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
`
`Input Field
`
`SERIAL NUMBER
`
`LAW OFFICE ASSIGNED
`
`MARK SECTION
`
`MARK
`
`LITERAL ELEMENT
`
`STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`MARK STATEMENT
`
`The table below presents the data as entered.
`
`Entered
`
`87930125
`
`LAW OFFICE 114
`
`https://tmng-al.uspto.gov/resting2/api/img/87930125/large
`
`LAPRISS EYE
`
`YES
`
`YES
`
`The mark consists of standard characters, without claim to any particular font style,
`size or color.
`
`GOODS AND/OR SERVICES SECTION (007)(current)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`007
`
`Laser welding machines; metalworking machines using laser; industrial robots for metalworking using laser; laser welding machines for
`metalworking; laser cutting machines for metalworking
`
`FILING BASIS
`
`FILING BASIS
`
`        FOREIGN APPLICATION NUMBER
`
`       FOREIGN APPLICATION COUNTRY
`
`        FOREIGN FILING DATE
`
`Section 1(b)
`
`Section 44(d)
`
`2018-048042
`
`Japan
`
`04/16/2018
`
`GOODS AND/OR SERVICES SECTION (007)(proposed)
`
`INTERNATIONAL CLASS
`
`TRACKED TEXT DESCRIPTION
`
`007
`
`Laser welding machines; metalworking machines using laser; metalworking machines using laser for welding, drilling, penetrating and cutting
`of metal; industrial robots for metalworking using laser; industrial robots for metalworking using laser, arc and plasma; laser welding machines
`for metalworking; laser cutting machines for metalworking
`
`FINAL DESCRIPTION
`
`Laser welding machines; metalworking machines using laser for welding, drilling, penetrating and cutting of metal; industrial robots for
`metalworking using laser, arc and plasma; laser welding machines for metalworking; laser cutting machines for metalworking
`
`FILING BASIS
`
`FILING BASIS
`
`       FOREIGN APPLICATION NUMBER
`
`       FOREIGN APPLICATION COUNTRY
`
`       FOREIGN FILING DATE
`
`Section 1(b)
`
`Section 44(d)
`
`2018-048042
`
`Japan
`
`04/16/2018
`
`

`

`       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.
`
`GOODS AND/OR SERVICES SECTION (009)(current)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`009
`
`Measuring and testing machines and instruments in the field of welding equipment or fusing equipment; 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
`
`FILING BASIS
`
`FILING BASIS
`
`        FOREIGN APPLICATION NUMBER
`
`       FOREIGN APPLICATION COUNTRY
`
`        FOREIGN FILING DATE
`
`Section 1(b)
`
`Section 44(d)
`
`2018-048042
`
`Japan
`
`04/16/2018
`
`GOODS AND/OR SERVICES SECTION (009)(proposed)
`
`INTERNATIONAL CLASS
`
`TRACKED TEXT DESCRIPTION
`
`009
`
`Measuring and testing machines and instruments in the field of welding equipment or fusing equipment; Measuring and testing machines and
`instruments in the field of welding equipment or fusing equipment, namely, coordinate measuring machines, depth measuring machines,
`keyhole depth measuring machines, penetration depth measuring machines, drilling depth measuring machines, thermal cutting depth
`measuring machines, fusion depth measuring machines and shape measuring machines; Computer software for depth measuring in the field of
`welding equipment or fusing equipment; Computer software for depth measuring in the field of welding equipment and fusing equipment;
`Computer software for measuring depth of hole in the field of welding equipment or fusing equipment; Computer software for measuring
`depth of hole in the field of welding equipment and fusing equipment; Computer software for measuring penetration in the field of welding
`equipment or fusing equipment; Computer software for measuring depth of penetration in the field of welding equipment and fusing
`equipment; Computer software for measuring penetration of metal in the field of welding equipment or fusing equipment; Computer software
`for measuring depth of penetration of metal in the field of welding equipment and fusing equipment
`
`FINAL DESCRIPTION
`
`Measuring and testing machines and instruments in the field of welding equipment or fusing equipment, namely, coordinate measuring
`machines, depth measuring machines, keyhole depth measuring machines, penetration depth measuring machines, drilling depth measuring
`machines, thermal cutting depth measuring machines, fusion depth measuring machines and shape measuring machines; Computer software
`for depth measuring in the field of welding equipment and fusing equipment; Computer software for measuring depth of hole in the field of
`welding equipment and fusing equipment; Computer software for measuring depth of penetration in the field of welding equipment and fusing
`equipment; Computer software for measuring depth of penetration of metal in the field of welding equipment and fusing equipment
`
`FILING BASIS
`
`FILING BASIS
`
`       FOREIGN APPLICATION NUMBER
`
`       FOREIGN APPLICATION COUNTRY
`
`       FOREIGN FILING DATE
`
`       INTENT TO
`       PERFECT 44(d)
`
`ADDITIONAL STATEMENTS SECTION
`
`Section 1(b)
`
`Section 44(d)
`
`2018-048042
`
`Japan
`
`04/16/2018
`
`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.
`
`Japanese Application No. 2018-048042 has yet to register. Accordingly, Applicant
`
`

