manufacturing semiconductors; apparatus for manufacturing semiconductors; marking apparatus for manufacturing semiconductors; sputtering apparatus for semiconductor processing machines; laser marking machines for semiconductor lead frame; semiconductor washing equipment; semi-conductor substrates manufacturing machines; vacuum chambers for processing semiconductor substances; chamber for testing semiconductor elements; etching apparatus for substrates; manufacturing apparatus substrates; processing apparatus for substrates; etching apparatus for semiconductor wafer; strip apparatus for semiconductor wafer; ashing apparatus for semiconductor wafer; processing apparatus for semiconductor wafer; processing apparatus for 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 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[ Korea, South application number 40-2020-0140884 filed 08/11/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: semiconductor processing machines; Strip machine apparatus for semiconductor wafer; semiconductor wafer processing equipment; machines for manufacturing semiconductors; apparatus for manufacturing semiconductors; marking apparatus for manufacturing semiconductors; sputtering apparatus for semiconductor processing machines; laser marking machines for semiconductor lead frame; semiconductor washing equipment; semi-conductor substrates manufacturing machines; vacuum chambers for processing semiconductor substances; chamber for testing semiconductor elements; etching apparatus for substrates; manufacturing apparatus substrates; processing apparatus for substrates; etching apparatus for semiconductor wafer; strip apparatus for semiconductor wafer; ashing apparatus for semiconductor wafer; processing apparatus for semiconductor wafer; processing apparatus for semiconductorsClass 007 for Strip machine apparatus for semiconductor wafer
Webpage URL: None Provided
Webpage Date of Access: None Provided


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 [ Korea, South application number 40-2020-0140884 filed 08/11/2020]. 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.

The owner's/holder's current attorney information: Kumiko Ide. Kumiko Ide of WESTERMAN, HATTORI, DANIELS & ADRIAN LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      1250 CONNECTICUT AVE., NW SUITE 850
      WASHINGTON, District of Columbia 20036
      United States
The docket/reference number is TM200104US00.
      The phone number is 202-822-1100.
      The fax number is 202-822-1111.
      The email address is TrademarkMail@WHDA.com

The owner's/holder's proposed attorney information: Kumiko Ide. Other appointed attorneys are George W. Lewis, Simor L. Moskowitz, Miki Motohashi. Kumiko Ide of WESTERMAN, HATTORI, DANIELS & ADRIAN 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

      8500 Leesburg Pike Suite 7500
      Tysons, Virginia 22182
      United States
The docket/reference number is TM200104US00.
      The phone number is 703-827-3800.
      The fax number is 571-395-8753.
      The email address is TrademarkMail@WHDA.com

Kumiko Ide 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):
      KUMIKO IDE
      PRIMARY EMAIL FOR CORRESPONDENCE: TrademarkMail@WHDA.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): KIde@WHDA.com

The docket/reference number is TM200104US00.
Correspondence Information (proposed):
      Kumiko Ide
      PRIMARY EMAIL FOR CORRESPONDENCE: TrademarkMail@WHDA.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): KIde@WHDA.com

The docket/reference number is TM200104US00.

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

SIGNATURE(S)
Response Signature
Signature: /idekumiko/     Date: 06/29/2021
Signatory's Name: Kumiko Ide
Signatory's Position: Attorney of record, D.C. bar member

Signatory's Phone Number: 703-827-3800 Signature method: Signed directly within the form

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:    KUMIKO IDE
   WESTERMAN, HATTORI, DANIELS & ADRIAN LLP
   
   1250 CONNECTICUT AVE., NW SUITE 850
   WASHINGTON, District of Columbia 20036
Mailing Address:    Kumiko Ide
   WESTERMAN, HATTORI, DANIELS & ADRIAN LLP
   8500 Leesburg Pike Suite 7500
   Tysons, Virginia 22182
        
Serial Number: 90139017
Internet Transmission Date: Tue Jun 29 02:18:43 ET 2021
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XXX-2021062902184373
1401-90139017-78012f4ba2b3ecc919906124fb
7bd86f3284f577218a97f2d98455b4b278437b-N
/A-N/A-20210629015847632920