Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1139006
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`Filing date:
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`06/08/2021
`
`Proceeding
`
`Party
`
`Correspondence
`Address
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`91247487
`
`Plaintiff
`Apple Inc.
`
`JOSEPH PETERSEN
`KILPATRICK TOWNSEND & STOCKTON LLP
`1080 MARSH ROAD
`MENLO PARK, CA 94025
`UNITED STATES
`Primary Email: JPetersen@kilpatricktownsend.com
`Secondary Email(s): BBRYNER@kilpatricktownsend.com, PRosen-
`berg@kilpatricktownsend.com, hyang@kilpatricktownsend.com, Agar-
`cia@kilpatricktownsend.com, tmadmin@kilpatricktownsend.com
`650-326-2400
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`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Other Motions/Submissions
`
`Joseph Petersen
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`jpetersen@kilpatricktownsend.com, BBRYNER@kilpatricktownsend.com,
`PRosenberg@kilpatricktownsend.com, hyang@kilpatricktownsend.com, Agar-
`cia@kilpatricktownsend.com, tmadmin@kilpatricktownsend.com
`
`/Joseph Petersen/
`
`06/08/2021
`
`2021-06-08-Motion on Consent to Amend and Contingent Dismissal - Oppl No.
`91247487.pdf(160706 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re Serial No. 79/228,742
`For the Mark: APPLEXION
`Filed: November 28, 2017
`Published: October 9, 2018
`
`APPLE INC.,
`
`Opposer,
`
` v.
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`Opposition No. 91247487
`
`NOVASEP PROCESS,
`
`Applicant.
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`CONSENTED MOTION TO AMEND APPLICATION AND, CONTINGENT
`THEREUPON, TO DISMISS OPPOSITION WITHOUT PREJUDICE
`
`Pursuant to Rule 2.133(a) of the Trademark Rules of Practice, Applicant, with Opposer’s
`
`consent, respectfully requests that the identification of goods and services in Application Serial
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`Number 79/228,742 be amended as follows:
`
`Current Identification with Redline
`
`No Change - Class 1: Chemicals for the industrial treatment of water, liquids from organic
`synthesis, liquids from chemical synthesis, liquids containing sugars and sugar derivatives; Ion
`exchange product sets comprised primarily of ion exchange resins and also including gravel;
`Chromatography chemicals; Enzymes for industrial purposes; Ferments for industrial purposes;
`Mineral and organic filtering materials in the nature of filtering membranes being chemical
`preparations, namely, ultrafiltration, microfiltration, nanofiltration, reverse osmosis, and
`electrodialysis membranes
`
`No Change - Class 7: Industrial electrodialysis machines for use with aqueous and solvent
`solutions or suspensions other than for water treatment, purification, or filtration; Filtering
`machines using membranes for chemical and physical processing, especially for ultrafiltration,
`microfiltration, nanofiltration, and reverse osmosis
`
`Class 9: Laboratory centrifuges; Chromatography apparatus and installations for laboratory use;
`Laboratory apparatus and installations for operating enzymatic and fermentation processes; Ion-
`
`

`

`exchange, electrodialysis, filtration chromatography apparatus and installations for laboratory
`use; Software for controlling, simulating, analyzing, calculating, and optimizing molecular
`processes, molecular production, and molecular purification; Programmable automated
`systems, namely, software and hardware for controlling, simulating, analyzing, calculating,
`and optimizing molecular processes, molecular production, and molecular purification
`control algorithms and calculations for laboratory centrifuges; control algorithms and
`calculations for chromatography apparatus and installations for laboratory use; control
`algorithms and calculations for laboratory apparatus and installations for operating
`enzymatic and fermentation processes; control algorithms and calculations for ion-
`exchange, electrodialysis, filtration chromatography apparatus and installations for
`laboratory use
`
`Class 11: Water treatment apparatus, namely, ion exchangers; Water filtration apparatus in the
`field of industrial treatment of liquids; Apparatus for purifying water in the field of industrial
`treatment of liquids; Chromatography apparatus for industrial use; Water treatment apparatus in
`the nature of installations for the treatment of aqueous solutions or suspensions
`
`Class 42: Engineering in the field of industrial treatment of liquids; Inspection of factories
`and machines for quality control purposes in the field of industrial treatment of liquids;
`Technological audits in the nature of safety auditing, energy auditing, and engineering surveys in
`the field of industrial treatment of liquids; Scientific and technological consultation services in
`the field of chromatography, electrodialysis, filtering membrane, ion exchange, enzyme and
`fermentation processes; Research services in the field of chromatography, electrodialysis,
`filtering membrane, ion exchange, enzyme and fermentation processes; Research and
`consultation services in the field of chemistry; Conducting tests and evaluations of products for
`others in the field of industrial treatment of liquids; Laboratory services, namely,
`chromatographic analysis, electrodialysis, and filtering membrane; Design of engineering
`processes for processing, transforming, purifying, and enriching liquids, molecules, and raw
`materials for others
`
`Final Identification
`
`Class 1: Chemicals for the industrial treatment of water, liquids from organic synthesis, liquids
`from chemical synthesis, liquids containing sugars and sugar derivatives; Ion exchange product
`sets comprised primarily of ion exchange resins and also including gravel; Chromatography
`chemicals; Enzymes for industrial purposes; Ferments for industrial purposes; Mineral and
`organic filtering materials in the nature of filtering membranes being chemical preparations,
`namely, ultrafiltration, microfiltration, nanofiltration, reverse osmosis, and electrodialysis
`membranes
`
`Class 7: Industrial electrodialysis machines for use with aqueous and solvent solutions or
`suspensions other than for water treatment, purification, or filtration; Filtering machines using
`membranes for chemical and physical processing, especially for ultrafiltration, microfiltration,
`nanofiltration, and reverse osmosis
`
`Class 9: Laboratory centrifuges; Chromatography apparatus and installations for laboratory use;
`
`2
`
`

