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. 88202913 PAVMED (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8820291 3/large) has been amended as follows:

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

On October 02, 2019, the Examining Attorney issued an Office Action in connection with Applicant?s U.S. Serial No. 88202913 for the PAVmed mark, and refused registration of the mark on the grounds that the Applicant?s Mark is likely to cause confusion with the mark in U.S. Registration No. 1930109. In response thereto, Applicant is hereby amending it?s identification of goods to read as follows: ?Medical and surgical instruments and apparatus for use in general, cardiovascular, cardiothoracic, neuro, oral, maxillofacial, tissue, otolaryngology, pediatric, plastic, trauma, hand, orthopedic, thoracic, urological and laparoscopic surgeries and interventional procedures; Medical and surgical instruments and apparatus for use in infusion systems, namely, infusion pumps for delivering measured amounts of solutions into the bloodstream over time, none of the foregoing related to use in connection with respiratory procedures or related to respiratory instruments or apparatus? in Class 10. In view of the foregoing amendment, Applicant contends that Applicant?s Mark will not cause confusion with the pre-existing registration. Accordingly, Applicant requests that the Examining Attorney reconsider her position and approve Application Ser. No. 88202913 for the PAVmed mark for publication in the Official Gazette.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 010 for Medical and surgical instruments and apparatus for use in general, cardiovascular, cardiothoracic, neuro, oral, maxillofacial, tissue, otolaryngology, pediatric, plastic, trauma, hand, orthopedic, thoracic, urological and laparoscopic surgeries and interventional procedures; Medical and surgical instruments and apparatus for use in infusion systems, namely, infusion pumps for delivering measured amounts of solutions into the bloodstream over time
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: Medical and surgical instruments and apparatus for use in general, cardiovascular, cardiothoracic, neuro, oral, maxillofacial, tissue, otolaryngology, pediatric, plastic, trauma, hand, orthopedic, thoracic, urological and laparoscopic surgeries and interventional procedures; Medical and surgical instruments and apparatus for use in infusion systems, namely, infusion pumps for delivering measured amounts of solutions into the bloodstream over time; Medical and surgical instruments and apparatus for use in infusion systems, namely, infusion pumps for delivering measured amounts of solutions into the bloodstream over time, none of the foregoing related to use in connection with respiratory procedures or related to respiratory instruments or apparatus.Class 010 for Medical and surgical instruments and apparatus for use in general, cardiovascular, cardiothoracic, neuro, oral, maxillofacial, tissue, otolaryngology, pediatric, plastic, trauma, hand, orthopedic, thoracic, urological and laparoscopic surgeries and interventional procedures; Medical and surgical instruments and apparatus for use in infusion systems, namely, infusion pumps for delivering measured amounts of solutions into the bloodstream over time, none of the foregoing related to use in connection with respiratory procedures or related to respiratory instruments or apparatus.
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.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: PAVmed Inc., a corporation of Delaware, having an address of
      One Grand Central Place, Suite 4600
      New York, New York 10165
      United States

Proposed: PAVmed Inc., a corporation of Delaware, having an address of
      One Grand Central Place, Suite 4600
      New York, New York 10165
      United States
      Email Address: XXXX
Correspondence Information (current):
      Chinh H. Pham
      PRIMARY EMAIL FOR CORRESPONDENCE: gtipmail@gtlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): phamc@gtlaw.com; linkerg@gtlaw.com

The docket/reference number is 155848-03070.
Correspondence Information (proposed):
      Chinh H. Pham
      PRIMARY EMAIL FOR CORRESPONDENCE: gtipmail@gtlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): phamc@gtlaw.com; linkerg@gtlaw.com

The docket/reference number is 155848-03070.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /Chinh H. Pham/     Date: 03/26/2020
Signatory's Name: Chinh H. Pham
Signatory's Position: Attorney of Record, MA Bar Member

Signatory's Phone Number: 6173106224

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:    Chinh H. Pham
   GREENBERG TRAURIG, LLP
   
   ONE INTERNATIONAL PLACE, SUITE 2000
   BOSTON, Massachusetts 02110
Mailing Address:    Chinh H. Pham
   GREENBERG TRAURIG, LLP
   ONE INTERNATIONAL PLACE, SUITE 2000
   BOSTON, Massachusetts 02110
        
Serial Number: 88202913
Internet Transmission Date: Thu Mar 26 13:01:36 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-202003261301365
60253-88202913-710c79f14c653c5d2a59d5c92
0209125e989849397d834356f2f52b79e8135149
-N/A-N/A-20200326125833332619