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. 88264209 TRACLUX(Standard Characters, see http://uspto.report/TM/88264209/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 010 for Surgical retractors
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 010, the mark was first used at least as early as 00/00/2016 and first used in commerce at least as early as 00/00/2016.


Proposed:
Class 010 for Surgical retractors

Deleted Filing Basis: 1(b)
In International Class 010, the mark was first used at least as early as 00/00/2016 . and first used in commerce at least as early as 00/00/2016 .

Applicant hereby submits one(or more) specimen(s) for Class 010. The specimen(s) submitted consists of scanned copy of a printed instruction manual included with the goods and functioning as a part of the goods pursuant to TMEP 904.03(j) and scanned copies of adhesively backed labels bearing the mark, which labels are attached to packaging for the goods.
"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].
JPG file(s):Specimen File1Specimen File2Specimen File3
Original PDF file:
SPU0-184016525-2020032313 3129391667_._032020_TracL ux_Sub_Spec.pdf
Converted PDF file(s) ( 6 pages) Specimen File1Specimen File2Specimen File3Specimen File4Specimen File5Specimen File6

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: SUNOPTIC TECHNOLOGIES, LLC, a limited liability company legally organized under the laws of Florida, having an address of
      6018 BOWENDALE AVE.
      JACKSONVILLE, Florida 32216
      United States

Proposed: SUNOPTIC TECHNOLOGIES, LLC, a limited liability company legally organized under the laws of Florida, having an address of
      6018 BOWENDALE AVE.
      JACKSONVILLE, Florida 32216
      United States
      Email Address: XXXX

ADDITIONAL STATEMENTS
Miscellaneous Statement
The examining attorney has refused the specimen submitted with the Statement of Use as filed. Accordingly, applicant is submitting herewith substitute specimens comprising an instruction manual that is included with the goods and that explains the assembly and use of the goods, and a set of adhesively backed labels that are applied to the goods. The examining attorney has also requested additional information/documentation about the specimens, which applicant hereby provides in the correspondingly numbered responses, which follow: (1) The goods comprise a surgical retractor as illustrated and described in the instruction manual submitted herewith. The substitute labels submitted herewith specifically refer to individual components of the surgical retractor, namely the interchangeable blade and the handle. (2) The specimens were not created for submission with this application, but have been and continue to be in use in commerce. (3) The goods are sold to professional customers in the healthcare field including hospitals, surgical centers, surgeons, physicians and other health care professionals. The goods are sold by distributors and sales representatives and the goods are typically shipped to buyers. The goods are advertised, but not sold online. The goods are not sold at retail locations. (4) The goods are shipped to buyers bearing labels and accompanied by instruction manuals as attached hereto and as further evidenced by the representative invoices submitted herewith. (5) The goods were first available for sale and shipped in commerce in 2016. Please see the attached invoices. (6) The total dollar amount in sales of the goods in commerce is $903,655.00. Representative invoices, with buyer information redacted is attached hereto.

Original PDF file:
mis-1-184016525-202003231 33129391667_._032320_Trac Lux_Invoices.pdf
Converted PDF file(s) ( 3 pages) Miscellaneous File1Miscellaneous File2Miscellaneous File3
Correspondence Information (current):
      WILLIAM E NOONAN
      PRIMARY EMAIL FOR CORRESPONDENCE: noonanatty@centurylink.net
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): noonanattysec@centurylink.net

The docket/reference number is JMD226.
Correspondence Information (proposed):
      William E Noonan
      PRIMARY EMAIL FOR CORRESPONDENCE: noonanatty@centurylink.net
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): noonanattysec@centurylink.net

The docket/reference number is JMD226.

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)
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: /William E. Noonan/      Date: 03/23/2020
Signatory's Name: William E. Noonan
Signatory's Position: Attorney of record, Florida bar member
Signatory's Phone Number: 2394810900


Response Signature
Signature: /William E. Noonan/     Date: 03/23/2020
Signatory's Name: William E. Noonan
Signatory's Position: Attorney of record, Florida bar member

Signatory's Phone Number: 2394810900

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:    WILLIAM E NOONAN
   WILLIAM E. NOONAN, ATTORNEY AT LAW
   
   POB 07338
   FORT MYERS, Florida 33919
Mailing Address:    William E Noonan
   WILLIAM E. NOONAN, ATTORNEY AT LAW
   POB 07338
   FORT MYERS, Florida 33919
        
Serial Number: 88264209
Internet Transmission Date: Mon Mar 23 14:35:59 ET 2020
TEAS Stamp: USPTO/ROA-XXX.X.XXX.XX-20200323143559018
134-88264209-710436447e0dfe5e3f0a7a84fa2
caf9bef5b760ab7496ed4bc1f9902a3260aae8c-
N/A-N/A-20200323133129391667