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. 88350864 IO CRYO ABLATION (Stylized and/or with Design, see http://uspto.report/TM/88350864/mark.png) has been amended as follows:

EVIDENCE
Evidence in the nature of Office Action Response has been attached.
Original PDF file:
evi_1732271929-20191115170218132745_._2019-11-15_Office_Action_Response_-_RJENK67.049TUS.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 010 for Surgical and medical apparatus and instruments; Apparatus for use in medical analysis; Apparatus for the treatment of cancer; Apparatus for the ablation of tissues; Cancer diagnosis apparatus; Surgical, medical and medical diagnostic devices, apparatus and instruments for use in cryoablation; Surgical, medical and medical diagnostic devices, apparatus and instruments for use in ablating tissues; Medical devices for performing cryotherapy; Medical devices for performing microwave ablation; Medical devices for performing radiofrequency ablation; Medical devices for freezing tumours; Minimally invasive surgical devices for treating cancerous and benign tissues; Minimally invasive surgical devices for ablating tissues; Medical devices for delivering heat to the tip of a needle; Cryoablation needles; Microwave ablation needles; radiofrequency ablation needles; Cryoablation needles for medical purposes; Microwave ablation medical apparatus; Radiofrequency ablation medical apparatus; Medical devices and medical electronic systems for the analysis of tumours; Medical devices and medical electronic systems for the analysis of tissues; Tissue ablation medical apparatus for use with microwave treatments; Tissue ablation medical apparatus for use with radiofrequency treatments; Medical apparatus consisting of treatment probes and high pressure valves used for heat or freeze treatment and component parts thereof; Integrated medical diagnostic systems to predict ice ball propagation and isotherms within a tissue for medical diagnosis and component parts thereof; Integrated medical diagnostic systems to give location of given needles for medical diagnosis and component parts thereof; Integrated medical treatment systems for use in any cryoablation medical procedure and comprised of medical devices, a gas supply unit, cryoablation needles and thermal sensors being component parts thereof; Integrated medical treatment systems comprising medical devices and a cryoablation unit to predict ice ball propagation and isotherm for cryoablation medical procedures and component parts thereof; Integrated medical treatment systems comprising medical devices and a cryoablation unit for delivering cold temperatures to tissues for medical purposes and component parts thereof; Integrated medical treatment systems comprising medical devices and a cryoablation unit for delivering microwaves to tissues for medical purposes and component parts thereof; Stands and trolleys for use with medical devices; Mobile and portable stands and trolleys for medical devices; Mobile stands and trolleys for medical devices for performing cryotherapy; Mobile stands and trolleys for medical devices for performing microwave ablation; Mobile stands and trolleys for medical devices for performing radiofrequency ablation; Parts and fittings for all the aforesaid goods
Original Filing Basis:
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[ Great Britain application number 3347076 filed 10/19/2018]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Great Britain registration number 3347076 registered 10/19/2018 with a renewal date of __________ and an expiration date of 10/19/2028 ], 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.

