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 09/20/2020)

---

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 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 87361863 KEYSTONE(Standard Characters, see http://uspto.report/TM/87361863/mark.png) has been amended as follows:

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

The Examining Attorney has refused registration of the application based on the contention that the specimen displays the mark as KEYSTONE DENTAL while the drawing displays the mark as KEYSTONE.  While Applicant does not disagree that the specimen displays the term DENTAL in a different font in an extremely small point size beneath the applied for mark KEYSTONE, Applicant submits that the appearance of the purely descriptive term appearing in a different font in an extremely small point size in proximity to the Applicant’s house mark does not make the specimen unacceptable.  Applicant submits that it uses the KEYSTONE “house mark” with a variety of descriptive terms and product marks.  In support thereof, Applicant submits that the attached specimen evidencing use of the mark with goods in Class 5 displays the Applicant’s KEYSTONE house mark adjacent to the Applicant’s stylized K logo and above the Applicant’s ACCELL mark for a bone augmentation product.  Furthermore, Applicant includes an additional specimen evidencing use of the KEYSTONE mark in the form of a surgical manual for a dental implant that accompanies the implant when shipped clearly displaying the applied for KEYSTONE mark in a different font, color, point size as compared to the purely descriptive term dental used beneath the applied for mark.  If the Examining Attorney desires, this specimen may be substituted for the specimen originally filed with the application for International Class 10.  Applicant submits that the specimen was in actual use in commerce at least as early as the filing date of the application and submits a declaration attesting thereto with this response.

 

The Examining Attorney has also noted that the application as filed did not reflect a date of execution.  Applicant submits the application was executed on March 6, 2017 and requests the Examining Attorney amend the application to reflect the March 6, 2017 execution date.  If the Examining Attorney has any questions or requires additional information, Applicant requests the Examining Attorney contact the undersigned attorney.  Applicant’s counsel thanks the Examining Attorney for her assistance.

EVIDENCE
Evidence in the nature of Proposed substitute specimen has been attached.
Original PDF file:
evi_121596630-20171204170309347578_._68727_00700_-_Proposed_Substitute_Specimen.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 010 for Dental implants; bone augmentation materials for dental use, bone regenerative materials for dental use
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged 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. The mark was first used at least as early as 00/00/2008 and first used in commerce at least as early as 00/00/2008 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Dental implants; bone augmentation materials for dental use, bone regenerative materials for dental use; artificial biomaterials for bone augmentation for dental use; synthetic biomaterials for bone augmentation for dental use; bone regenerative materials in the nature of synthetic and biological tissue intended for implantation or grafting for dental use; bone regenerative materials in the nature of synthetic and biological tissues intended for subsequent implantation for dental useClass 010 for Dental implants; artificial biomaterials for bone augmentation for dental use; synthetic biomaterials for bone augmentation for dental use; bone regenerative materials in the nature of synthetic and biological tissue intended for implantation or grafting for dental use; bone regenerative materials in the nature of synthetic and biological tissues intended for subsequent implantation for dental use
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged 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. The mark was first used at least as early as 00/00/2008 and first used in commerce at least as early as 00/00/2008 , and is now in use in such commerce.
Applicant hereby adds the following class of goods/services to the application:
New: Class 005 for Natural biomaterials for bone augmentation for dental use
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged 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. The mark was first used at least as early as 00/00/2008 and first used in commerce at least as early as 00/00/2008 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 005 . The specimen(s) submitted consists of Goods with mark affixed .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen]. Specimen File1

ADDITIONAL STATEMENTS
Miscellaneous Statement
The date the application was signed was 03/06/2017.


FEE(S)
Fee(s) in the amount of $275 is being submitted.

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /dax alvarez/      Date: 12/04/2017
Signatory's Name: Dax Alvarez
Signatory's Position: Attorney of Record, CA Bar Member
Signatory's Phone Number: 213-929-2500


Response Signature
Signature: /dax alvarez/     Date: 12/04/2017
Signatory's Name: Dax Alvarez
Signatory's Position: Attorney of Record, CA Bar Member

Signatory's Phone Number: 2139292500

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.

        
RAM Sale Number: 87361863
RAM Accounting Date: 12/05/2017
        
Serial Number: 87361863
Internet Transmission Date: Mon Dec 04 17:24:17 EST 2017
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20171204172417918
998-87361863-510f0421de8f6f208e3b85a58dc
0b8e39e9d55ae6484eb2ac8afb7c8631abf2ea-D
A-4436-20171204170309347578