Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 77007570 has been amended as follows:

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

The Examining Attorney has rejected the specimens of record.  Applicant provided a press release for explanatory purposes only, to show the nature of the goods, and Applicant agrees that this is unsatisfactory to prove use as a "specimen".  That said, Applicant strenuously argues with the Examining Attorney's position that the user manual is insufficient.  The Examining Attorney has taken the position that because the XCHANGE mark and the good to which it applies are merely an "option" within the entire system that the mention of such mark is unsuitable.  The Examining Attorney unreasonably concludes:

"Clearly these options are not included in the CyberKnife system and would not come with the system."

 Not only is this an unsupported assumption - noting that these systems cost in excess of a million dollars and are customized for a hospital/institution's needs and desires - even the specimen itself clearly indicates actual USAGE instructions, DIRECTIONS, and SAFETY CONCERNS with respect to the XSIGHT product which is incorporated within the whole system purchased.  Granted, these sophisticated medical components and technologies may not have a standard label or packaging, but that is not what is required under the law.  The following excerpts are worth the Examining Attorney's reconsideration: 

Following an explanation of the components (p. 10-9), the purchaser familiarizing himself/herself with the system is instructed that, for example, the "Quick-check Sensor" is "to check alignment of the Xchange collimator exchange" or that the purchaser (p. 10-10) should not " operate the Xchange System with the Xchange calibration isoposts mounted on the collimator table.  Place them in the storage drawer before operating the Xchange System."

Page 10-11 goes through a step by step guide for Xchange System Operation.

Pages 10-12 and 10-13 shows pictures of elements of the system and is entitled USING THE XCHANGE SYSTEM" and consists of two pages of specific steps of system use

Page 10-14 discusses what to do with "error messages" and how to switch to "manual operation".

So that there can be no question, the undersigned has provided a declaration that such specimens do ship with the goods bearing the mark and are indeed "instruction manuals" for such goods.  The fact that the Examining Attorney has made an erroneous conclusion that these are options featured for additional purchases is incorrect, although certainly one who did not purchase this option might read these instructions - but that does not make them inadequate specimens.  "Specimens are invalid for registration purposes only if they constitute mere advertising." Lands' End Inc. v. Manbeck, 797 F.Supp. 511, 24 USPQ2d 1314, 1316 (E.D. Va. 1992), quoting In re Shipley Co., 230 USPQ 691, 694 (TTAB 1986). 

It has been long held that in determining whether a specimen is acceptable the examining attorney may consider applicant's explanations as to how the specimen is used, along with any other available evidence in the record that shows how the mark is actually used.  See In re International Environmental Corp., 230 USPQ 688 (TTAB 1986).

Applicant maintains that the Examining Attorney is required to look at the original specimens - and all material as a whole - in totality so as to understand and appreciate the use and not merely observe and reject on perceived technical deficiencies.  In re Raychem Corp., 12 USPQ2d 1399 (TTAB 1989).

Applicant respectfully requests that the Statement of Use be accepted and that the mark be passed to Registration.

SIGNATURE(S)
Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii). If the applicant is seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date. 37 C.F.R. Secs. 2.34(a)(1)(i). 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. §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 application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §1051(b), he/she believes applicant to be entitled to use such mark in commerce; 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/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true.

Signature: /Lori N. Boatright/      Date: 09/15/2008
Signatory's Name: Lori N. Boatright
Signatory's Position: Attorney of Record

Response Signature
Signature: /Lori N. Boatright/     Date: 09/15/2008
Signatory's Name: Lori N. Boatright
Signatory's Position: Attorney of Record

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 applicant'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 applicant in this matter: (1) the applicant 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 applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant'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: 77007570
Internet Transmission Date: Mon Sep 15 16:37:06 EDT 2008
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20080915163706772
422-77007570-43074df6ccfcba27ba582bd0e3c
95da4bd-N/A-N/A-20080915163147549446