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
`
`87784110
`
`LAW OFFICE ASSIGNED
`
`LAW OFFICE 102
`
`MARK SECTION
`
`MARK
`
`WELDING CONCIERGE
`
`STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`YES
`
`YES
`
`MARK STATEMENT
`
`The mark consists of standard characters, without claim to any particular font style, size or color.
`
`ARGUMENT(S)
`
`While no registered marks were located that would prevent registration of this mark, the Trademark Office has advised of the following
`earlier-filed applications:
`
`Serial Nos. 86906606 for CONCIERGE for use with “Providing online business management services; Providing online data
`•             
`management services employing optical character recognition (OCR) software for managing businesses and increasing business productivity;
`Providing business information and consulting in the field of data management relating to business management and business productivity;
`Business management consultation services; providing business management services to improve business operations, namely, managing
`expense reporting, logistics, supply chain services, supply chain visibility and synchronization, supply and demand forecasting and product
`distribution processes for others by use of online software employing optical character recognition (OCR); Business management and
`consultation in the field of business intelligence; business consultation in the field of expense management employing optical character
`recognition (OCR); Providing business management consulting services to customers to improve operations by analyzing the customer's
`expense reporting, logistics, supply chain services, supply chain visibility and synchronization, supply and demand forecasting and product
`distribution processes” in Class 35.   We note that a Notice of Allowance was issued in this case.
`
`Serial No. 87131367 for CONCIERGE for use with “Advertising services; business management and business administration;
`•             
`employment agency services; conducting skills evaluation for individuals in the nature of testing to determine employment skills; consultancy
`services in the field of business administration, business management, advertising and marketing; providing office functions” in Class 35.   We
`note that this application has been suspended pending the disposition of Application Serial No. 86906606.
`
`Serial No. 87728632 for use with “Machine tools; Motors and engines (except for land vehicles); Machine coupling and
`•             
`transmission components (except for land vehicles); Agricultural implements other than hand-operated; Incubators for eggs; Automatic
`vending machines, agricultural machines; Suction machines for industrial purposes; Woodworking machines; Industrial handling machines,
`packaging or packing machines; Pumps i(machines); Drills (Electric hand -); Clippers (machines), bulldozers; Grinding machines; Juicers
`(machines); Elevators; Sewing and knitting machines; Ironing machines; Washing machines; Kitchen machines, electric; Sorting machines for
`industry; Saws (machines); Robots (machines), printing machines; Drilling machines; Elevators; Electric knives” in Class 7; “Scientific,
`nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching
`apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling
`electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs, optical discs;
`Compact discs, DVDs and other digital recording media; Mechanisms for coin-operated apparatus; Cash registers, calculating machines, data
`processing equipment and computers; Fire-extinguishing apparatus. Computer game programs; Computer software (recorded programs);
`Peripherals adapted for use with computers; Batteries, electric; Detectors; Electric wires; Relays, electric; Dungarees, costumes, gloves or
`diving masks; Clothing for protection against accidents, irradiation and fire; Protection devices for personal use against accidents; Spectacles
`(optics); Opticians' goods; Spectacle cases; Diagnostic apparatus, not for medical purposes; Smart cards; Safety tarpaulins” in Class 9; and
`“Advertising; Business management; Business administration; Office functions; Distribution of advertising; Arranging newspaper
`subscriptions; Arranging subscriptions to telecommunication services; Presentation of goods on communication media, for retail purposes;
`Business management and organization consultancy; Accounting; Document reproduction; Employment agencies; Computerised file
`management; Exhibitions for commercial or advertising purposes; On-line advertising on a computer network; Rental of advertising time on
`communication media; Publication of publicity texts; Rental of advertising space; Dissemination of advertising matter; Public relations
`
`

