| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 85901715 |
| LAW OFFICE ASSIGNED | LAW OFFICE 110 |
| MARK SECTION | |
| MARK | http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85901715 |
| LITERAL ELEMENT | STRAUSS SURGICAL |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
|
This is in response to the Office Action of August 1, 2013. After careful consideration and correspondence with applicant, counsel responds as follows. AMENDMENT Please enter the following statements to the application record:
THE TERM "STRAUSS" HAS BECOME DISTINCTIVE OF THE GOODS/SERVICES AS EVIDENCED BY OWNERSHIP OF U.S. REGISTRATION NO. 3,552,330 FOR THE MARK STRAUSS OPTIKS.
NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE THE TERM "SURGICAL" APART FROM THE MARK AS SHOWN.
REMARKS
Submitted concurrently herewith is applicant's Amendment to Allege Use with Declaration and supporting specimens. An as-filed copy is enclosed for the convenience of the Examining Attorney. The Examining Attorney had initially refused registration under Section 2(e)(4) of the Trademark Act noting that the primary significance of the mark is that "STRAUSS" is a surname. At this time, applicant requests that the Examining Attorney consider registration of the STRAUSS SURGICAL mark under Section 2(f) of the Trademark Act based on applicant's prior Registration No. 3,552,330 for the mark STRAUSS OPTIKS. Applicant has incorporated an appropriate statement to the application record. As requested by the Examining Attorney, applicant has entered a disclaimer of the term "SURGICAL" apart from the mark as shown. It is believed that applicant’s mark should be allowed to proceed to publication for opposition purposes at the earliest possible date. If any further amendments are required, the Examining Attorney should contact the undersigned at his earliest convenience. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_12411614-132244143_._S20129ResponsetoOfficeActionNonFinal.pdf |
| CONVERTED PDF FILE(S) (6 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\859\017\85901715\xml6\ROA0002.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\859\017\85901715\xml6\ROA0003.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\859\017\85901715\xml6\ROA0004.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\859\017\85901715\xml6\ROA0005.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\859\017\85901715\xml6\ROA0006.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\859\017\85901715\xml6\ROA0007.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Executed copy of applicant's Response to Office Action, with copy of Amendment to Allege Use with Declaration and specimens as filed concurrently herewith |
| ADDITIONAL STATEMENTS SECTION | |
| DISCLAIMER | No claim is made to the exclusive right to use SURGICAL apart from the mark as shown. |
| SECTION 2(f) Claim of Acquired Distinctiveness, IN PART, based on Active Prior Registration(s) | STRAUSS has become distinctive of the goods/services as evidenced by the ownership on the Principal Register for the same mark for related goods or services of U.S. Registration No(s). 3552330. |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Jody H. Drake/ |
| SIGNATORY'S NAME | Jody H. Drake |
| SIGNATORY'S POSITION | Attorney for applicant, DC bar member |
| SIGNATORY'S PHONE NUMBER | 202.293.7060 |
| DATE SIGNED | 09/23/2013 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Sep 23 13:29:14 EDT 2013 |
| TEAS STAMP | USPTO/ROA-XX.X.XXX.XX-201 30923132914923884-8590171 5-50057d7d3a7baeb13095aa2 c265f2c4d421283825ddbf9b6 8cb4c46249934c38-N/A-N/A- 20130923132244143407 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
This is in response to the Office Action of August 1, 2013. After careful consideration and correspondence with applicant, counsel responds as follows.
AMENDMENT
Please enter the following statements to the application record:
THE TERM "STRAUSS" HAS BECOME DISTINCTIVE OF THE GOODS/SERVICES AS EVIDENCED BY OWNERSHIP OF U.S. REGISTRATION NO. 3,552,330 FOR THE MARK STRAUSS OPTIKS.
NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE THE TERM "SURGICAL" APART FROM THE MARK AS SHOWN.
REMARKS
Submitted concurrently herewith is applicant's Amendment to Allege Use with Declaration and supporting specimens. An as-filed copy is enclosed for the convenience of the Examining Attorney.
The Examining Attorney had initially refused registration under Section 2(e)(4) of the Trademark Act noting that the primary significance of the mark is that "STRAUSS" is a surname. At this time, applicant requests that the Examining Attorney consider registration of the STRAUSS SURGICAL mark under Section 2(f) of the Trademark Act based on applicant's prior Registration No. 3,552,330 for the mark STRAUSS OPTIKS. Applicant has incorporated an appropriate statement to the application record.
As requested by the Examining Attorney, applicant has entered a disclaimer of the term "SURGICAL" apart from the mark as shown.
It is believed that applicant’s mark should be allowed to proceed to publication for opposition purposes at the earliest possible date. If any further amendments are required, the Examining Attorney should contact the undersigned at his earliest convenience.
