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
The table below presents the data as entered.
Input Field
|
Entered
|
| SERIAL NUMBER |
88403908 |
| LAW OFFICE ASSIGNED |
LAW OFFICE 127 |
| MARK SECTION |
| MARK |
http://uspto.report/TM/88403908/mark.png |
| LITERAL ELEMENT |
ACCELERATING BREAKTHROUGHS |
| STANDARD CHARACTERS |
YES |
| USPTO-GENERATED IMAGE |
YES |
| MARK STATEMENT |
The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) |
|
In response to the July 9 office action, Applicant requests amendment of the description of goods as follows:
Computer hardware and software for use in diagnosing or treating neurological diseases and conditions affecting the brain and nervous system; downloadable computer
software for use in diagnosing or treating neurological diseases and conditions affecting the brain and nervous system
As the amended description makes clear, the software and hardware are not necessarily sold as a unit. Thus, the specimen of use, which clearly shows use of the mark with software,
should be acceptable.
Applicant respectfully requests that the Examining Attorney withdraw the refusal and approve the application for publication.
|
| GOODS AND/OR SERVICES SECTION (current) |
| INTERNATIONAL CLASS |
009 |
| DESCRIPTION |
| Computer hardware and software for use in diagnosing or treating neurological diseases and conditions affecting the brain and nervous
system |
| FILING BASIS |
Section 1(a) |
| FIRST USE ANYWHERE DATE |
At least as early as 10/31/2018 |
| FIRST USE IN COMMERCE DATE |
At least as early as 10/31/2018 |
| GOODS AND/OR SERVICES SECTION (proposed) |
| INTERNATIONAL CLASS |
009 |
| TRACKED TEXT DESCRIPTION |
Computer hardware and software for use in diagnosing or treating neurological diseases and conditions
affecting the brain and nervous system; Computer hardware for use in diagnosing or treating neurological diseases and conditions affecting the brain and nervous
system; downloadable computer software for use in diagnosing or treating neurological diseases and conditions affecting the brain and nervous system |
| FINAL DESCRIPTION |
| Computer hardware for use in diagnosing or treating neurological diseases and conditions affecting the brain and nervous system;
downloadable computer software for use in diagnosing or treating neurological diseases and conditions affecting the brain and nervous system |
| FILING BASIS |
Section 1(a) |
| FIRST USE ANYWHERE DATE |
At least as early as 10/31/2018 |
| FIRST USE IN COMMERCE DATE |
At least as early as 10/31/2018 |
| ATTORNEY SECTION (current) |
| NAME |
Jeffrey R. Cadwell |
| ATTORNEY BAR MEMBERSHIP NUMBER |
NOT SPECIFIED |
| YEAR OF ADMISSION |
NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY |
NOT SPECIFIED |
| FIRM NAME |
DORSEY & WHITNEY LLP |
| INTERNAL ADDRESS |
SUITE 1500 |
| STREET |
50 SOUTH SIXTH STREET |
| CITY |
MINNEAPOLIS |
| STATE |
Minnesota |
| POSTAL CODE |
55402-1498 |
| COUNTRY |
US |
| PHONE |
612-492-6842 |
| FAX |
612-340-8827 |
| EMAIL |
ip.docket@dorsey.com |
| AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
| DOCKET/REFERENCE NUMBER |
T281892.US.1 |
| ATTORNEY SECTION (proposed) |
| NAME |
Jeffrey R. Cadwell |
| ATTORNEY BAR MEMBERSHIP NUMBER |
XXX |
| YEAR OF ADMISSION |
XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY |
XX |
| FIRM NAME |
DORSEY & WHITNEY LLP |
| INTERNAL ADDRESS |
SUITE 1500 |
| STREET |
50 SOUTH SIXTH STREET |
| CITY |
MINNEAPOLIS |
| STATE |
Minnesota |
| POSTAL CODE |
55402-1498 |
| COUNTRY |
United States |
| PHONE |
612-492-6842 |
| FAX |
612-340-8827 |
| EMAIL |
ip.docket@dorsey.com |
| AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
| DOCKET/REFERENCE NUMBER |
T281892.US.1 |
| OTHER APPOINTED ATTORNEY |
Stuart R. Hemphill, Elizabeth C. Buckingham, Jamie N. Nafziger, Cathleen F. Dahl, Evan P. Everist, and Alison W. Jarzyna |
| CORRESPONDENCE SECTION (current) |
| NAME |
JEFFREY R. CADWELL |
| FIRM NAME |
DORSEY & WHITNEY LLP |
| INTERNAL ADDRESS |
SUITE 1500 |
| STREET |
50 SOUTH SIXTH STREET |
| CITY |
MINNEAPOLIS |
| STATE |
Minnesota |
| POSTAL CODE |
55402-1498 |
| COUNTRY |
US |
| PHONE |
612-492-6842 |
| FAX |
612-340-8827 |
| EMAIL |
ip.docket@dorsey.com; cadwell.jeffrey@dorsey.com; everist.evan@dorsey.com; sherman.louise@dorsey.com |
| AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
| DOCKET/REFERENCE NUMBER |
T281892.US.1 |
| CORRESPONDENCE SECTION (proposed) |
| NAME |
Jeffrey R. Cadwell |
| FIRM NAME |
DORSEY & WHITNEY LLP |
| INTERNAL ADDRESS |
SUITE 1500 |
| STREET |
50 SOUTH SIXTH STREET |
| CITY |
MINNEAPOLIS |
| STATE |
Minnesota |
| POSTAL CODE |
55402-1498 |
| COUNTRY |
United States |
| PHONE |
612-492-6842 |
| FAX |
612-340-8827 |
| EMAIL |
ip.docket@dorsey.com; cadwell.jeffrey@dorsey.com; everist.evan@dorsey.com; sherman.louise@dorsey.com |
| AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
| DOCKET/REFERENCE NUMBER |
T281892.US.1 |
| SIGNATURE SECTION |
| RESPONSE SIGNATURE |
/Jeffrey R. Cadwell/ |
| SIGNATORY'S NAME |
Jeffrey R. Cadwell |
| SIGNATORY'S POSITION |
Attorney of Record, Minnesota Bar Member |
| SIGNATORY'S PHONE NUMBER |
612-492-6842 |
| DATE SIGNED |
10/03/2019 |
| AUTHORIZED SIGNATORY |
YES |
| FILING INFORMATION SECTION |
| SUBMIT DATE |
Fri Oct 04 10:13:50 EDT 2019 |
| TEAS STAMP |
USPTO/ROA-XXX.XXX.X.XXX-2
0191004101350013615-88403
908-610915477c43da06472d0
edf56cfb4399b4d1f1c437d82
23228eabad25836a2a6-N/A-N
/A-20191003114437753481 |
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.
