| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
Response to Office Action
The table below presents the data as entered.
Input Field
|
Entered
|
| SERIAL NUMBER |
86002730 |
| LAW OFFICE ASSIGNED |
LAW OFFICE 116 |
| MARK SECTION |
| MARK |
http://uspto.report/TM/86002730/mark.png |
| LITERAL ELEMENT |
IMAGE |
| 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) |
| RESPONSE TO OFFICE ACTION DATED OCTOBER 21, 2013 In response to the office action dated October 21, 2013 (the "Office Action") pertaining to the
above-referenced application (the "Application"), we submit the following on behalf of Dr. Yan Kalika (the "Applicant"). The examining attorney has refused registration of the Applicant trademark
IMAGE for "Dentist services; Orthodontic services" in Class 44 (the "Applicant Mark") pursuant to Trademark Act Section 2(d), 15 U.S.C. § 1052(d), on the grounds that the Applicant Mark is likely to
be confused with the trademark registered by Roger N. Gilbert DDS Inc. ("Registrant") for IMAGE IMAGE AESTHETIC DENTISTRY for "Cosmetic dentistry; Dentistry" in Class 44 shown in U.S. Registration
No. 3701343 (the "Cited Mark"). I. COEXISTENCE AGREEMENT Applicant and Registrant have entered into a consent agreement whereby Registrant agrees that the marks are not likely to be confused and
Registrant consents to the registration of the Applicant Mark. See attached Consent Agreement. II. CITED PENDING APPLICATION The examining attorney also cited pending U.S. Application Serial No.
85772552 as a potential obstacle to registration of the mark shown in this application. Applicant wishes to note that the USPTO issued an office action refusing registration of pending U.S.
Application Serial No. 85772552 on September 27, 2013. A response to that office action was due on March 27, 2014. Based on the records of the USPTO, it appears that the owner of U.S. Application
Serial No. 85772552 failed to respond to that office action and that that pending application will be deemed abandoned and will no longer pose an obstacle to registration of the mark shown in this
application. III. CONCLUSION Applicant respectfully submits that it has responded fully to all of the examining attorney's requests stated in the Office Action. In view of the foregoing, Applicant
hereby requests that the Applicant Mark be approved for publication in the Official Gazette of the United States Patent and Trademark Office. |
| EVIDENCE SECTION |
| EVIDENCE FILE NAME(S) |
| ORIGINAL PDF FILE |
evi_209136102231-182634840_._Coexistence_Agreement.PDF |
CONVERTED PDF FILE(S)
(4 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\860\027\86002730\xml4\ROA0002.JPG |
| |
\\TICRS\EXPORT16\IMAGEOUT16\860\027\86002730\xml4\ROA0003.JPG |
| |
\\TICRS\EXPORT16\IMAGEOUT16\860\027\86002730\xml4\ROA0004.JPG |
| |
\\TICRS\EXPORT16\IMAGEOUT16\860\027\86002730\xml4\ROA0005.JPG |
| DESCRIPTION OF EVIDENCE FILE |
a copy of the March 18, 2014 Trademark Co-Existence Agreement between Roger N. Gilbert DDS Inc. and Dr. Yan Kalika. |
| SIGNATURE SECTION |
| RESPONSE SIGNATURE |
/Robert P. Felber, Jr./ |
| SIGNATORY'S NAME |
Robert P. Felber, Jr. |
| SIGNATORY'S POSITION |
Attorney of Record, Tennessee Bar Member |
| SIGNATORY'S PHONE NUMBER |
615-850-8741 |
| DATE SIGNED |
04/16/2014 |
| AUTHORIZED SIGNATORY |
YES |
| FILING INFORMATION SECTION |
| SUBMIT DATE |
Wed Apr 16 18:46:39 EDT 2014 |
| TEAS STAMP |
USPTO/ROA-XXX.XXX.XXX.XXX
-20140416184639076154-860
02730-500c7daf2ae625dcba0
4fbbe518db7c81d2e8a4814d8
d184d4eba650c73d448f8f-N/
A-N/A-2014041618263484022
6 |
| 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.
86002730 IMAGE(Standard Characters, see http://uspto.report/TM/86002730/mark.png) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
RESPONSE TO OFFICE ACTION DATED OCTOBER 21, 2013 In response to the office action dated October 21, 2013 (the "Office Action") pertaining to the above-referenced application (the "Application"), we
submit the following on behalf of Dr. Yan Kalika (the "Applicant"). The examining attorney has refused registration of the Applicant trademark IMAGE for "Dentist services; Orthodontic services" in
Class 44 (the "Applicant Mark") pursuant to Trademark Act Section 2(d), 15 U.S.C. § 1052(d), on the grounds that the Applicant Mark is likely to be confused with the trademark registered by Roger N.
Gilbert DDS Inc. ("Registrant") for IMAGE IMAGE AESTHETIC DENTISTRY for "Cosmetic dentistry; Dentistry" in Class 44 shown in U.S. Registration No. 3701343 (the "Cited Mark"). I. COEXISTENCE AGREEMENT
Applicant and Registrant have entered into a consent agreement whereby Registrant agrees that the marks are not likely to be confused and Registrant consents to the registration of the Applicant
Mark. See attached Consent Agreement. II. CITED PENDING APPLICATION The examining attorney also cited pending U.S. Application Serial No. 85772552 as a potential obstacle to registration of the mark
shown in this application. Applicant wishes to note that the USPTO issued an office action refusing registration of pending U.S. Application Serial No. 85772552 on September 27, 2013. A response to
that office action was due on March 27, 2014. Based on the records of the USPTO, it appears that the owner of U.S. Application Serial No. 85772552 failed to respond to that office action and that
that pending application will be deemed abandoned and will no longer pose an obstacle to registration of the mark shown in this application. III. CONCLUSION Applicant respectfully submits that it has
responded fully to all of the examining attorney's requests stated in the Office Action. In view of the foregoing, Applicant hereby requests that the Applicant Mark be approved for publication in the
Official Gazette of the United States Patent and Trademark Office.
EVIDENCE
Evidence in the nature of a copy of the March 18, 2014 Trademark Co-Existence Agreement between Roger N. Gilbert DDS Inc. and Dr. Yan Kalika. has been attached.
Original PDF file:
evi_209136102231-182634840_._Coexistence_Agreement.PDF
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
SIGNATURE(S)
Response Signature
Signature: /Robert P. Felber, Jr./ Date: 04/16/2014
Signatory's Name: Robert P. Felber, Jr.
Signatory's Position: Attorney of Record, Tennessee Bar Member
Signatory's Phone Number: 615-850-8741
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: 86002730
Internet Transmission Date: Wed Apr 16 18:46:39 EDT 2014
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20140416184639
076154-86002730-500c7daf2ae625dcba04fbbe
518db7c81d2e8a4814d8d184d4eba650c73d448f
8f-N/A-N/A-20140416182634840226