`

`services” in Class 35.   We note that an Office Action has been issued in this case, but a search of the Trademark Office’s database of
`registered and pending marks for potentially conflicting marks has been deferred.
`
`1.
`
`There is No Likelihood of Confusion with the Cited Prior Filed Applications
`The First Word “Welding” Creates a Different Commercial Impression in the Subject Mark from the Cited Applications
`a.
`
`In determining similarity or dissimilarity, the marks must be compared in their entireties.  The Board has stated that when comparing
`marks, "[t]he proper test is not a side-by-side comparison of the marks, but instead 'whether the marks are sufficiently similar in terms of their
`commercial impression' such that persons who encounter the marks would be likely to assume a connection between the parties."  Coach
`Servs., Inc. v. Triumph Learning LLC, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); see also  Midwestern Pet Foods, Inc. v. Societe des Produits
`Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012);  San Fernando Elec. Mfg. Co. v. JFD Elec. Components Corp., 565
`F.2d 683, 196 USPQ 1, 3 (CCPA 1977);  Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff'd mem., 972 F.2d
`1353 (Fed. Cir. 1992).
`
`In comparing the parties’ marks, the marks in their entireties, not merely their respective word components must be compared.   See,
`e.g., Estate of Beckwith v. Comm’r of Patents , 252 U.S. 538, 545-56, 40 S. Ct. 414 (1920) (“The commercial impression of a trademark is
`derived from it as a whole, not from its elements separated and considered in detail.  For this reason, it should be considered in its entirety . .
`..”); Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 1007, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should
`not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion.”).  
`
`While the cited marks each contain the word CONCIERGE, the inclusion of the first word WELDING to CONCIERGE in the subject
`application results in marks with different sounds, appearances and commercial impressions.  Simply because the marks at issue may share a
`word is insufficient to support a finding of likelihood of confusion
`
`The Fed. Circuit and the TTAB recognize that the first word of a mark frequently bears a greater significance than subsequent words.
`See Citigroup, Inc. v. Capital City Bank Group, Inc., 94 USPQ2d 1645 (2010), 2010 WL 595586, at *21 (TTAB 2010) (Finding that the term
`“Capital City” is the dominant element in creating the commercial impression engendered by applicant’s marks is supported by its location as
`the beginning of applicant’s marks); see also Presto Products, Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is
`often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered”); Palm Bay Imports, Inc. v.
`Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“Veuve” is the most prominent part of the mark VEUVE
`CLICQUOT because “veuve” is the first word in the mark and the first word to appear on the label); Century 21 Real Estate Corp. v. Century
`Life of America, 23 USPQ2d at 1700 (Fed. Cir. 1992) (upon encountering the marks, consumers must first notice the identical lead word). 
`Accordingly, “WELDING” is the first word that consumers see when encountering the mark WELDING CONCIERGE and it forms a more
`prominent commercial impression.
`
`According the Merriam Webster Dictionary, “Concierge” means “a usually multilingual hotel staff member who handles luggage and
`mail, makes reservations, and arranges tours. (See Exhibit A).   Thus Welding Concierge, is a distinct mark when applied to the subject goods
`and services.  A concierge has nothing to do with “welding” and “welding” has nothing to do with a “concierge”.
`  Thus the mark creates a
`separate and distinct commercial impression from the cited applications for the word Concierge on its own.
`
`Applicant believes that the foregoing sufficiently addresses the concerns raised in the Office Action surrounding potential likelihood
`of confusion with the cited pending applications.  Applicant submits that its Application is now in condition to proceed to publication.
`
`EVIDENCE SECTION
`
`        EVIDENCE FILE NAME(S)
`
`       ORIGINAL PDF FILE
`
`evi_6413216945-20181002150548141303_._Concierge_Definition_of_Concierge_by_Merriam_Webster.pdf
`
`       CONVERTED PDF FILE(S)
`       (11 pages)
`
`\\TICRS\EXPORT17\IMAGEOUT17\877\841\87784110\xml4\ROA0002.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\877\841\87784110\xml4\ROA0003.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\877\841\87784110\xml4\ROA0004.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\877\841\87784110\xml4\ROA0005.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\877\841\87784110\xml4\ROA0006.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\877\841\87784110\xml4\ROA0007.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\877\841\87784110\xml4\ROA0008.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\877\841\87784110\xml4\ROA0009.JPG
`
`       
`       
`       
`       
`       
`       
`       
`

