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. 88185365 TRUSIGNAL(Standard Characters, see http://uspto.report/TM/88185365/mark.png) has been amended as follows:

EVIDENCE
Evidence in the nature of This responds to the Office Action dated Feb. 16, 2019. The Examiner has refused registration on the grounds that the mark is likely to be confused with SN 2976761 (TRUSIGNAL for pulse oximetry apparatus) and SN 4978448 (TRUSIGNAL for computer hardware). It is respectfully submitted that the marks are not likely to be confused -- in light of their completely unrelated nature and completely different markets. Given that these marks and these respective goods will likely never be encountered by the same consumers, there in fact is no possibility, much less a likelihood, that the marks will be confused. Moreover, even the fact of the coexistence of the two cited registrations is strong evidence that the public is able to encounter more than one TRUSIGNAL mark, and not be confused between them. It is also strong evidence that the Registrants themselves allow this peaceful coexistence, without considering it likely to cause confusion. Attached is Applicant's web page showing the goods as promoted to the amputees. Under the du Pont test for likelihood of confusion, the degree of relatedness between the services plays an important role in whether the marks are likely to cause confusion. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Here, the goods are strictly incorporated in prosthetic devices, As shown on the attached copies of Applicant's web page, the TruSignal goods are a featured component of Applicant's prosthetic limb-which are purchased and worn by amputees. In contrast, the cited goods are, respectively, a pulse oximetry apparatus, and computer hardware. These cited goods would never be marketed to the amputee/prosthetic limb market, nor would a prostheticist encounter the goods of the cited registrants. To underscore the specific and narrow market of Applicant's goods as relating strictly to prosthetic limbs, Applicant has amended its description of goods to expressly state so. Specifically Applicant has added "for use in connection with prosthetic devices" to the ID of goods. It is respectfully submitted that the Examiner has failed to establish that there is any overlap in the respective goods or markets, or that there is even a remote possibility of confusion, now underscored by the additional language in the ID of the goods. In view thereof, it is respectfully submitted that the 2(d) refusal is not well based, and should be withdrawn. has been attached. Evidence-1
Evidence-2

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for electrode technology for transmitting and filtering electronic impulses
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.

Proposed:
Tracked Text Description: electrode technology for transmitting and filtering electronic impulses; electrode technology for transmitting and filtering electronic impulses for use in connection with prosthetic devices.Class 009 for electrode technology for transmitting and filtering electronic impulses for use in connection with prosthetic devices.
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.

The applicant's current attorney information: Julie A. Greenberg. Julie A. Greenberg of Fishman Stewart PLLC, is located at

      39533 Woodward Ave., Ste. 140
      Bloomfield Hills, Michigan 48304
      US
The docket/reference number is 67725-0062.

The phone number is 248-593-3350.

The fax number is 248-594-0610.

The email address is tmdocketing@fishstewip.com

The applicants proposed attorney information: Julie A. Greenberg. Julie A. Greenberg of Fishman Stewart PLLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      39533 Woodward Ave., Ste. 140
      Bloomfield Hills, Michigan 48304
      United States
The docket/reference number is 67725-0062.

The phone number is 248-593-3350.

The fax number is 248-594-0610.

The email address is tmdocketing@fishstewip.com

Julie A. Greenberg submitted the following statement: I attest that I am an attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory).
The applicant's current correspondence information: Julie A. Greenberg. Julie A. Greenberg of Fishman Stewart PLLC, is located at

      39533 Woodward Ave., Ste. 140
      Bloomfield Hills, Michigan 48304
      US
The docket/reference number is 67725-0062.

The phone number is 248-593-3350.

The fax number is 248-594-0610.

The email address is tmdocketing@fishstewip.com; jgreenberg@fishstewip.com

The applicants proposed correspondence information: Julie A. Greenberg. Julie A. Greenberg of Fishman Stewart PLLC, is located at

      39533 Woodward Ave., Ste. 140
      Bloomfield Hills, Michigan 48304
      United States
The docket/reference number is 67725-0062.

The phone number is 248-593-3350.

The fax number is 248-594-0610.

The email address is tmdocketing@fishstewip.com; jgreenberg@fishstewip.com

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: /JAG/      Date: 08/16/2019
Signatory's Name: Julie A. Greenberg
Signatory's Position: Attorney of Record, Member Mich. Bar
Signatory's Phone Number: 248.593.3350


Response Signature
Signature: /JAG/     Date: 08/16/2019
Signatory's Name: Julie A. Greenberg
Signatory's Position: Attorney of Record, Member Mich. Bar

Signatory's Phone Number: 248.593.3350

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); 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.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    Julie A. Greenberg
   Fishman Stewart PLLC
   
   39533 Woodward Ave., Ste. 140
   Bloomfield Hills, Michigan 48304
Mailing Address:    Julie A. Greenberg
   Fishman Stewart PLLC
   39533 Woodward Ave., Ste. 140
   Bloomfield Hills, Michigan 48304
        
Serial Number: 88185365
Internet Transmission Date: Fri Aug 16 20:04:42 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XX-20190816200442256
322-88185365-610acf7191fef51345944cb27ff
23cdc932f49c7a160a2e2265bc9ca7517707b-N/
A-N/A-20190816175117277609