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. 88253781 THERACAL PT(Standard Characters, see http://uspto.report/TM/88253781/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 005 for Dental materials, namely, dental pulp capping, lining and restorative materials
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.

In International Class 005, the mark was first used at least as early as 04/26/2019 and first used in commerce at least as early as 04/26/2019 .

Proposed: Class 005 for Dental materials, namely, dental pulp capping, lining and restorative materials
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.

In International Class 005, the mark was first used at least as early as 04/26/2019 . and first used in commerce at least as early as 04/26/2019 .

Applicant hereby submits one(or more) specimen(s) for Class 005 . The specimen(s) submitted consists of A photo of packaging for the relevant goods, that shows the subject trademark. .
"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:
SPU0-121923534-20190830144223112705_._substitutespecimen.pdf
Converted PDF file(s) ( 1 page)
Specimen File1

The applicant's current attorney information: Brian Lum. Brian Lum of ICE MILLER LLP, is located at

      200 W. MADISON ST. STE. 3500
      CHICAGO, Illinois 60606
      US
The docket/reference number is 00684.9214.

The phone number is 312-726-8129.

The fax number is 312-726-6259.

The email address is brian.lum@icemiller.com

The applicants proposed attorney information: Brian Lum. Other appointed attorneys are Alice Kelly, Shyla Jones, Adam Sussman. Brian Lum of ICE MILLER LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      200 W. MADISON ST. STE. 3500
      CHICAGO, Illinois 60606
      United States
The docket/reference number is 00684.9214.

The phone number is 312-726-8129.

The fax number is 312-726-7371.

The email address is brian.lum@icemiller.com

Brian Lum submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: BRIAN LUM. BRIAN LUM of ICE MILLER LLP, is located at

      200 W. MADISON ST. STE. 3500
      CHICAGO, Illinois 60606
      US
The docket/reference number is 00684.9214.

The phone number is 312-726-8129.

The fax number is 312-726-6259.

The email address is brian.lum@icemiller.com; chiipdocket@icemiller.com

The applicants proposed correspondence information: Brian Lum. Brian Lum of ICE MILLER LLP, is located at

      200 W. MADISON ST. STE. 3500
      CHICAGO, Illinois 60606
      United States
The docket/reference number is 00684.9214.

The phone number is 312-726-8129.

The fax number is 312-726-7371.

The email address is brian.lum@icemiller.com; chiipdocket@icemiller.com

ADDITIONAL STATEMENTS
Miscellaneous Statement
The Examiner has objected to the original specimen submitted with the Statement of Use on July 9, 2019, as consisting of a "digitally altered image or mock-up of the mark on the goods or their packaging". Submitted herewith is a substitute specimen comprising a product photo of an actual packaged dispensing syringe of the type shown in the original specimen. The request for additional information is believed to be moot in view of the substitute specimen, which clearly shows how the trademark is used in commerce for the relevant goods and satisfies the requirements for a specimen. Furthermore, Applicant believes that some of the requests for information require the disclosure of confidential business information, such as Applicant's revenues for the relevant products. The disclosure of confidential information in the record is not required. TMEP § 814.


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: /Brian J. Lum/      Date: 08/30/2019
Signatory's Name: Brian J. Lum
Signatory's Position: Attorney of record, Illinois bar member.
Signatory's Phone Number: 312-726-8129


Response Signature
Signature: /Brian J. Lum/     Date: 08/30/2019
Signatory's Name: Brian J. Lum
Signatory's Position: Attorney of record, Illinois bar member.

Signatory's Phone Number: 312-726-8129

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:    BRIAN LUM
   ICE MILLER LLP
   
   200 W. MADISON ST. STE. 3500
   CHICAGO, Illinois 60606
Mailing Address:    Brian Lum
   ICE MILLER LLP
   200 W. MADISON ST. STE. 3500
   CHICAGO, Illinois 60606
        
Serial Number: 88253781
Internet Transmission Date: Fri Aug 30 15:09:55 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20190830150955431
238-88253781-610b28ab53fa5ef735bc63e4b84
9c19543d2fb4127c35b4dd6014b4db1b74648b-N
/A-N/A-20190830144223112705