`

`\\TICRS\EXPORT17\IMAGEOUT17\877\841\87784110\xml4\ROA0010.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\877\841\87784110\xml4\ROA0011.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\877\841\87784110\xml4\ROA0012.JPG
`
`DESCRIPTION OF EVIDENCE
`FILE
`
`Exhibit A - dictionary definition
`
`GOODS AND/OR SERVICES SECTION (007)(current)
`
`INTERNATIONAL CLASS
`
`007
`
`DESCRIPTION
`
`Metalworking machines and tools; metalworking machines using laser; industrial robots for metalworking using laser; laser welding machines
`for metalworking; laser cutting machines for metalworking
`
`FILING BASIS
`
`Section 1(b)
`
`GOODS AND/OR SERVICES SECTION (007)(proposed)
`
`INTERNATIONAL CLASS
`
`007
`
`TRACKED TEXT DESCRIPTION
`
`Metalworking machines and tools; metalworking machines using laser; industrial robots for metalworking using laser; laser welding machines
`for metalworking; laser cutting machines for metalworking
`
`FINAL DESCRIPTION
`
`metalworking machines using laser; industrial robots for metalworking using laser; laser welding machines for metalworking; laser cutting
`machines for metalworking
`
`FILING BASIS
`
`Section 1(b)
`
`GOODS AND/OR SERVICES SECTION (009)(current)
`
`INTERNATIONAL CLASS
`
`009
`
`DESCRIPTION
`
`Electronic machines, apparatus and their parts; distance measuring apparatus; measuring or testing machines and instruments
`
`FILING BASIS
`
`Section 1(b)
`
`GOODS AND/OR SERVICES SECTION (009)(proposed)
`
`INTERNATIONAL CLASS
`
`009
`
`TRACKED TEXT DESCRIPTION
`
`Electronic machines, apparatus and their parts; Electronic machines, apparatus and their parts, namely, computer hardware, computer software
`use in control metalworking machines, computer software for setting welding conditions, computer software for depth measuring in the field
`of welding equipment or fusing equipment, computer software for measuring depth of hole in the field of welding equipment or fusing
`equipment, computer software for measuring penetration in the field of welding equipment or fusing equipment, computer software for
`measuring penetration of metal in the field of welding equipment or fusing equipment; distance measuring apparatus; measuring or testing
`machines and instruments; measuring and testing machines and instruments, namely, coordinate measuring machines, metal strength testing
`machines, level measuring machines
`
`FINAL DESCRIPTION
`
`Electronic machines, apparatus and their parts, namely, computer hardware, computer software use in control metalworking machines,
`computer software for setting welding conditions, computer software for depth measuring in the field of welding equipment or fusing
`equipment, computer software for measuring depth of hole in the field of welding equipment or fusing equipment, computer software for
`measuring penetration in the field of welding equipment or fusing equipment, computer software for measuring penetration of metal in the
`field of welding equipment or fusing equipment; distance measuring apparatus; measuring and testing machines and instruments, namely,
`coordinate measuring machines, metal strength testing machines, level measuring machines
`
`FILING BASIS
`
`Section 1(b)
`
`GOODS AND/OR SERVICES SECTION (035)(current)
`
`       
`       
`       
`

