Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 77849318 has been amended as follows:

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

The Search of the Office Records

Applicant respectfully submits that there is no likelihood of confusion between the cited mark IRIS (Serial No. 78/708931) and applicant's mark ISIS because IRIS is a common word, with a well-known meanings particularly to those in the medical profession.

 

Because of IRIS' common and well understood meaning, that no one would confuse IRIS with ISIS, or vice versa.  Certainly in the field of medicine (to which the products relate) one hopes and expects that medical professionals would immediately recognize the work IRIS and the difference between IRIS and ISIS.

 

Here a difference of a single letter changes the appearance and most importantly the meaning of the marks, and therefore applicant respectfully submits that there is no likelihood of confusion from its registration of ISIS for its magnetic navigation systems.

The Identification of Goods

Applicant respectfully requests reconsideration of the requirement of an amendment to the description of goods and services.  The current description"MAGNETIC NAVIGATION SYSTEMS FOR MEDICAL APPLICATIONS; MAGNETS FOR MEDICAL APPLICATIONS" is very similar to the description in Applicant's prior allowed application Serial No. 780564031 "REMOTE MAGNETIC NAVIGATION SYSTEMS FOR MEDICAL USES".  This description was acceptable to the Office previously, and applicant's respectfully submit that the description should be accepted in this application.  (The prior application abandoned because applicant could not complete the development of the product in time).

 

SIGNATURE(S)
Response Signature
Signature: /Bryan K. Wheelock/     Date: 06/14/2010
Signatory's Name: Bryan K. Wheelock
Signatory's Position: Attorney

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: 77849318
Internet Transmission Date: Mon Jun 14 11:43:14 EDT 2010
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20100614114314598
581-77849318-46029af6d7d4e5fdd409e74a94a
32165ea5-N/A-N/A-20100614104524271528