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)

---

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. 88206818 CANADY SMART OR STEALTH(Standard Characters, see http://uspto.report/TM/88206818/mark.png) has been amended as follows:

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

With respect to the likelihood of confusion rejection, U.S. Medical Innovations LLC, which is the owner of Registration No. 3,999,419 for "CANADY PLASMA" is a subsidiary of US Patent Innovations, LLC. US Medical Innovations is the distributor for U.S. Patent Innovations products. Canady Robotics (owner of application number 85036211) is a subsidiary of U.S. Patent Innovations, LLC.

EVIDENCE
Evidence in the nature of excerpt from website outlining Applicant's family of companies has been attached.
Original PDF file:
evi_1736925560-20190729141220803937_._Family_of_Companies_-_US_Medical_Innovations.pdf
Converted PDF file(s) ( 2 pages)
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 010 for medical and surgical apparatus and instruments for use in general surgery, namely, electrosurgical generators, inert gas supply units, probes, electrodes, and handpieces for robotic electrosurgery; medical devices, namely, flexible probes, in particular endoscopic and bronchoscopic probes for robotic electrosurgery; surgical instruments being computerized surgical manipulation systems; surgical instruments being disposable tools for surgical manipulation systems, namely, cutters, clamps, elevators, gouges, knives, electrosurgical instruments, electrocautery instruments, laser instruments, ultrasound instruments, scrub and biopsy brushes, clip appliers and clips, tack appliers and tacks, applicators, ligature carriers, needle holders, clamps, hemostats, graspers, curettes, instrument guides, ligature passing and knotting instruments, needles, scalpels, retractors, snares, stylets, forceps, dissectors, calipers, scissors, suction and irrigation probes, saws, retainers, suturing apparatus, chisels and contractors, files, pliers, hammers, rasps, spatulas, and strippers; endoscopes
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: medical and surgical apparatus and instruments for use in general surgery, namely, electrosurgical generators, inert gas supply units, probes, electrodes, and handpieces for robotic electrosurgery; medical devices, namely, flexible probes, in particular endoscopic and bronchoscopic probes for robotic electrosurgery; surgical instruments being computerized surgical manipulation systems; surgical instruments being computerized surgical manipulation systems comprised of surgeon's console, master control, and immersive video display; surgical instruments being disposable tools for surgical manipulation systems, namely, cutters, clamps, elevators, gouges, knives, electrosurgical instruments, electrocautery instruments, laser instruments, ultrasound instruments, scrub and biopsy brushes, clip appliers and clips, tack appliers and tacks, applicators, ligature carriers, needle holders, clamps, hemostats, graspers, curettes, instrument guides, ligature passing and knotting instruments, needles, scalpels, retractors, snares, stylets, forceps, dissectors, calipers, scissors, suction and irrigation probes, saws, retainers, suturing apparatus, chisels and contractors, files, pliers, hammers, rasps, spatulas, and strippers; surgical instruments being disposable tools for surgical manipulation systems, namely, cutters, elevators, gouges, knives, electrosurgical instruments, electrocautery instruments, laser instruments, ultrasound instruments, scrub and biopsy brushes, clip appliers and clips, tack appliers and tacks, applicators, ligature carriers, needle holders, clamps, hemostats, graspers, curettes, instrument guides, ligature passing and knotting instruments, needles, scalpels, retractors, snares, stylets, forceps, dissectors, calipers, scissors, suction and irrigation probes, saws, retainers, suturing apparatus, chisels and contractors, files, pliers, hammers, rasps, spatulas, and strippers; endoscopes; medical endoscopesClass 010 for medical and surgical apparatus and instruments for use in general surgery, namely, electrosurgical generators, inert gas supply units, probes, electrodes, and handpieces for robotic electrosurgery; medical devices, namely, flexible probes, in particular endoscopic and bronchoscopic probes for robotic electrosurgery; surgical instruments being computerized surgical manipulation systems comprised of surgeon's console, master control, and immersive video display; surgical instruments being disposable tools for surgical manipulation systems, namely, cutters, elevators, gouges, knives, electrosurgical instruments, electrocautery instruments, laser instruments, ultrasound instruments, scrub and biopsy brushes, clip appliers and clips, tack appliers and tacks, applicators, ligature carriers, needle holders, clamps, hemostats, graspers, curettes, instrument guides, ligature passing and knotting instruments, needles, scalpels, retractors, snares, stylets, forceps, dissectors, calipers, scissors, suction and irrigation probes, saws, retainers, suturing apparatus, chisels and contractors, files, pliers, hammers, rasps, spatulas, and strippers; medical endoscopes
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.

SIGNATURE(S)
Response Signature
Signature: /TimothyRDeWitt/     Date: 07/29/2019
Signatory's Name: Timothy R DeWitt
Signatory's Position: Attorney of record, VA Bar Member

Signatory's Phone Number: 4102122539

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.

        
Serial Number: 88206818
Internet Transmission Date: Mon Jul 29 14:28:05 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XX-2019072914280570
1651-88206818-6206fea6ec47e56b1d4b215a5e
bbcc98695e52f832f6e06bdd989e54d37f9ccf-N
/A-N/A-20190729141220803937