Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

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

---

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

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

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 86920205 PLEX(Standard Characters, see http://tmng-al.gov.uspto.report/resting2/api/img/86920205/large) has been amended as follows:

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

We reply to Examining Attorney Advisor Giselle Agosto-Hincapie's Office Action sent June 6, 2016.

Please amend the identification of goods to read "Diagnostic angiography imager for 3D imaging of the vitreous, retina, and choroid using swept-source OCT technology in the field of ophthalmology."

Pursuant to the Examining Attorney Advisor's request, we submit herewith a copy of Applicant's press release explaining the nature, features, and applications of Applicant's PLEX product for the diagnosis and treatment of eye disease.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 009 for Optical apparatus and instruments and parts thereof

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 010 for Ophthalmological apparatus and instruments and parts thereof
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.

Based on Foreign Application: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and will submit a copy of a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

Proposed:
Tracked Text Description: Ophthalmological apparatus and instruments and parts thereof; Diagnostic angiography imager for 3D imaging of the vitreous, retina, and choroid using swept-source OCT technology in the field of ophthalmology.Class 010 for Diagnostic angiography imager for 3D imaging of the vitreous, retina, and choroid using swept-source OCT technology in the field of ophthalmology.
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 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 [ __________ application number __________ filed __________ ]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration. If ultimately the applicant does not rely on Section 44(e) as a basis for registration, a valid claim of priority may be retained.

ADDITIONAL STATEMENTS
Miscellaneous Statement
Pursuant to the Examining Attorney Advisor's request, we submit herewith a copy of Applicant's press release explaining the nature, features, and applications of Applicant's PLEX product for the diagnosis and treatment of eye disease.

Original PDF file:
mis-160793250-20160715160804219052_._PlexPressRelease.pdf
Converted PDF file(s) ( 2 pages)
Miscellaneous File1
Miscellaneous File2

SIGNATURE(S)
Response Signature
Signature: /V.T. GIORDANO/     Date: 07/15/2016
Signatory's Name: V.T. GIORDANO
Signatory's Position: ATTORNEY OF RECORD, NEW YORK BAR MEMBER

Signatory's Phone Number: 212-661-1400

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 owner's/holder'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 owner/holder in this matter: (1) the owner/holder 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 owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder'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: 86920205
Internet Transmission Date: Fri Jul 15 17:48:41 EDT 2016
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XX-20160715174841958
355-86920205-550af0fb7b6ca55c849a613ac0a
6acc2f9d48d0c9e6eefe7ca59e97d4b63e-N/A-N
/A-20160715173203347945