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. 85665326 PLASMAFIT(Standard Characters, see http://uspto.report/TM/85665326/mark.png) has been amended as follows:

ADDITIONAL STATEMENTS
Miscellaneous Statement
Aesculap AG ("Applicant"), by and through its undersigned counsel, hereby responds to the Office Action, emailed June 27, 2014, on the above-captioned trademark application. 1. Mark Differs on Drawing and Specimen The Examiner has refused registration of the mark because he believes that the specimen displays the mark as PLASMAFIT PRO where the drawing displays the mark as PLASMAFIT. Applicant respectfully disagrees. The specimen displays the term PLASMAFIT in connection with the relevant goods, namely, "common metals and their alloys for surgical and orthopedic implants" in Class 7 and "surgical instruments and apparatus; medical apparatus and instruments for use in implantation of orthopedic and surgical implants" in Class 10. This is clearly displayed on every page submitted to the Trademark Office. Applicant maintains that it is entitled to trademark protection of the mark PLASMAFIT based on the specimen submitted. The Trademark Office requires that "the drawing of the mark must be a substantially exact representation of the mark as used on or in connection with the goods or services, as shown by the specimens." See TMEP § 807.14. Although the specimen contains the word "Pro" on the specimen as well, the mark PLASMAFIT is clearly the trademark. There is a clear break between the terms and the ( R ) symbol appears after PLASMAFIT because the mark is registered in the European Union (Reg. No. 009529397). The Trademark Manual of Examining Procedure does not allow for refusal of specimens based on other terms being present in the specimen as well. Accordingly, Applicant respectfully requests that the specimen be accepted by the Examiner.


SIGNATURE(S)
Response Signature
Signature: /lori e. harrison/     Date: 12/22/2014
Signatory's Name: Lori E. Harrison
Signatory's Position: Attorney of Record, PA bar member

Signatory's Phone Number: 212.808.2750

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: 85665326
Internet Transmission Date: Mon Dec 22 11:33:36 EST 2014
TEAS Stamp: USPTO/ROA-XX.XX.XX.XXX-20141222113336684
601-85665326-500a695f7879ece7617dccbc13e
45e811bbaca65ad6c8f1abe04babfe9a30a242-N
/A-N/A-20141219145042519602