`

`Laboratory apparatus and installations for operating enzymatic and fermentation processes; Ion-
`exchange, electrodialysis, filtration chromatography apparatus and installations for laboratory
`use; control algorithms and calculations for laboratory centrifuges; control algorithms and
`calculations for chromatography apparatus and
`installations for
`laboratory use; control
`algorithms and calculations for laboratory apparatus and installations for operating enzymatic
`and
`fermentation processes; control
`algorithms
`and
`calculations
`for
`ion-exchange,
`electrodialysis, filtration chromatography apparatus and installations for laboratory use
`
`Class 11: Water treatment apparatus, namely, ion exchangers; Water filtration apparatus in the
`field of industrial treatment of liquids; Apparatus for purifying water in the field of industrial
`treatment of liquids; Chromatography apparatus for industrial use; Water treatment apparatus in
`the nature of installations for the treatment of aqueous solutions or suspensions
`
`Class 42: Engineering in the field of industrial treatment of liquids; Inspection of factories and
`machines for quality control purposes in the field of industrial treatment of liquids;
`Technological audits in the nature of safety auditing, energy auditing, and engineering surveys in
`the field of industrial treatment of liquids; Scientific and technological consultation services in
`the field of chromatography, electrodialysis, filtering membrane, ion exchange, enzyme and
`fermentation processes; Research services in the field of chromatography, electrodialysis,
`filtering membrane, ion exchange, enzyme and fermentation processes; Research and
`consultation services in the field of chemistry; Conducting tests and evaluations of products for
`others
`in
`the field of
`industrial
`treatment of
`liquids; Laboratory services, namely,
`chromatographic analysis, electrodialysis, and filtering membrane; Design of engineering
`processes for processing, transforming, purifying, and enriching liquids, molecules, and raw
`materials for others
`
`It is respectfully submitted that the foregoing amendment to the identification of goods
`
`and services neither requires republication nor broadens the scope of the applications.
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`If the foregoing amendments are approved by the Board, Opposer, with Applicant’s
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`written consent, hereby requests that the opposition be dismissed without prejudice.
`
`Dated: June 8, 2021
`
`
`
`Respectfully submitted and consented to,
`
`By: /Jessica S. Sachs/
`Jessica S. Sachs
`Monte L. Falcoff
`Harness, Dickey & Pierce, P.L.C.
`5445 Corporate Drive, Suite 200
`Troy, MI 48098
`Tel: (248) 641-1292
`Email: jsachs@hdp.com
`
`3
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`

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`Attorneys for Applicant, Novasep Process
`
`CONSENTED TO:
`
`By: /Joseph Petersen/
`Joseph Petersen
`Hannah T. Yang
`1080 Marsh Road
`Menlo Park, CA 94025
`Telephone: (650) 326-2400
`Facsimile: (650) 326-2422
`
`Attorneys for Opposer Apple Inc.
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`4
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`

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`CERTIFICATE OF SERVICE
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`I hereby certify that on June 8, 2021, a true and correct copy of the foregoing document
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`is being served on Applicant’s Attorney of Record via electronic mail as follows:
`
`Monte L. Falcoff
`Jessica S. Sachs
`Harness, Dickey & Pierce, P.L.C.
`5445 Corporate Drive, Suite 200
`Troy, Michigan 48098
`Emails: troymailroom@hdp.com, jsachs@hdp.com, hrowe@hdp.com
`Attorneys for Applicant
`
`/Alberto Garcia/
`Alberto Garcia
`
`25695477.1
`
`5
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`