Proposed:
Tracked Text Description: Surgical and medical apparatus and instruments; Apparatus for the treatment of cancer; Apparatus for use in medical analysis; surgical and medical apparatus for the ablation of tissues; medical apparatus and instrument for diagnostic use, namely, apparatus for medical diagnostic testing in the fields of cancer; Apparatus for the ablation of tissues; Surgical, medical and medical diagnostic devices, apparatus and instruments for use in cryoablation; Cancer diagnosis apparatus; Surgical, medical and medical diagnostic devices, apparatus and instruments for use in ablating tissues; Medical devices for performing cryotherapy; Medical devices for performing microwave ablation; Medical devices for performing radiofrequency ablation; Medical devices for freezing tumours; Minimally invasive surgical devices for treating cancerous and benign tissues; Minimally invasive surgical devices for ablating tissues; Medical devices for delivering heat to the tip of a needle; Needles for medical purposes, namely, cryoablation needles; Needles for medical purposes, namely, microwave ablation needles; Cryoablation needles; Needles for medical purposes, namely, radiofrequency ablation needles; Microwave ablation needles; Cryoablation needles for medical purposes; radiofrequency ablation needles; Microwave ablation medical apparatus; Radiofrequency ablation medical apparatus; Medical devices and medical electronic systems for the analysis of tumours; Medical devices and medical electronic systems for the analysis of tissues; Tissue ablation medical apparatus for use with microwave treatments; Tissue ablation medical apparatus for use with radiofrequency treatments; Medical apparatus consisting of treatment probes and high pressure valves used for heat or freeze treatment and component parts thereof; Medical apparatus, namely, integrated medical diagnostic systems to predict ice ball propagation and isotherms within a tissue for medical diagnosis and component parts thereof; Medical apparatus, namely, integrated medical diagnostic systems to give location of given needles for medical diagnosis and component parts thereof; Integrated medical diagnostic systems to predict ice ball propagation and isotherms within a tissue for medical diagnosis and component parts thereof; Medical apparatus, namely, integrated medical treatment systems for use in any cryoablation medical procedure and comprised of medical devices, a gas supply unit, cryoablation needles and thermal sensors being component parts thereof; Integrated medical diagnostic systems to give location of given needles for medical diagnosis and component parts thereof; Medical apparatus, namely, integrated medical treatment systems comprising medical devices and a cryoablation unit to predict ice ball propagation and isotherm for cryoablation medical procedures and component parts thereof; Integrated medical treatment systems for use in any cryoablation medical procedure and comprised of medical devices, a gas supply unit, cryoablation needles and thermal sensors being component parts thereof; Medical apparatus, namely, integrated medical treatment systems comprising medical devices and a cryoablation unit for delivering cold temperatures to tissues for medical purposes and component parts thereof; Integrated medical treatment systems comprising medical devices and a cryoablation unit to predict ice ball propagation and isotherm for cryoablation medical procedures and component parts thereof; Medical apparatus, namely, integrated medical treatment systems comprising medical devices and a cryoablation unit for delivering microwaves to tissues for medical purposes and component parts thereof; Integrated medical treatment systems comprising medical devices and a cryoablation unit for delivering cold temperatures to tissues for medical purposes and component parts thereof; Stands and trolleys for use with medical devices; Integrated medical treatment systems comprising medical devices and a cryoablation unit for delivering microwaves to tissues for medical purposes and component parts thereof; Mobile and portable stands and trolleys for medical devices; Mobile stands and trolleys for medical devices for performing cryotherapy; Mobile stands and trolleys for medical devices for performing microwave ablation; Mobile stands and trolleys for medical devices for performing radiofrequency ablation; Parts and fittings for all the aforesaid goodsClass 010 for Apparatus for the treatment of cancer; surgical and medical apparatus for the ablation of tissues; medical apparatus and instrument for diagnostic use, namely, apparatus for medical diagnostic testing in the fields of cancer; Surgical, medical and medical diagnostic devices, apparatus and instruments for use in cryoablation; Surgical, medical and medical diagnostic devices, apparatus and instruments for use in ablating tissues; Medical devices for performing cryotherapy; Medical devices for performing microwave ablation; Medical devices for performing radiofrequency ablation; Medical devices for freezing tumours; Minimally invasive surgical devices for treating cancerous and benign tissues; Minimally invasive surgical devices for ablating tissues; Medical devices for delivering heat to the tip of a needle; Needles for medical purposes, namely, cryoablation needles; Needles for medical purposes, namely, microwave ablation needles; Needles for medical purposes, namely, radiofrequency ablation needles; Cryoablation needles for medical purposes; Microwave ablation medical apparatus; Radiofrequency ablation medical apparatus; Medical devices and medical electronic systems for the analysis of tumours; Medical devices and medical electronic systems for the analysis of tissues; Tissue ablation medical apparatus for use with microwave treatments; Tissue ablation medical apparatus for use with radiofrequency treatments; Medical apparatus consisting of treatment probes and high pressure valves used for heat or freeze treatment and component parts thereof; Medical apparatus, namely, integrated medical diagnostic systems to predict ice ball propagation and isotherms within a tissue for medical diagnosis and component parts thereof; Medical apparatus, namely, integrated medical diagnostic systems to give location of given needles for medical diagnosis and component parts thereof; Medical apparatus, namely, integrated medical treatment systems for use in any cryoablation medical procedure and comprised of medical devices, a gas supply unit, cryoablation needles and thermal sensors being component parts thereof; Medical apparatus, namely, integrated medical treatment systems comprising medical devices and a cryoablation unit to predict ice ball propagation and isotherm for cryoablation medical procedures and component parts thereof; Medical apparatus, namely, integrated medical treatment systems comprising medical devices and a cryoablation unit for delivering cold temperatures to tissues for medical purposes and component parts thereof; Medical apparatus, namely, integrated medical treatment systems comprising medical devices and a cryoablation unit for delivering microwaves to tissues for medical purposes and component parts thereof; Stands and trolleys for use with medical devices; Mobile and portable stands and trolleys for medical devices; Mobile stands and trolleys for medical devices for performing cryotherapy; Mobile stands and trolleys for medical devices for performing microwave ablation; Mobile stands and trolleys for medical devices for performing radiofrequency ablation; Parts and fittings for all the aforesaid goods
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 [ Great Britain application number 3347076 filed 10/19/2018]. 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 [ Great Britain registration number 3347076 registered 10/19/2018 with a renewal date of __________ and an expiration date of 10/19/2028 ], and translation thereof, if appropriate, before the application may proceed to registration. 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.

