| PTO Form 1966 (Rev 9/2002) |
| OMB Control #0651-0050 (Exp. 04/30/2006) |
| Input Field |
Entered |
| SERIAL NUMBER | 76324979 |
| MARK SECTION (no change) | |
| OWNER SECTION (current) | |
| NAME | SULZER DENTAL INC. |
| STREET | 1900 Aston Avenue |
| CITY | Carlsbad |
| STATE | CA |
| ZIP/POSTAL CODE | 92008 |
| COUNTRY | US |
| OWNER SECTION (proposed) | |
| NAME | ZIMMER DENTAL INC. |
| STREET | 1900 Aston Avenue |
| CITY | Carlsbad |
| STATE | CA |
| ZIP/POSTAL CODE | 92008 |
| COUNTRY | US |
| LEGAL ENTITY SECTION (no change) | |
| ARGUMENT(S) | |
| Applicant acknowledges receipt of the Final Office Action dated August 15, 2002 in which the Examining Attorney rejected the previously filed specimens of use for Classes 10 and 41. Applicant respectfully traverses and requests reconsideration of the rejection of the specimen of use submitted June 12, 2003. First, the Examiner must understand that the products themselves as much too small for the trademark to be marked thereon. Accordingly, the mark is used as a trademark on literature describing the product and from which the product can be ordered by part number and name. The flyer submitted June 12, 2003 is a stand alone promotional piece, although the same text and artwork was also used in a multi-page brochure (the originally-submitted specimen). The trademark SMARTSTEPS is used on the flyer in close proximity to the product and its description. That is, the mark is used on the front side of the single page flyer, where the back side of the flyer has the product name and identifier and a solicitation to order the product. This use may be analogized to the situation where a trademark is displayed on one side of a product carton, but where the product name and other identifiers appear on a different side of the carton. In this way, applicant's mark is used in very close proximity to the goods and is used to solicit orders of the specific goods that are described in the application. This flyer, when considered as the single document that it is, as opposed to considering it as representing separate and unrelated pages of a multi-page brochure, demonstrates the mark as used in commerce in connection with the goods and services recited in the application. If the Examiner maintains the rejection of the specimen of use submitted June 12, 2003, Applicant requests consideration of the additional specimens of use submitted with this response to Final Office Action. Applicant submits herewith pages from the 2002 Product Catalog showing the mark and from which customers can order the goods recited in the application. In addition, Applicant submits a photocopy of a CD along with a page from the Applicant's website describing the CD. This CD is provided to customers as an instruction manual and to assist in the training and education of users of the goods and services sold under this mark. Further, Applicant submits a page from Applicant's website showing the mark and inviting customers to participate in professional training programs and continuing education in the area of dental implants and restorative dental implant attachments. Further, the Office should be aware that Applicant has undergone a name change from Centerpulse Dental Inc. to Zimmer Dental Inc. (recorded at Reel 002782/Frame 0178). Accordingly, the Applicant has complied with all of the outstanding requirements of the Office, and respectfully request the Examining Attorney to withdraw the refusal to register the mark in Classes 10 and 41, and approve the application for publication on the Principal Register. | |
| CORRESPONDENCE SECTION | |
| NAME | Gregory L. Maag |
| CONFIRM NAME | Conley Rose, P.C. |
| STREET | P.O. Box 3267 |
| CITY | Houston |
| STATE | TX |
| ZIP/POSTAL CODE | 77253-3267 |
| COUNTRY | USA |
| PHONE | 713-238-8000 |
| FAX | 713-238-8008 |
| TMHou@conleyrose.com | |
| AUTHORIZED TO COMMUNICATE VIA E-MAIL | Yes |
| SIGNATURE SECTION | |
| SIGNATURE | /gregory l. maag/ |
| SIGNATORY NAME | Gregory L. Maag |
| SIGNATORY POSITION | Attorney for Applicant |
| SIGNATORY DATE | 02/17/2004 |
| SIGNATURE | /gregory l. maag/ |
| SIGNATORY NAME | Gregory L. Maag |
| SIGNATORY POSITION | Attorney for Applicant |
| SIGNATORY DATE | 02/17/2004 |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Feb 17 19:39:00 EST 2004 |
| TEAS STAMP | USPTO/OA-XXXXXXXX-2004021 7193900290161-76324979-20 07418d2612cc4072412aabc9c cf93c6f-N-N-2004021718512 6953758 |
| PTO Form 1966 (Rev 9/2002) |
| OMB Control #0651-0050 (Exp. 04/30/2006) |
| Application serial no. 76324979 is amended as follows: | |
| Argument(s) | |
| In response to the substantive refusal(s), please note the following: | |
