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. 88281425 ENDOSCREENER(Standard Characters, see http://uspto.report/TM/88281425/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 010 for medical apparatus and instruments; apparatus for use in medical analysis; testing apparatus for medical purposes; radiology screens for medical purposes; radiotherapy apparatus; radiological purposes; diagnostic apparatus for medical purposes; Medical ultrasound equipment; endoscopy cameras for medical purposes; surgical apparatus and instruments apparatus for medical
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 03/22/2018 and first used in commerce at least as early as 03/22/2018 , and is now in use in such commerce.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ China application number 33175721 filed 08/28/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed: Class 010 for medical apparatus and instruments; apparatus for use in medical analysis; testing apparatus for medical purposes; radiology screens for medical purposes; radiotherapy apparatus; radiological purposes; diagnostic apparatus for medical purposes; Medical ultrasound equipment; endoscopy cameras for medical purposes; surgical apparatus and instruments apparatus for medical
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 03/22/2018 and first used in commerce at least as early as 03/22/2018 , and is now in use in such commerce.
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ China application number 33175721 filed 08/28/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ China registration number 33175721 registered 05/14/2019 with a renewal date of __________ and an expiration date of 05/13/2029 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU0-2076785158-111330947_._EndoScreener_Chinese_registration.pdf
Converted PDF file(s) ( 2 pages)
Foreign Registration-1
Foreign Registration-2

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

The applicant's current attorney information: Brian J. McGinnis. Brian J. McGinnis of BARNES & THORNBURG LLP, is located at

      11 SOUTH MERIDIAN STREET
      INDIANAPOLIS, Indiana 46204-3535
      US
The docket/reference number is 77914-290125.

The phone number is 317-236-1313.

The fax number is 317-231-7433.

The email address is bmcginnis@btlaw.com

The applicants proposed attorney information: Brian J. McGinnis. Brian J. McGinnis of BARNES & THORNBURG LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      11 SOUTH MERIDIAN STREET
      INDIANAPOLIS, Indiana 46204-3535
      United States
The docket/reference number is 77914-290125.

The phone number is 317-236-1313.

The fax number is 317-231-7433.

The email address is bmcginnis@btlaw.com

Brian J. McGinnis 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 J. MCGINNIS. BRIAN J. MCGINNIS of BARNES & THORNBURG LLP, is located at

      11 SOUTH MERIDIAN STREET
      INDIANAPOLIS, Indiana 46204-3535
      US
The docket/reference number is 77914-290125.

The phone number is 317-236-1313.

The fax number is 317-231-7433.

The email address is bmcginnis@btlaw.com; TMINDocket@btlaw.com

The applicants proposed correspondence information: Brian J. McGinnis. Brian J. McGinnis of BARNES & THORNBURG LLP, is located at

      11 SOUTH MERIDIAN STREET
      INDIANAPOLIS, Indiana 46204-3535
      United States
The docket/reference number is 77914-290125.

The phone number is 317-236-1313.

The fax number is 317-231-7433.

The email address is bmcginnis@btlaw.com

ADDITIONAL STATEMENTS
Miscellaneous Statement
In response to the Examining Attorney's request for information, Applicant states that the term "endoscreener," as two words or a compound term, does not have any meaning in the medical field, other than as a trademark for Applicant's goods. It is a fanciful term invented by Applicant.


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: /sharrell/      Date: 09/25/2019
Signatory's Name: Sarah P. Harrell
Signatory's Position: Attorney, Barnes & Thornburg LLP, Indiana bar member
Signatory's Phone Number: 3172361313


Response Signature
Signature: /sharrell/     Date: 09/25/2019
Signatory's Name: Sarah P. Harrell
Signatory's Position: Attorney, Barnes & Thornburg LLP, Indiana bar member

Signatory's Phone Number: 3172361313

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 J. MCGINNIS
   BARNES & THORNBURG LLP
   
   11 SOUTH MERIDIAN STREET
   INDIANAPOLIS, Indiana 46204-3535
Mailing Address:    Brian J. McGinnis
   BARNES & THORNBURG LLP
   11 SOUTH MERIDIAN STREET
   INDIANAPOLIS, Indiana 46204-3535
        
Serial Number: 88281425
Internet Transmission Date: Wed Sep 25 11:21:09 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XXX-2019092511210983
1239-88281425-610a2bf8985164dcff9aad83b1
4b1797967b8e74e48469585183e6afb92728f0-N
/A-N/A-20190925111330947642