`

`INTERNATIONAL CLASS
`
`035
`
`DESCRIPTION
`
`Advertising and publicity services; business management analysis or business consultancy; marketing research or analysis; providing
`information concerning commercial sales; publicity material rental; providing information on newspaper articles; retail services or wholesale
`services for metalworking machines and tools; retail services or wholesale services for distance measuring apparatus; retail services or
`wholesale services for electronic machines; retail services or wholesale services for electrical machinery and apparatus
`
`FILING BASIS
`
`Section 1(b)
`
`GOODS AND/OR SERVICES SECTION (035)(proposed)
`
`INTERNATIONAL CLASS
`
`035
`
`TRACKED TEXT DESCRIPTION
`
`Advertising and publicity services; business management analysis or business consultancy; business management analysis and business
`consultancy; marketing research or analysis; marketing research and analysis; providing information concerning commercial sales; publicity
`material rental; providing information on newspaper articles; providing information on newspaper articles, namely, information about
`newspaper subscriptions; retail services or wholesale services for metalworking machines and tools; retail store services and wholesale store
`services featuring metalworking machines and tools; retail services or wholesale services for distance measuring apparatus; retail store
`services and wholesale services featuring distance measuring apparatus; retail services or wholesale services for electronic machines; retail
`store services and wholesale store services featuring electronic machines; retail services or wholesale services for electrical machinery and
`apparatus; retail store services and wholesale store services featuring electrical machinery and apparatus
`
`FINAL DESCRIPTION
`
`Advertising and publicity services; business management analysis and business consultancy; marketing research and analysis; providing
`information concerning commercial sales; publicity material rental; providing information on newspaper articles, namely, information about
`newspaper subscriptions; retail store services and wholesale store services featuring metalworking machines and tools; retail store services and
`wholesale services featuring distance measuring apparatus; retail store services and wholesale store services featuring electronic machines;
`retail store services and wholesale store services featuring electrical machinery and apparatus
`
`FILING BASIS
`
`Section 1(b)
`
`ADDITIONAL STATEMENTS SECTION
`
`DISCLAIMER
`
`No claim is made to the exclusive right to use welding apart from the mark as shown.
`
`SIGNATURE SECTION
`
`RESPONSE SIGNATURE
`
`/Sarah G. Voeller/
`
`SIGNATORY'S NAME
`
`Sarah G. Voeller
`
`SIGNATORY'S POSITION
`
`Attorney of record, MN bar member
`
`DATE SIGNED
`
`10/02/2018
`
`AUTHORIZED SIGNATORY
`
`YES
`
`FILING INFORMATION SECTION
`
`SUBMIT DATE
`
`Tue Oct 02 15:18:53 EDT 2018
`
`TEAS STAMP
`
`USPTO/ROA-XX.XXX.XXX.XX-2
`0181002151853669849-87784
`110-610d8e708f1ef50833b54
`4e616c94ead192f8ed574c3e2
`2b61a4698fe728225fa-N/A-N
`/A-20181002150548141303
`
`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)
`
`