| Applicant acknowledges receipt of the Final Office Action dated August 15, 2002 in which the Examining Attorney rejected the previously filed specimens of use for Classes 10 and 41. Applicant respectfully traverses and requests reconsideration of the rejection of the specimen of use submitted June 12, 2003. First, the Examiner must understand that the products themselves as much too small for the trademark to be marked thereon. Accordingly, the mark is used as a trademark on literature describing the product and from which the product can be ordered by part number and name. The flyer submitted June 12, 2003 is a stand alone promotional piece, although the same text and artwork was also used in a multi-page brochure (the originally-submitted specimen). The trademark SMARTSTEPS is used on the flyer in close proximity to the product and its description. That is, the mark is used on the front side of the single page flyer, where the back side of the flyer has the product name and identifier and a solicitation to order the product. This use may be analogized to the situation where a trademark is displayed on one side of a product carton, but where the product name and other identifiers appear on a different side of the carton. In this way, applicant's mark is used in very close proximity to the goods and is used to solicit orders of the specific goods that are described in the application. This flyer, when considered as the single document that it is, as opposed to considering it as representing separate and unrelated pages of a multi-page brochure, demonstrates the mark as used in commerce in connection with the goods and services recited in the application. If the Examiner maintains the rejection of the specimen of use submitted June 12, 2003, Applicant requests consideration of the additional specimens of use submitted with this response to Final Office Action. Applicant submits herewith pages from the 2002 Product Catalog showing the mark and from which customers can order the goods recited in the application. In addition, Applicant submits a photocopy of a CD along with a page from the Applicant's website describing the CD. This CD is provided to customers as an instruction manual and to assist in the training and education of users of the goods and services sold under this mark. Further, Applicant submits a page from Applicant's website showing the mark and inviting customers to participate in professional training programs and continuing education in the area of dental implants and restorative dental implant attachments. Further, the Office should be aware that Applicant has undergone a name change from Centerpulse Dental Inc. to Zimmer Dental Inc. (recorded at Reel 002782/Frame 0178). Accordingly, the Applicant has complied with all of the outstanding requirements of the Office, and respectfully request the Examining Attorney to withdraw the refusal to register the mark in Classes 10 and 41, and approve the application for publication on the Principal Register. | |
| Procedural Matters/Informalities | |
| Applicant proposes to amend the following: | |
| Original: SULZER DENTAL INC., a corporation of DE, having an address of 1900 Aston Avenue Carlsbad, CA US 92008. | |
| Proposed: ZIMMER DENTAL INC., a corporation of DE, having an address of 1900 Aston Avenue Carlsbad, CA US 92008. | |
| Correspondence Address Change | |
| Applicant proposes to amend the following: | |
| Original: KENNETH S. BARROW CENTERPULSE USA INC. 12 EAST GREENWAY PLAZA, SUITE 1000 HOUSTON, TX 77046 | |
| Proposed: Gregory L. Maag of Conley Rose, P.C., having an address of P.O. Box 3267 Houston, TX USA 77253-3267, whose e-mail address is TMHou@conleyrose.com, whose phone number is 713-238-8000 and whose fax number is 713-238-8008. | |
| Declaration Signature |
|
| The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this amendment/response on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, and that the mark is in use in commerce, and was in use in commerce on the application filing date, on or in connection with the goods and/or services listed in the application; or, if the application is being filed under 15 U.S.C. Section 1051(b), 1126(d) or 1126(e), he/she believes applicant to be entitled to use such mark in commerce, and that the applicant has a bona fide intention, and had a bona fide intention on the application filing date, to use the mark in commerce on or in connection with the goods and/or services listed in the application; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods and/or services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true; and that all statements made on information and belief are believed to be true as set forth within the original application and/or the submitted amendment/response. | |
| Signature: /gregory l. maag/ Date: 02/17/2004 | |
| Signatory's Name: Gregory L. Maag | |
| Signatory's Position: Attorney for Applicant | |
| Response Signature | |
| Signature: /gregory l. maag/ Date: 02/17/2004 | |
| Signatory's Name: Gregory L. Maag | |
| Signatory's Position: Attorney for Applicant | |
| Mailing Address: | |
| Gregory L. Maag | |
| Conley Rose, P.C. | |
| P.O. Box 3267 | |
| Houston, TX 77253-3267 | |
| Serial Number: 76324979 | |
| Internet Transmission Date: Tue Feb 17 19:39:00 EST 2004 | |
| TEAS Stamp: USPTO/OA-XXXXXXXX-20040217193900290161-7 6324979-2007418d2612cc4072412aabc9ccf93c 6f-N-N-20040217185126953758 |