`

`MISCELLANEOUS STATEMENT
`
`SIGNATURE SECTION
`
`RESPONSE SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`SIGNATORY'S PHONE NUMBER
`
`DATE SIGNED
`
`AUTHORIZED SIGNATORY
`
`FILING INFORMATION SECTION
`
`SUBMIT DATE
`
`TEAS STAMP
`
`respectfully requests that this application be suspended pending registration of the
`Japanese application.
`
`/Sarah G. Voeller/
`
`Sarah G. Voeller
`
`Attorney of record, MN bar member
`
`612.455.3800
`
`11/30/2018
`
`YES
`
`Fri Nov 30 12:04:05 EST 2018
`
`USPTO/ROA-XX.XXX.XXX.XX-2
`0181130120405770391-87930
`125-610f2b75daa27e647aaa2
`bc2bfc74fa4c265fe13f2f7eb
`1e46baf9286974c2c349-N/A-
`N/A-20181130100542815323
`
`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. 87930125 LAPRISS EYE(Standard Characters, see https://tmng-al.uspto.gov/resting2/api/img/87930125/large) has been
`amended as follows:
`
`CLASSIFICATION AND LISTING OF GOODS/SERVICES
`Applicant proposes to amend the following class of goods/services in the application:
`Current: Class 007 for Laser welding machines; 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.
`
`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[ Japan application number
`2018-048042 filed 04/16/2018]. 15 U.S.C.Section 1126(d), as amended.
`
`Proposed:
`Tracked Text Description: Laser welding machines; metalworking machines using laser; metalworking machines using laser for welding,
`drilling, penetrating and cutting of metal; industrial robots for metalworking using laser; industrial robots for metalworking using laser, arc and
`plasma; laser welding machines for metalworking; laser cutting machines for metalworking
`
`Class 007 for Laser welding machines; metalworking machines using laser for welding, drilling, penetrating and cutting of metal; industrial
`robots for metalworking using laser, arc and plasma; 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.
`
`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 [ Japan application number
`2018-048042 filed 04/16/2018]. 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.
`
`Applicant proposes to amend the following class of goods/services in the application:
`Current: Class 009 for Measuring and testing machines and instruments in the field of welding equipment or fusing equipment; 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
`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.
`
`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[ Japan application number
`2018-048042 filed 04/16/2018]. 15 U.S.C.Section 1126(d), as amended.
`
`Proposed:
`Tracked Text Description: Measuring and testing machines and instruments in the field of welding equipment or fusing equipment; Measuring
`and testing machines and instruments in the field of welding equipment or fusing equipment, namely, coordinate measuring machines, depth
`measuring machines, keyhole depth measuring machines, penetration depth measuring machines, drilling depth measuring machines, thermal
`cutting depth measuring machines, fusion depth measuring machines and shape measuring machines; Computer software for depth measuring in
`the field of welding equipment or fusing equipment; Computer software for depth measuring in the field of welding equipment and fusing
`equipment; Computer software for measuring depth of hole in the field of welding equipment or fusing equipment; Computer software for
`measuring depth of hole in the field of welding equipment and fusing equipment; Computer software for measuring penetration in the field of
`welding equipment or fusing equipment; Computer software for measuring depth of penetration in the field of welding equipment and fusing
`equipment; Computer software for measuring penetration of metal in the field of welding equipment or fusing equipment; Computer software for
`measuring depth of penetration of metal in the field of welding equipment and fusing equipment
`
`Class 009 for Measuring and testing machines and instruments in the field of welding equipment or fusing equipment, namely, coordinate
`measuring machines, depth measuring machines, keyhole depth measuring machines, penetration depth measuring machines, drilling depth
`measuring machines, thermal cutting depth measuring machines, fusion depth measuring machines and shape measuring machines; Computer
`software for depth measuring in the field of welding equipment and fusing equipment; Computer software for measuring depth of hole in the
`field of welding equipment and fusing equipment; Computer software for measuring depth of penetration in the field of welding equipment and
`fusing equipment; Computer software for measuring depth of penetration of metal in the field of welding equipment and fusing equipment
`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 [ Japan application number
`2018-048042 filed 04/16/2018]. 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.
`
`ADDITIONAL STATEMENTS
`Miscellaneous Statement
`Japanese Application No. 2018-048042 has yet to register. Accordingly, Applicant respectfully requests that this application be suspended
`pending registration of the Japanese application.
`
`SIGNATURE(S)
`Response Signature
`Signature: /Sarah G. Voeller/     Date: 11/30/2018
`Signatory's Name: Sarah G. Voeller
`Signatory's Position: Attorney of record, MN bar member
`
`Signatory's Phone Number: 612.455.3800
`
`The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which
`
`

`

`includes the District of Columbia, Puerto Rico, and other federal territories and possessions; 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. attorney or a Canadian attorney/agent
`not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is
`concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior
`representative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder's
`appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.
`
`Serial Number: 87930125
`Internet Transmission Date: Fri Nov 30 12:04:05 EST 2018
`TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2018113012040577
`0391-87930125-610f2b75daa27e647aaa2bc2bf
`c74fa4c265fe13f2f7eb1e46baf9286974c2c349
`-N/A-N/A-20181130100542815323
`
`        
` 
`