`

`To the Commissioner for Trademarks:
`
`Response to Office Action
`
`Application serial no. 87784110 WELDING CONCIERGE(Standard Characters, see ) has been amended as follows:
`
`ARGUMENT(S)
`In response to the substantive refusal(s), please note the following:
`
`While no registered marks were located that would prevent registration of this mark, the Trademark Office has advised of the following
`earlier-filed applications:
`
`Serial Nos. 86906606 for CONCIERGE for use with “Providing online business management services; Providing online data
`•             
`management services employing optical character recognition (OCR) software for managing businesses and increasing business productivity;
`Providing business information and consulting in the field of data management relating to business management and business productivity;
`Business management consultation services; providing business management services to improve business operations, namely, managing
`expense reporting, logistics, supply chain services, supply chain visibility and synchronization, supply and demand forecasting and product
`distribution processes for others by use of online software employing optical character recognition (OCR); Business management and
`consultation in the field of business intelligence; business consultation in the field of expense management employing optical character
`recognition (OCR); Providing business management consulting services to customers to improve operations by analyzing the customer's expense
`reporting, logistics, supply chain services, supply chain visibility and synchronization, supply and demand forecasting and product distribution
`processes” in Class 35.   We note that a Notice of Allowance was issued in this case.
`
`Serial No. 87131367 for CONCIERGE for use with “Advertising services; business management and business administration;
`•             
`employment agency services; conducting skills evaluation for individuals in the nature of testing to determine employment skills; consultancy
`services in the field of business administration, business management, advertising and marketing; providing office functions” in Class 35.   We
`note that this application has been suspended pending the disposition of Application Serial No. 86906606.
`
`Serial No. 87728632 for use with “Machine tools; Motors and engines (except for land vehicles); Machine coupling and transmission
`•             
`components (except for land vehicles); Agricultural implements other than hand-operated; Incubators for eggs; Automatic vending machines,
`agricultural machines; Suction machines for industrial purposes; Woodworking machines; Industrial handling machines, packaging or packing
`machines; Pumps i(machines); Drills (Electric hand -); Clippers (machines), bulldozers; Grinding machines; Juicers (machines); Elevators;
`Sewing and knitting machines; Ironing machines; Washing machines; Kitchen machines, electric; Sorting machines for industry; Saws
`(machines); Robots (machines), printing machines; Drilling machines; Elevators; Electric knives” in Class 7; “Scientific, nautical, surveying,
`photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and
`instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus
`for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs, optical discs; Compact discs, DVDs and
`other digital recording media; Mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment and
`computers; Fire-extinguishing apparatus. Computer game programs; Computer software (recorded programs); Peripherals adapted for use with
`computers; Batteries, electric; Detectors; Electric wires; Relays, electric; Dungarees, costumes, gloves or diving masks; Clothing for protection
`against accidents, irradiation and fire; Protection devices for personal use against accidents; Spectacles (optics); Opticians' goods; Spectacle
`cases; Diagnostic apparatus, not for medical purposes; Smart cards; Safety tarpaulins” in Class 9; and “Advertising; Business management;
`Business administration; Office functions; Distribution of advertising; Arranging newspaper subscriptions; Arranging subscriptions to
`telecommunication services; Presentation of goods on communication media, for retail purposes; Business management and organization
`consultancy; Accounting; Document reproduction; Employment agencies; Computerised file management; Exhibitions for commercial or
`advertising purposes; On-line advertising on a computer network; Rental of advertising time on communication media; Publication of publicity
`texts; Rental of advertising space; Dissemination of advertising matter; Public relations services” in Class 35.   We note that an Office Action has
`been issued in this case, but a search of the Trademark Office’s database of registered and pending marks for potentially conflicting marks has
`been deferred.
`
`1.
`
`There is No Likelihood of Confusion with the Cited Prior Filed Applications
`The First Word “Welding” Creates a Different Commercial Impression in the Subject Mark from the Cited Applications
`a.
`
`In determining similarity or dissimilarity, the marks must be compared in their entireties.  The Board has stated that when comparing
`marks, "[t]he proper test is not a side-by-side comparison of the marks, but instead 'whether the marks are sufficiently similar in terms of their
`commercial impression' such that persons who encounter the marks would be likely to assume a connection between the parties."  Coach Servs.,
`Inc. v. Triumph Learning LLC, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); see also  Midwestern Pet Foods, Inc. v. Societe des Produits Nestle
`S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012);  San Fernando Elec. Mfg. Co. v. JFD Elec. Components Corp., 565 F.2d 683,
`196 USPQ 1, 3 (CCPA 1977);  Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff'd mem., 972 F.2d 1353 (Fed. Cir.
`1992).
`
`In comparing the parties’ marks, the marks in their entireties, not merely their respective word components must be compared.   See, e.g.,
`
`

