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. 88415240 CELLFX (Stylized and/or with Design, see http://uspto.report/TM/88415240/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 devices for treatment in the nature of pulsed electrical destruction or reduction of benign and non-benign biological tissues; medical devices using pulsed electricity for use in treating skin growth, skin lesions and skin conditions; medical devices, namely, medical pulse generators and pulse generator circuits for tissue modification, manipulation and/or ablation; medical apparatus designed for use with nanopulse electricity for manipulation, modification and/or ablation of biologic tissue; medical apparatus, devices and instruments utilizing electrical pulsing technology for prevention, detection, diagnosis and treatment of medical disease, injuries, abnormalities and conditions, namely, tumors, skin and tissue disorders, and other tissue and skin growths; medical systems comprising medical devices and instruments in the nature of pulse generators, pulse generator circuits, medical probes, medical wands, medical electrodes and microneedle treatment tips for use in tissue modification, manipulation and /or ablation; medical pulse generators and medical electrodes for nanosecond pulse delivery for treatment of medical conditions or cosmetic tissue defects; microneedle treatment tips and medical handpieces; medical and surgical devices and accessories comprised of one or more of the following: medical electrodes, electric medical connectors, medical handpieces, medical probes and guides for placement of medical electrodes on tumors, lesions, tissue growth, internal and external anatomical areas; all of which exclude apparatus and devices for the treatment of cellulite
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 03/06/2019 and first used in commerce at least as early as 03/06/2019 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Medical apparatus and devices for treatment in the nature of pulsed electrical destruction or reduction of benign and non-benign biological tissues; medical devices using pulsed electricity for use in treating skin growth, skin lesions and skin conditions; medical devices, namely, medical pulse generators and pulse generator circuits for tissue modification, manipulation and/or ablation; medical apparatus designed for use with nanopulse electricity for manipulation, modification and/or ablation of biologic tissue; medical apparatus, devices and instruments utilizing electrical pulsing technology for prevention, detection, diagnosis and treatment of medical disease, injuries, abnormalities and conditions, namely, tumors, skin and tissue disorders, and other tissue and skin growths; medical systems comprising medical devices and instruments in the nature of pulse generators, pulse generator circuits, medical probes, medical wands, medical electrodes and microneedle treatment tips for use in tissue modification, manipulation and /or ablation; medical pulse generators and medical electrodes for nanosecond pulse delivery for treatment of medical conditions or cosmetic tissue defects; microneedle treatment tips and medical handpieces; medical device accessories to enable treatment of biological tissues, namely, microneedle treatment tips and medical handpieces; medical and surgical devices and accessories comprised of one or more of the following: medical electrodes, electric medical connectors, medical handpieces, medical probes and guides for placement of medical electrodes on tumors, lesions, tissue growth, internal and external anatomical areas; medical and surgical devices and accessories for placement of medical electrodes on tumors, lesions, tissue growth, internal and external anatomical areas comprised of one or more of the following pieces of equipment, namely, medical electrodes, electric medical connectors, medical handpieces, medical probes and guides; all of which exclude apparatus and devices for the treatment of celluliteClass 010 for Medical apparatus and devices for treatment in the nature of pulsed electrical destruction or reduction of benign and non-benign biological tissues; medical devices using pulsed electricity for use in treating skin growth, skin lesions and skin conditions; medical devices, namely, medical pulse generators and pulse generator circuits for tissue modification, manipulation and/or ablation; medical apparatus designed for use with nanopulse electricity for manipulation, modification and/or ablation of biologic tissue; medical apparatus, devices and instruments utilizing electrical pulsing technology for prevention, detection, diagnosis and treatment of medical disease, injuries, abnormalities and conditions, namely, tumors, skin and tissue disorders, and other tissue and skin growths; medical systems comprising medical devices and instruments in the nature of pulse generators, pulse generator circuits, medical probes, medical wands, medical electrodes and microneedle treatment tips for use in tissue modification, manipulation and /or ablation; medical pulse generators and medical electrodes for nanosecond pulse delivery for treatment of medical conditions or cosmetic tissue defects; medical device accessories to enable treatment of biological tissues, namely, microneedle treatment tips and medical handpieces; medical and surgical devices and accessories for placement of medical electrodes on tumors, lesions, tissue growth, internal and external anatomical areas comprised of one or more of the following pieces of equipment, namely, medical electrodes, electric medical connectors, medical handpieces, medical probes and guides; all of which exclude apparatus and devices for the treatment of cellulite
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 03/06/2019 and first used in commerce at least as early as 03/06/2019 , and is now in use in such commerce.
The applicant's current attorney information: Lena Vinitskaya. Lena Vinitskaya, is located at

      3957 POINT EDEN WAY
      HAYWARD, California 94545
      US
The docket/reference number is TM_09A.

The email address is lvinitskaya@pulsebiosciences.com

The applicants proposed attorney information: Lena Vinitskaya. Lena Vinitskaya, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      3957 POINT EDEN WAY
      HAYWARD, California 94545
      United States
The docket/reference number is TM_09A.

The email address is lvinitskaya@pulsebiosciences.com

Lena Vinitskaya 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: LENA VINITSKAYA. LENA VINITSKAYA, is located at

      3957 POINT EDEN WAY
      HAYWARD, California 94545
      US
The docket/reference number is TM_09A.

The email address is lvinitskaya@pulsebiosciences.com; jbiksa@pulsebiosciences.com

The applicants proposed correspondence information: Lena Vinitskaya. Lena Vinitskaya, is located at

      3957 POINT EDEN WAY
      HAYWARD, California 94545
      United States
The docket/reference number is TM_09A.

The email address is lvinitskaya@pulsebiosciences.com; jbiksa@pulsebiosciences.com

ADDITIONAL STATEMENTS
Miscellaneous Statement
Applicant is the owner of Application Serial Nos. 87748844 and 87748866. Description of goods was amended as suggested by the Examining attorney.


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: /Lena Vinitskaya/      Date: 09/28/2019
Signatory's Name: Lena Vinitskaya
Signatory's Position: Attorney of Record, California Bar member

Response Signature
Signature: /Lena Vinitskaya/     Date: 09/28/2019
Signatory's Name: Lena Vinitskaya
Signatory's Position: Attorney of Record, California Bar member

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:    LENA VINITSKAYA
   
   
   3957 POINT EDEN WAY
   HAYWARD, California 94545
Mailing Address:    Lena Vinitskaya
   3957 POINT EDEN WAY
   HAYWARD, California 94545
        
Serial Number: 88415240
Internet Transmission Date: Sat Sep 28 12:02:08 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2019092812020877
1104-88415240-6107551773fb472d266ec55cc4
36acf482d5814d2da5778865ddcc714cd3f82b29
4-N/A-N/A-20190928114216974911