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. 88410641 CHOOSTENT(Standard Characters, see http://uspto.report/TM/88410641/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

FOREIGN REGISTRATION TRANSLATION REQUIREMENT An English translation of the foreign registration is being attached to the present response. The translation is signed by the translator. GOODS EXCEED SCOPE OF FOREIGN REGISTRATION It is respectfully submitted that the Examiner is incorrect in that the identification of goods exceeds the scope of goods in the foreign registration. The goods of the Korean registration are the same as in the originally filed US application. A Certificate of Korean Trademark registration and the Trademark Register together with their English translations are being submitted concurrently herewith as evidence of the same. Some of the goods filed as part of the original application have been deleted, so that the ID of goods is less than what is in the Korean Registration. Accordingly, this rejection is respectfully requested to be withdrawn. AMENDED IDENTIFICATION OF GOODS REQUIREMENT The goods have been amended as set forth in the response. The goods that the Examiner has identified as being in Class 5 are not being asserted by the Applicant. MULTIPLE-CLASS REQUIREMENTS As noted above, the goods that the Examiner has identified as being in Class 5 are not being asserted by the Applicant. Thus, there is no need to add an additional class or submit any additional fees. ENTITY CLARIFICATION REQUIREMENT ?Co., Ltd.? in Korea is similar in structure as ?Corp.? in the US. Corporations like Samsung Electronics and LG Electronics use the language ?Co., Ltd.? at the end of their corporate names.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 010 for Implants, Medical stents, Prostheses to be implanted in blood vessels and body tissues, Equipment for inserting implants in blood vessels and body tissues, Permanent endoprostheses for medical purposes, Prostheses for medical purposes, Electrodes for medical use, Probes for medical purposes, Physiotherapy apparatus, Bone cementation tools and equipment, Urethral syringes, Artificial pneumothorax, Pharmaceutical apparatus and instruments, Prosthetic instruments for dental purposes, Surgical implants, and Medical guidewires
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.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Korea, South registration number 40-0684409 registered 11/06/2006 with a renewal date of 11/01/2016 and an expiration date of 11/06/2026 ], 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: Implants, Medical stents, Prostheses to be implanted in blood vessels and body tissues, Equipment for inserting implants in blood vessels and body tissues, Permanent endoprostheses for medical purposes, Prostheses for medical purposes, Electrodes for medical use, Probes for medical purposes, Physiotherapy apparatus, Bone cementation tools and equipment, Urethral syringes, Artificial pneumothorax, Pharmaceutical apparatus and instruments, Prosthetic instruments for dental purposes, Surgical implants, and Medical guidewires; Implants consisting of artificial materials; medical stents; prostheses to be implanted in blood vessels and body tissues; medical equipment for inserting implants in blood vessels and body tissues; permanent endoprostheses for medical purposes; electrodes for medical use; probes for medical purposes; urethral syringes; artificial neumothorax apparatus; prosthetic instruments for dental purposes; surgical implants comprising artificial material; and medical guidewiresClass 010 for Implants consisting of artificial materials; medical stents; prostheses to be implanted in blood vessels and body tissues; medical equipment for inserting implants in blood vessels and body tissues; permanent endoprostheses for medical purposes; electrodes for medical use; probes for medical purposes; urethral syringes; artificial neumothorax apparatus; prosthetic instruments for dental purposes; surgical implants comprising artificial material; and medical guidewires
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.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Korea, South registration number 40-0684409 registered 11/06/2006 with a renewal date of 11/01/2016 and an expiration date of 11/06/2026 ], 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:
FRU0-708813173-145646949_._certificate_of_trademark_registration.pdf
Converted PDF file(s) ( 1 page)
Foreign Registration-1
Original PDF file:
FRU0-1-708813173-145646949_._KR40-0684409_Certificate_of_Registration.pdf
Converted PDF file(s) ( 1 page)
Foreign Registration-1
Original PDF file:
FRU0-708813173-145646949_._KR40-0684409_Trademark_Register.pdf
Converted PDF file(s) ( 2 pages)
Foreign Registration-1
Foreign Registration-2
Original PDF file:
FRU0-708813173-145646949_._trademark_register.pdf
Converted PDF file(s) ( 3 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3

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: Michael Stein. Michael Stein of STEIN IP LLC, is located at

      SUITE 610
      1990 M ST., NW
      WASHINGTON, District of Columbia 20036
      US
The docket/reference number is 0344.2007.

The phone number is 202-216-9505.

The fax number is 202-216-9510.

The email address is docketing@steinip.com

The applicants proposed attorney information: Michael Stein. Other appointed attorneys are Amy Benjamin; Marty Hoffman, Mark Sullivan, Glenna Hendricks, and other attorneys of the firms. Michael Stein of Stein IP LLC, 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 610
      1990 M St., NW
      Washington, District of Columbia 20036
      United States
The docket/reference number is 0813.2004.

The phone number is 202-216-9505.

The fax number is 202-216-9510.

The email address is docketing@steinip.com

Michael Stein 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: MICHAEL STEIN. MICHAEL STEIN of STEIN IP LLC, is located at

      SUITE 610
      1990 M ST., NW
      WASHINGTON, District of Columbia 20036
      US
The docket/reference number is 0344.2007.

The phone number is 301-928-8037.

The fax number is 202-216-9510.

The email address is docketing@steinip.com; mstein@steinip.com; email@steinip.com

The applicants proposed correspondence information: Michael Stein. Michael Stein of Stein IP LLC, is located at

      Suite 610
      1990 M St., NW, Suite 610
      Washington, District of Columbia 20036
      United States
The docket/reference number is 0813.2007.

The phone number is 2022169505.

The fax number is 202-216-9510.

The email address is docketing@steinip.com; mstein@steinip.com; email@steinip.com

SIGNATURE(S)
Response Signature
Signature: /Michael Stein/     Date: 10/23/2019
Signatory's Name: Michael Stein
Signatory's Position: Attorney of record

Signatory's Phone Number: 2022169505

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:    MICHAEL STEIN
   STEIN IP LLC
   SUITE 610
   1990 M ST., NW
   WASHINGTON, District of Columbia 20036
Mailing Address:    Michael Stein
   Stein IP LLC
   Suite 610
   1990 M St., NW, Suite 610
   Washington, District of Columbia 20036
        
Serial Number: 88410641
Internet Transmission Date: Wed Oct 23 15:23:42 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20191023152342142
013-88410641-61030b055cdd119c47b62d154ad
c0379d39930c6cb18456cea1d72bed915ec36a1-
N/A-N/A-20191023145646949438