The applicant's current attorney information: Jonathan A. Hyman. Jonathan A. Hyman of KNOBBE, MARTENS, OLSON & BEAR, LLP, is located at

      2040 MAIN STREET, 14TH FLOOR
      IRVINE, California 92614
      US
The docket/reference number is RJENK67.049T.

The phone number is 310-551-3450.

The fax number is 949-760-9502.

The email address is efiling@knobbe.com

The applicants proposed attorney information: Jonathan A. Hyman. Other appointed attorneys are John B. Sganga, Jr., Edward A. Schlatter, Gerard von Hoffmann, Joseph R. Re, Catherine J. Holland, John M. Carson, Karen Vogel Weil, Jeffrey L. Van Hoosear, Daniel E. Altman, Lynda J. Zadra-Symes, William H. Shreve, Stephen C. Jensen, Steven J. Nataupsky, Paul A. Stewart, Joseph F. Jennings, Craig S. Summers, Diane M. Reed, Ronald J. Schoenbaum, John R. King, Adeel S. Akhtar, David N. Weiss, Douglas G. Muehlhauser, Lori Lee Yamato, Michael K. Friedland, Stacey R. Halpern, Mark M. Abumeri, Jon W. Gurka, Joseph M. Reisman, Michael L. Fuller, Paul N. Conover, Robert J. Roby, Sabing H. Lee, Karoline A. Delaney, Joseph S. Cianfrani, William R. Zimmerman, Eric S. Furman, Susan M. Natland, Rose M. Thiessen, Michael A. Guiliana, Rabinder N. Narula, Bruce S. Itchkawitz, John M. Grover, Irfan A. Lateef, Amy Christensen Chun, Mark J. Gallagher, David G. Jankowski, Brian C. Horne, Payson LeMeilleur, Sheila N. Swaroop, Benjamin A. Katzenellenbogen, Andrew N. Merickel, Thomas P. Krzeminski, Linda H. Liu, James F. Herkenhoff, Andrew M. Douglas, Salima A. Merani, Jonathan A. Hyman, Curtiss C. Dosier, Joseph J. Mallon, Sean M. Murray, Christy G. Lea, Perry D. Oldham, Russell M. Jeide, Zi Y. Wong, Matthew S. Bellinger, Mincheol Kim, Gregory A. Hermanson, Lauren Keller Katzenellenbogen, Ted M. Cannon, Carol Pitzel Cruz, Josué A. Villalta, Andrew I. Kimmel, Brenden Gingrich, Maria Culic Anderson, Melanie J. Seelig, Mauricio A. Uribe, Curtis R. Huffmire, Christopher L. Ross, Eli A. Loots, Ryan E. Melnick, Yanna S. Bouris, Philip M. Nelson, Marko R. Zoretic, Kerry S. Taylor, Derek C. Dailey, Jarom D. Kesler, Steven P. Ruden, Colin B. Heideman, Theodore G. Papagiannis, Nicholas M. Zovko, Adam J. Gilbert, Kimberly J. Miller, Bryan W. Wahl, Thomas Y. Yee, Agnes Juang, Jason J. Jardine, Jared C. Bunker, Lance D. Smemoe, Joshua J. Stowell, Jonathan E. Bachand, Ali S. Razai, Terry K. Tullis, Derek R. Bayles, Cheryl T. Burgess, Gregory B. Phillips, Brian C. Claassen, Mark Lezama, Sean Ambrosius, Stephen W. Larson, John L. Paik, Bridget O'L. Smith, Michael R. Christensen, Benjamin J. Everton, Jason A. Gersting, Baraa Kahf, Alan G. Laquer, Vlad Teplitskiy, Jeffery L. Hallstrom, Maria V. Stout, William O. Adams, Ian W. Gillies, Andrew W. Lloyd, Mark D. Kachner, Lincoln S. Essig, David R. Trossen, Aaron M. Davis, Jason R. Swartz, Benjamin B. Anger, Jason A. Champion, Daniel V. Gibson, Jeremy J. Carney, Karen M. Cassidy, Adam B. Powell, Karen J. Lenker, Bryan G. McWhorter, Nathanael R. Luman, Andrea L. Cheek, Damien J. Howard, Jane Q. Dai, Shannon Lam, Peter Law, Mark Metzke, Scott G. Siera, Jacob Peterson, Christie R.W. Matthaei, Vladimir S. Lozan, Paul S. Stellman, Heungsoo Choi, Nicole Rossi Townes, Vikas Bhargava, Daniel J. Fischer, Jeremy A. Anapol, Scott A. Cromar, Kendall M. Loebbaka, David R. Schmidt, Harnik Shukla, Charlene A. Azema, Morgan R. Coates, Jessica L. Achtsam, Jonathan A. Menkes, Rosaleen H. Chou, Deborah S. Shepherd, Mark D. Marsden, Joan Y. Chan, Loni L. Morrow, Kyu S. Min, Chang Sik Lim, Thomas S.H. Cowan, Devanie A. DuFour, Alexander J. Martinez, Hans L. Mayer, Jessica C. Sganga, Nicholas A. Belair, Ryan S. Furtado, Angela K. Dremann, Justin J. Gillett, M. Scott Forbes, Brian M. Graham, Brian J. Flynn, Mitchell B. Hadley, Qi Peter Tong, Elenore Niu, Michael P. Burns, David M. Cohen, Mark E. Davis, Jordan Gottdank, Kim A. Kennedy, Daniel C. Kiang, Keith M. Lim, Ashley C. Morales, Nathan D. Reeves, Brandon G. Smith, Xiaoyan Sabrina Wang, Jun Hyuk (Zach) Hong, Jordan M. Cox, Albert J. Sueiras, Mark Rubinshtein, David J. Grant, Clayton R. Henson, Daniel A. Kamkar, Lesley Y. Kim, Nathan J. Lee, Josepher Li, Jacob R. Rosenbaum, James F. Smith, Douglas B. Wentzel, Aryeh N. Feinstein, Noorean I. Gill, Aaron S. Johnson, Bryan J. Johnson, Chanell Khosrowabadi, Lindsay A. Laddaran, Janet M. Allendorph, Alexander Zeng, Sean S. Kim, Benjamin Ho, Adam R. Aquino, Samuel I. Cockriel, Serah R. Friedman, Bita Kianian, Eric R. Malmgren, Brian M.Z. Reece, Derk A. Westermeyer, Suyoung Jang, Show Xiaoyu Wang, Justin E. Culbertson, Andrew E. Morrell, Victoria E. Ellis, Yasmin L. Amin-Reimer, Kendrick S. Hsu, Catherine R. Gourash, Marissa M. Rosenbaum, David C. O'Hair, Jeremiah S. Helm, Hironori Kubota, Kregg A. Koch, Arsen Kourinian, Andrew D. Lee, Yusuke Hirai, and Sunyong Tang. Jonathan A. Hyman of KNOBBE, MARTENS, OLSON & BEAR, 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

