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. 88206330 BALLAST (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8820633 0/large) has been amended as follows:

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

Likelihood of Confusion Examining attorney is refusing registration based on a likelihood of confusion between applicant?s mark and registrant?s mark (Registration No. 5728745). Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods of the parties. Though there are several factors to consider, examining attorney relies on a 2-prong test when considering any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods. While there are similarities between the compared marks, there is no relatedness of the compared goods (other than the fact that they are related to medicine). The goods associated with the registered mark are implantable devices composed of demineralized bone and the goods associated with the applied-for mark are medical devices for peripheral and neurovascular conditions. In this particular situation it is important to identify who the consumers are. Here, the consumers are more highly sophisticated as to the average lay person consumer. The consumer for the afore-mentioned goods is someone with a medical and scientific background. A doctor or scientist is not going to confuse goods of an osteo nature with goods of a neurological nature ? if so, consumers of said medical and scientific professionals should be concerned. Examining attorney mentions that there are companies that exist that provide implantable devices composed of demineralized bone and also provide medical devices for peripheral and neurovascular conditions, however, this argument is irrelevant because the owners of the marks at issue do not provide dual services. The services provided by companies such as: DePuy, Medtronic and Stryker have nothing to do with the issue at hand, since IsoTis OrthoBiologics, Inc. (owners of the registered mark referenced in the office action) does not provide dual services. It appears that IsoTis OrthoBiologics, Inc. specializes strictly in producing goods of an orthopedic nature, while Balt USA (owner of the applied-for mark) strictly specialized in producing goods of a neurologic nature. Thus, since only 1 of several factors in determining likelihood of confusion may be satisfied per Examing Attorney?s analysis, the applied-for mark should register since any competent and skilled orthopedic professional would unlikely confuse a neuro product for a different product of an osteo nature and a neuro professional would unlikely confuse an osteo product for a different product of a neurological nature.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Balt USA, a limited liability company legally organized under the laws of Delaware, having an address of
      29 Parker
      Irvine, California 92618
      United States
      949-788-1443
      949-788-1444
Proposed: Balt USA, a limited liability company legally organized under the laws of Delaware, having an address of
      29 Parker
      Irvine, California 92618
      United States
      Email Address: XXXX
      949-788-1443
      949-788-1444
Correspondence Information (current):
      Peter J. Gluck
      PRIMARY EMAIL FOR CORRESPONDENCE: peterjgluck@yahoo.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): kmiddleton@ktmlaw.us; laurahulac@yahoo.com
Correspondence Information (proposed):
      Peter J. Gluck
      PRIMARY EMAIL FOR CORRESPONDENCE: peterjgluck@yahoo.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): kmiddleton@ktmlaw.us; laurahulac@yahoo.com

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: /Peter J. Gluck/     Date: 05/11/2020
Signatory's Name: Peter J. Gluck
Signatory's Position: Attorney of record

Signatory's Phone Number: (949) 680-9066

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:    Peter J. Gluck
   PATNSTR, APC
   This is being submitted with a USCIS application f
   31878 DEL OBISPO STREET, SUITE # 118-320
   SAN JUAN CAPISTRANO, California 92675
Mailing Address:    Peter J. Gluck
   PATNSTR, APC
   This is being submitted with a USCIS application f
   31878 DEL OBISPO STREET, SUITE # 118-320
   SAN JUAN CAPISTRANO, California 92675
        
Serial Number: 88206330
Internet Transmission Date: Mon May 11 21:59:03 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20200511215903863
001-88206330-7103fe4deaad5d5e437d7ffe6d7
eceddef36d86a304bce353868d746a98825-N/A-
N/A-20200511214242031660