Notation to File

NOTE TO THE FILE

SERIAL NUMBER:            87801085

DATE:                                01/16/2019

NAME:                               cjohn1

NOTE:         

Searched:                                                             
     Google                            
     Lexis/Nexis                       
     OneLook
     Wikipedia
     Acronym Finder                         Protest evidence reviewed
     Other:

Checked:                                                             
     Geographic significance          
     Surname                          
     Translation
     ID with ID/CLASS mailbox

     Checked list of approved Canadian attorneys and agents

Discussed file with
Attorney/Applicant via:
    X   phone                               Left message with
    X   email                               Attorney/Applicant

     Requested Law Library search       X   Issued Examiner’s Amendment
     for:                                   and entered changes in TRADEUPS

        PRINT        DO NOT PRINT           Added design code in TRADEUPS
     Description of the mark
     Translation statement                  Re-imaged standard character
                                            drawing
     Negative translation statement             
     Consent of living individual           Contacted TM MADRID ID/CLASS
                                            about misclassified definite ID
     Changed TRADEUPS to:

     OTHER:

 

From: Slonim, Timur [mailto:TESlonim@mintz.com]
Sent: Wednesday, January 16, 2019 2:10 PM
To: John, Cristel <Cristel.John@USPTO.GOV>
Subject: RE: Trademark Application Serial No. 87801085 ACTIV SURGICAL

 

Dear Cristel,

 

Thank you very much for speaking with me today and providing the below proposal. I will run it by the client and get back to you shortly.

 

Best regards,

 

Timur

 

From: John, Cristel <Cristel.John@USPTO.GOV>
Sent: Wednesday, January 16, 2019 2:03 PM
To: Slonim, Timur <TESlonim@mintz.com>
Subject: Trademark Application Serial No. 87801085 ACTIV SURGICAL

 

Hello Timur,

 

As discussed earlier, the following amendments to Class 10 are suggested and may be adopted if accurate. Upon further review, I believe an amendment to Class 9 is also required to specify the type of Robot and to clarify the purpose of the computer software.

 

The following is suggested and may be adopted if accurate: (changes made in bold)

 

Class 9

Downloadable computer software for controlling robots and automatic machines; Downloadable computer software and camera with sensors for the purposes of allowing a robot to sense and respond to environmental inputs; Laboratory robots, namely, robotic system comprised primarily of robots, operating software, communication systems, and sensor; computer hardware and software for use in connection with a robot, namely, control and operating software, decision making support software, image processing software, and visualization software

 

Class 10

Medical and surgical apparatus and instruments, namely, medical apparatus for use in general surgery, and surgical imaging and visualization apparatus in the nature of medical robots and automatic machines; Surgical apparatus and instruments, namely, robots and automatic machines for use in the field of surgery and replacement parts therefor; Medical device, namely, medical mobile robotic system comprised primarily of robots for use in general surgery, and also comprised of operating software, communication systems, and sensor; all of the above not for light-based medical devices, namely, devices using low level lasers, light emitting diodes, infrared light and pulsed light for treating diseases and providing therapeutic applications, namely, muscle, skeletal, nerve and skin therapies

 

Class 44 is acceptable as provided.

 

Please let me know if you have any further questions. Upon your authorization, I will be happy to issue an Examiner’s Amendment to expedite processing of this application. I look forward to your reply.

 

Thank you,

Cristel John

 

Cristel John

Trademark Examining Attorney

Law Office 125

(571) 272-5412

Cristel.john@uspto.gov

 

Notice to Applicants and Attorneys:  relevant e-mail communications will be uploaded to the official application record in accordance with 37 C.F.R. §2.191 and TMEP §§709.04 - .05.

 

 

 

 

 

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