      2040 MAIN STREET, 14TH FLOOR
      IRVINE, California 92614
      United States
The docket/reference number is RJENK67.049T.

The phone number is 310-551-3450.

The fax number is 949-760-9502.

The email address is efiling@knobbe.com

Jonathan A. Hyman 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: JONATHAN A. HYMAN. JONATHAN A. HYMAN of KNOBBE, MARTENS, OLSON & BEAR, LLP, is located at

      2040 MAIN STREET, 14TH FLOOR
      IRVINE, California 92614
      US
The docket/reference number is RJENK67.049T.

The phone number is 310-551-3450.

The fax number is 949-760-9502.

The email address is efiling@knobbe.com; jonathan.hyman@knobbe.com

The applicants proposed correspondence information: Jonathan A. Hyman. Jonathan A. Hyman of KNOBBE, MARTENS, OLSON & BEAR, LLP, is located at

      2040 MAIN STREET, 14TH FLOOR
      IRVINE, California 92614
      United States
The docket/reference number is RJENK67.049T.

The phone number is 310-551-3450.

The fax number is 949-760-9502.

The email address is efiling@knobbe.com; jonathan.hyman@knobbe.com

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use CRYOABLATION apart from the mark as shown.


SIGNATURE(S)
Response Signature
Signature: /jhh/     Date: 11/15/2019
Signatory's Name: Jonathan A. Hyman
Signatory's Position: Attorney of Record, California bar member

Signatory's Phone Number: 310-551-3450

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:    JONATHAN A. HYMAN
   KNOBBE, MARTENS, OLSON & BEAR, LLP
   
   2040 MAIN STREET, 14TH FLOOR
   IRVINE, California 92614
Mailing Address:    Jonathan A. Hyman
   KNOBBE, MARTENS, OLSON & BEAR, LLP
   2040 MAIN STREET, 14TH FLOOR
   IRVINE, California 92614
        
Serial Number: 88350864
Internet Transmission Date: Fri Nov 15 17:26:29 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XX-2019111517262983
2083-88350864-700eae8f15ed56f12986b9b6f6
3ea4ec43c2c3fe4ce9449bb4ed7574d3f2a44f-N
/A-N/A-20191115170218132745