Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 77849318 ISIS(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=77849318) has been amended as follows:

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

Applicant respctfully requesrs reconsideration of the refusal of registration in view of Reg. No. 4,021,137.  Applicant's mark, ISIS, is readily recognizable word with a well-known meaning (see http://en.wikipedia.org/wiki/Isis), while the cited mark IRIS is also a readily recogniziable work, with two very different alternative meanings (see http://en.wikipedia.org/wiki/Iris_(plant), http://en.wikipedia.org/wiki/Iris_(anatomy)).  Despite any apparent simillarity, it is unlikely that these two marks would ever be confused because each is readily recognizable, and has a distinct and unrelated meaning.  Furthermore, the goods for the cited registration  (VISUAL PROSTHESIS) relate to one of the meanings of the mark IRIS, while applicant's goods (“magnetic navigation systems for medical applications comprised of magnetic devices and controls for controlling the position and/or orientation of magnetic substances and devices in the body; magnets for medical application”are unique, and unrelated to the goods in the registration other than that they are both generally medically related.  For at least these reasons, applicant submits that the marks are not confusingly similar.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 010 for MAGNETIC NAVIGATION SYSTEMS FOR MEDICAL APPLICATIONS; MAGNETS FOR MEDICAL APPLICATIONS
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.

Proposed:
Tracked Text Description: MAGNETIC NAVIGATION SYSTEMS FOR MEDICAL APPLICATIONS; magnetic navigation systems for medical applications comprised of magnetic devices and controls for controlling the position and/or orientation of magnetic substances and devices in the body; magnets for medical applications; magnets for medical applicationsClass 010 for magnetic navigation systems for medical applications comprised of magnetic devices and controls for controlling the position and/or orientation of magnetic substances and devices in the body; magnets for medical applications; magnets for medical applications
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.

SIGNATURE(S)
Response Signature
Signature: /Bryan K. Wheelock/     Date: 08/27/2012
Signatory's Name: Bryan K. Wheelock
Signatory's Position: Attorney, Member Missouri Bar

Signatory's Phone Number: 314-726-7505

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 Aug 27 23:33:03 EDT 2012
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20120827233303728
912-77849318-490b2ef7bdd475a6c4bd11b9e6c
9fdd265c-N/A-N/A-20120827225343663978