`

`Estate of Beckwith v. Comm’r of Patents , 252 U.S. 538, 545-56, 40 S. Ct. 414 (1920) (“The commercial impression of a trademark is derived
`from it as a whole, not from its elements separated and considered in detail.  For this reason, it should be considered in its entirety . . ..”);
`Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 1007, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be
`dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion.”).  
`
`While the cited marks each contain the word CONCIERGE, the inclusion of the first word WELDING to CONCIERGE in the subject
`application results in marks with different sounds, appearances and commercial impressions.  Simply because the marks at issue may share a
`word is insufficient to support a finding of likelihood of confusion
`
`The Fed. Circuit and the TTAB recognize that the first word of a mark frequently bears a greater significance than subsequent words. See
`Citigroup, Inc. v. Capital City Bank Group, Inc., 94 USPQ2d 1645 (2010), 2010 WL 595586, at *21 (TTAB 2010) (Finding that the term
`“Capital City” is the dominant element in creating the commercial impression engendered by applicant’s marks is supported by its
`location as the beginning of applicant’s marks); see also Presto Products, Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB
`1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered”); Palm Bay
`Imports, Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“Veuve” is the most prominent part of the
`mark VEUVE CLICQUOT because “veuve” is the first word in the mark and the first word to appear on the label); Century 21 Real Estate
`Corp. v. Century Life of America, 23 USPQ2d at 1700 (Fed. Cir. 1992) (upon encountering the marks, consumers must first notice the identical
`lead word).  Accordingly, “WELDING” is the first word that consumers see when encountering the mark WELDING CONCIERGE and it
`forms a more prominent commercial impression.
`
`According the Merriam Webster Dictionary, “Concierge” means “a usually multilingual hotel staff member who handles luggage
`and mail, makes reservations, and arranges tours. (See Exhibit A).   Thus Welding Concierge, is a distinct mark when applied to the subject
`goods and services.  A concierge has nothing to do with “welding” and “welding” has nothing to do with a “concierge”.
`  Thus the mark creates
`a separate and distinct commercial impression from the cited applications for the word Concierge on its own.
`
`Applicant believes that the foregoing sufficiently addresses the concerns raised in the Office Action surrounding potential likelihood of
`confusion with the cited pending applications.  Applicant submits that its Application is now in condition to proceed to publication.
`
`EVIDENCE
`Evidence in the nature of Exhibit A - dictionary definition has been attached.
`Original PDF file:
`evi_6413216945-20181002150548141303_._Concierge_Definition_of_Concierge_by_Merriam_Webster.pdf
`Converted PDF file(s) ( 11 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`Evidence-5
`Evidence-6
`Evidence-7
`Evidence-8
`Evidence-9
`Evidence-10
`Evidence-11
`
`CLASSIFICATION AND LISTING OF GOODS/SERVICES
`Applicant proposes to amend the following class of goods/services in the application:
`Current: Class 007 for Metalworking machines and tools; metalworking machines using laser; industrial robots for metalworking using laser;
`laser welding machines for metalworking; laser cutting machines for metalworking
`Original Filing Basis:
`Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a
`bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a
`collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a
`bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with
`the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the
`applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in
`connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the
`mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification
`standards of the applicant.
`
`

`

`Proposed:
`Tracked Text Description: Metalworking machines and tools; metalworking machines using laser; industrial robots for metalworking using
`laser; laser welding machines for metalworking; laser cutting machines for metalworking
`
`Class 007 for metalworking machines using laser; industrial robots for metalworking using laser; laser welding machines for metalworking; laser
`cutting machines for metalworking
`Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a
`bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a
`collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a
`bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with
`the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the
`applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in
`connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the
`mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification
`standards of the applicant.
`
`Applicant proposes to amend the following class of goods/services in the application:
`Current: Class 009 for Electronic machines, apparatus and their parts; distance measuring apparatus; measuring or testing machines and
`instruments
`Original Filing Basis:
`Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a
`bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a
`collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a
`bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with
`the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the
`applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in
`connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the
`mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification
`standards of the applicant.
`
`Proposed:
`Tracked Text Description: Electronic machines, apparatus and their parts; Electronic machines, apparatus and their parts, namely, computer
`hardware, computer software use in control metalworking machines, computer software for setting welding conditions, computer software for
`depth measuring in the field of welding equipment or fusing equipment, computer software for measuring depth of hole in the field of welding
`equipment or fusing equipment, computer software for measuring penetration in the field of welding equipment or fusing equipment, computer
`software for measuring penetration of metal in the field of welding equipment or fusing equipment; distance measuring apparatus; measuring or
`testing machines and instruments; measuring and testing machines and instruments, namely, coordinate measuring machines, metal strength
`testing machines, level measuring machines
`
`Class 009 for Electronic machines, apparatus and their parts, namely, computer hardware, computer software use in control metalworking
`machines, computer software for setting welding conditions, computer software for depth measuring in the field of welding equipment or fusing
`equipment, computer software for measuring depth of hole in the field of welding equipment or fusing equipment, computer software for
`measuring penetration in the field of welding equipment or fusing equipment, computer software for measuring penetration of metal in the field
`of welding equipment or fusing equipment; distance measuring apparatus; measuring and testing machines and instruments, namely, coordinate
`measuring machines, metal strength testing machines, level measuring machines
`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/