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)

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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. 88059226 ESPION(Standard Characters, see http://uspto.report/TM/88059226/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 010 for medical apparatus and equipment, namely, visual electrophysiology equipment for use in diagnosing ophthalmic conditions, vision research, drug trials and evaluation of retinal function, and components, peripherals and software therefor; and laboratory apparatus and equipment, namely, visual electrophysiology equipment for rodent electroretinography testing for research purposes, and components, peripherals and software therefor

Applicant hereby adds the following class of goods/services to the application:
New: Class 009 (Original Class: 010 ) for Laboratory apparatus and equipment, namely, visual electrophysiology equipment for rodent electroretinography testing for research purposes, and components and peripherals in the nature of rodent platforms, illuminating lamps, electrodes, pattern stimulators, amplifiers, computers and infrared cameras, and software for interpreting, storing and exporting data sold as a unit; software for interpreting, storing and exporting data sold as an integral component of laboratory apparatus and equipment, namely, visual electrophysiology equipment for rodent electroretinography testing for research purposes; software for use with visual electrophysiology equipment, for interpretation of data related to diagnosing ophthalmic conditions, vision research, drug trials and evaluation of retinal function; software for use with visual electrophysiology equipment, for interpretation of data related to rodent electroretinography testing for research purposes; visual electrophysiology equipment in the nature of apparatus for testing vision, computers, cameras, monitors, pattern stimulators, amplifiers, Ganzfeld stimulators and Ganzfeld domes for vision research; visual electrophysiology equipment in the nature of apparatus for testing vision, Ganzfeld stimulators, Ganzfeld domes, monitors, amplifiers, control units, carts and stands for use in clinical drug trials; laboratory apparatus and equipment, namely, visual electrophysiology equipment for rodent electroretinography testing for research purposes, and components and peripherals in the nature of rodent platforms, illuminating lamps, electrodes, pattern stimulators, amplifiers, computers and infrared cameras
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 12/31/2001 and first used in commerce at least as early as 12/31/2001 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 009 . The specimen(s) submitted consists of brochure showing Applicant's mark used in connection with Applicant's goods .
"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].
Original PDF file:
SPU0-7311919463-20190603145809777806_._DIAGNOSYSTM4.SPEC.pdf
Converted PDF file(s) ( 2 pages)
Specimen File1
Specimen File2

Applicant hereby adds the following class of goods/services to the application:
New: Class 010 for medical apparatus and equipment, namely, visual electrophysiology equipment for use in diagnosing ophthalmic conditions and evaluation of retinal function, and components and peripherals in the nature of computers, cameras, pattern stimulators, Ganzfeld stimulators, Ganzfeld domes, desktop and operating room mounting arms, amplifiers, cables, connectors, monitors, conductive gels and pastes, light filters, control units and equipment carrying cases, and software for interpreting, storing and exporting data sold as a unit; software for interpreting, storing and exporting data sold as an integral component of medical apparatus and equipment, namely, visual electrophysiology equipment for use in diagnosing ophthalmic conditions and evaluation of retinal function
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 12/31/2001 and first used in commerce at least as early as 12/31/2001 , and is now in use in such commerce.

ADDITIONAL STATEMENTS
Translation
The English translation of ESPION in the mark is SPY.


Miscellaneous Statement
In the outstanding Office Action, the Examining Attorney: (1) noted that she has searched the Office's database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d); (2) indicated that the identification of goods is indefinite and must be clarified, because (a) the identification of software in International Class 10 is indefinite and must be clarified to specify the purpose or function of the software; (b) the wording "peripherals" is indefinite and must be clarified because the nature of the goods is unclear; and (c) the goods "laboratory apparatus and equipment, namely, visual electrophysiology equipment for rodent electroretinography testing for research purposes, and components, peripherals and software therefore" are misclassified in International Class 10, and the goods identified as "visual electrophysiology equipment" that is used for scientific research purposes, such as for use in vision research and drug trials, must be classified in International Class 10; (3) indicated that the application references goods and/or services based on use in commerce in more than one international class; and (4) indicated that applicant must submit an English translation of all wording in the mark that appears to be foreign. In response, Applicant has now amended its identification of the goods and its classification of the goods. On account of the foregoing amendment and the following remarks, Applicant respectfully submits that this application is now in condition for allowance. With respect to Item (1) above, Applicant would like to thank the Examining Attorney for the determination that there are no conflicting marks that would bar registration under Trademark Act Section 2(d). With respect to Items (2) and (3) above, Applicant has now amended its identification of the goods and its classification of the goods so that the identification of the goods and the classification of the goods now read: "Laboratory apparatus and equipment, namely, visual electrophysiology equipment for rodent electroretinography testing for research purposes, and components and peripherals in the nature of rodent platforms, illuminating lamps, electrodes, pattern stimulators, amplifiers, computers and infrared cameras, and software for interpreting, storing and exporting data sold as a unit; software for interpreting, storing and exporting data sold as an integral component of laboratory apparatus and equipment, namely, visual electrophysiology equipment for rodent electroretinography testing for research purposes; software for use with visual electrophysiology equipment, for interpretation of data related to diagnosing ophthalmic conditions, vision research, drug trials and evaluation of retinal function; software for use with visual electrophysiology equipment, for interpretation of data related to rodent electroretinography testing for research purposes; visual electrophysiology equipment in the nature of apparatus for testing vision, computers, cameras, monitors, pattern stimulators, amplifiers, Ganzfeld stimulators and Ganzfeld domes for vision research; visual electrophysiology equipment in the nature of apparatus for testing vision, Ganzfeld stimulators, Ganzfeld domes, monitors, amplifiers, control units, carts and stands for use in clinical drug trials; laboratory apparatus and equipment, namely, visual electrophysiology equipment for rodent electroretinography testing for research purposes, and components and peripherals in the nature of rodent platforms, illuminating lamps, electrodes, pattern stimulators, amplifiers, computers and infrared cameras" in International Class 9; and "medical apparatus and equipment, namely, visual electrophysiology equipment for use in diagnosing ophthalmic conditions and evaluation of retinal function, and components and peripherals in the nature of computers, cameras, pattern stimulators, Ganzfeld stimulators, Ganzfeld domes, desktop and operating room mounting arms, amplifiers, cables, connectors, monitors, conductive gels and pastes, light filters, control units and equipment carrying cases, and software for interpreting, storing and exporting data sold as a unit; software for interpreting, storing and exporting data sold as an integral component of medical apparatus and equipment, namely, visual electrophysiology equipment for use in diagnosing ophthalmic conditions and evaluation of retinal function" in International Class 10. Accordingly, Applicant believes that its amended identification of the goods and classification of the goods complies with the Examining Attorney's requirements and are now in an acceptable form. With respect to Item (4) above, Applicant submits that the English translation of "ESPION" is "SPY". In view of the foregoing, Applicant respectfully submits that this application is in condition for allowance, and reconsideration thereof is respectfully requested. Thank you.


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

SIGNATURE(S)
Declaration Signature
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice.
Response Signature
Signature: /Aisling E. Altidore/     Date: 06/03/2019
Signatory's Name: Aisling E. Altidore
Signatory's Position: Attorney for Applicant

Signatory's Phone Number: 781-290-0060

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: 88059226
RAM Accounting Date: 06/04/2019
        
Serial Number: 88059226
Internet Transmission Date: Mon Jun 03 15:28:00 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2019060315280072
8842-88059226-620a351c85b8c25cb4b3ddda4c
b71ad18c5f4b96935ce61a6f4c16dfaee03a5e3b
-CC-1947-20190603145809777806