88403908 ACCELERATING BREAKTHROUGHS(Standard Characters, see http://uspto.report/TM/88403908/mark.png) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
In response to the July 9 office action, Applicant requests amendment of the description of goods as follows:
Computer hardware and software for use in diagnosing or treating neurological diseases and conditions affecting the brain and nervous system; downloadable computer
software for use in diagnosing or treating neurological diseases and conditions affecting the brain and nervous system
As the amended description makes clear, the software and hardware are not necessarily sold as a unit. Thus, the specimen of use, which clearly shows use of the mark with software,
should be acceptable.
Applicant respectfully requests that the Examining Attorney withdraw the refusal and approve the application for publication.
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Computer hardware and software for use in diagnosing or treating neurological diseases and conditions affecting the brain and nervous system
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 10/31/2018 and first used in commerce at least as early as 10/31/2018 , and
is now in use in such commerce.
Proposed:
Tracked Text Description: Computer hardware and software for use in diagnosing or treating neurological diseases and conditions affecting the brain and nervous
system;
Computer hardware for use in diagnosing or treating neurological diseases and conditions affecting the brain and nervous system;
downloadable computer software for use in diagnosing or treating neurological diseases and conditions affecting the brain and nervous systemClass 009 for Computer hardware for use
in diagnosing or treating neurological diseases and conditions affecting the brain and nervous system; downloadable computer software for use in diagnosing or treating neurological diseases and
conditions affecting the brain and nervous system
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 10/31/2018 and first used in commerce at least as early as 10/31/2018 , and
is now in use in such commerce.
The applicant's current attorney information: Jeffrey R. Cadwell. Jeffrey R. Cadwell of DORSEY & WHITNEY LLP, is located at
SUITE 1500
50 SOUTH SIXTH STREET
MINNEAPOLIS, Minnesota 55402-1498
US
The docket/reference number is T281892.US.1.
The phone number is 612-492-6842.
The fax number is 612-340-8827.
The email address is ip.docket@dorsey.com
The applicants proposed attorney information: Jeffrey R. Cadwell. Other appointed attorneys are Stuart R. Hemphill, Elizabeth C. Buckingham, Jamie N. Nafziger, Cathleen F. Dahl, Evan P. Everist, and
Alison W. Jarzyna. Jeffrey R. Cadwell of DORSEY & WHITNEY 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
SUITE 1500
50 SOUTH SIXTH STREET
MINNEAPOLIS, Minnesota 55402-1498
United States
The docket/reference number is T281892.US.1.
The phone number is 612-492-6842.
The fax number is 612-340-8827.
The email address is ip.docket@dorsey.com
Jeffrey R. Cadwell 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: JEFFREY R. CADWELL. JEFFREY R. CADWELL of DORSEY & WHITNEY LLP, is located at
SUITE 1500
50 SOUTH SIXTH STREET
MINNEAPOLIS, Minnesota 55402-1498
US
The docket/reference number is T281892.US.1.
The phone number is 612-492-6842.
The fax number is 612-340-8827.
The email address is ip.docket@dorsey.com; cadwell.jeffrey@dorsey.com; everist.evan@dorsey.com; sherman.louise@dorsey.com
The applicants proposed correspondence information: Jeffrey R. Cadwell. Jeffrey R. Cadwell of DORSEY & WHITNEY LLP, is located at
SUITE 1500
50 SOUTH SIXTH STREET
MINNEAPOLIS, Minnesota 55402-1498
United States
The docket/reference number is T281892.US.1.
The phone number is 612-492-6842.
The fax number is 612-340-8827.
The email address is ip.docket@dorsey.com; cadwell.jeffrey@dorsey.com; everist.evan@dorsey.com; sherman.louise@dorsey.com
SIGNATURE(S)
Response Signature
Signature: /Jeffrey R. Cadwell/ Date: 10/03/2019
Signatory's Name: Jeffrey R. Cadwell
Signatory's Position: Attorney of Record, Minnesota Bar Member
Signatory's Phone Number: 612-492-6842
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: JEFFREY R. CADWELL
DORSEY & WHITNEY LLP
SUITE 1500
50 SOUTH SIXTH STREET
MINNEAPOLIS, Minnesota 55402-1498
Mailing Address: Jeffrey R. Cadwell
DORSEY & WHITNEY LLP
SUITE 1500
50 SOUTH SIXTH STREET
MINNEAPOLIS, Minnesota 55402-1498
Serial Number: 88403908
Internet Transmission Date: Fri Oct 04 10:13:50 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.X.XXX-2019100410135001
3615-88403908-610915477c43da06472d0edf56
cfb4399b4d1f1c437d8223228eabad25836a2a6-
N/A-N/A-20191003114437753481