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. 85757863 MAINSTAY(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85757863) has been amended as follows:

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

In this Office Action, the Examining Attorney requested that the Applicant further clarify the nature of its medical apparatus and devices. In response, the Applicant has amended the identification of goods as indicated herein, in conformity with the Examining Attorney’s request and suggestions. The amendment clarifies the identification without expanding or adding to those goods originally identified in the application. 37 C.F.R. § 2.71(a); TMEP § 1402.06. Accordingly, the Applicant respectfully submits that the amendment is acceptable.

In light of the above, the applicant believes that it has responded to all issues raised in the Office Action and respectfully requests that the application be passed to publication.  However, should any questions arise with respect to the application or the issues addressed herein, please contact the undersigned.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 010 for MEDICAL DEVICES FOR THERAPY FOR CHRONIC PAIN CONDITIONS; MEDICAL APPARATUS FOR THE RELIEF OF PAIN
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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 authorized users in connection with the identified goods/services, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ European Community application number 011274123 filed 10/17/2012]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: MEDICAL DEVICES FOR THERAPY FOR CHRONIC PAIN CONDITIONS; MEDICAL DEVICES FOR THERAPY FOR CHRONIC PAIN CONDITIONS, NAMELY, FOR THE TREATMENT OF CHRONIC BACK PAIN; MEDICAL APPARATUS FOR THE RELIEF OF PAIN; MEDICAL APPARATUS FOR THE RELIEF OF PAIN, NAMELY, FOR THE TREATMENT OF BACK PAINClass 010 for MEDICAL DEVICES FOR THERAPY FOR CHRONIC PAIN CONDITIONS, NAMELY, FOR THE TREATMENT OF CHRONIC BACK PAIN; MEDICAL APPARATUS FOR THE RELIEF OF PAIN, NAMELY, FOR THE TREATMENT OF BACK PAIN
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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 authorized users in connection with the identified goods/services, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ European Community application number 011274123 filed 10/17/2012]. 15 U.S.C.Section 1126(d), as amended.

SIGNATURE(S)
Response Signature
Signature: /tschulz/     Date: 07/25/2013
Signatory's Name: Tricia L. Schulz
Signatory's Position: Attorney of record, WI bar member

Signatory's Phone Number: 608-258-4204

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: 85757863
Internet Transmission Date: Thu Jul 25 09:36:35 EDT 2013
TEAS Stamp: USPTO/ROA-XXX.XX.XX.X-201307250936356064
02-85757863-500ca9c10afa533b4a3cf5ad6f13
91749636bc4b9a152afb4cdfe35a0c63b67a7fb-
N/A-N/A-20130725093135076615