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. 88426914 OMNIHI5(Standard Characters, see http://uspto.report/TM/88426914/mark.png) has been amended as follows:

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

RESPONSE TO OFFICE ACTION DATED AUGUST 1, 2019

This is in response to the office action dated August 1, 2019, wherein the Trademark Attorney Advisor issued a refusal based on a likelihood of confusion with an existing third party registration for Hy5.  The Examining Attorney suggested an amended description of goods to overcome the rejection, which Applicant agrees to in this response. Accordingly, Applicant amends its description of goods to the following language set forth by the Examining Attorney in her August 1, 2019 Office Action:

Class 010:

Electrotherapy stimulation apparatus comprising a mobile device that attaches to the body and electrodes providing electrical nerve and muscle stimulation and providing surface electromyography for restoring human motor functions that have been lost due to paralysis caused by neurological injury or disease for occupational and physical therapy, and rehabilitative and patient recovery purposes, for use both in a medical and home or community environment.

Applicant respectfully requests that the likelihood of confusion rejection be withdrawn and the description of goods be amended to the above language. 

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 010 for Electrotherapy stimulation apparatus comprising a device and electrodes providing electrical nerve and muscle stimulation and providing surface electromyography for occupational and physical therapy, and rehabilitative and patient recovery purposes, both in a medical and home or community environment
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.

Proposed:
Tracked Text Description: Electrotherapy stimulation apparatus comprising a device and electrodes providing electrical nerve and muscle stimulation and providing surface electromyography for occupational and physical therapy, and rehabilitative and patient recovery purposes, both in a medical and home or community environment; Electrotherapy stimulation apparatus comprising a mobile device that attaches to the body and electrodes providing electrical nerve and muscle stimulation and providing surface electromyography for restoring human motor functions that have been lost due to paralysis caused by neurological injury or disease for occupational and physical therapy, and rehabilitative and patient recovery purposes, for use both in a medical and home or community environment.Class 010 for Electrotherapy stimulation apparatus comprising a mobile device that attaches to the body and electrodes providing electrical nerve and muscle stimulation and providing surface electromyography for restoring human motor functions that have been lost due to paralysis caused by neurological injury or disease for occupational and physical therapy, and rehabilitative and patient recovery purposes, for use both in a medical and home or community environment.
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.

The applicant's current attorney information: Norm J. Rich. Norm J. Rich of FOLEY & LARDNER LLP, is located at

      SIXTH FLOOR
      3000 K STREET, N.W.
      WASHINGTON, District of Columbia 20007
      US
The docket/reference number is 302280-7128.

The phone number is 202-672-5300.

The fax number is 202-672-5399.

The email address is IPDocketing@foley.com

The applicants proposed attorney information: Norm J. Rich. Other appointed attorneys are all other attorneys of FOLEY & LARDNER LLP. Norm J. Rich of FOLEY & LARDNER 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

      SIXTH FLOOR
      3000 K STREET, N.W.
      WASHINGTON, District of Columbia 20007
      United States
The docket/reference number is 302280-7128.

The phone number is 202-672-5300.

The fax number is 202-672-5399.

The email address is IPDocketing@foley.com

Norm J. Rich 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: NORM J. RICH. NORM J. RICH of FOLEY & LARDNER LLP, is located at

      SIXTH FLOOR
      3000 K STREET, N.W.
      WASHINGTON, District of Columbia 20007
      US
The docket/reference number is 302280-7128.

The phone number is 202-672-5300.

The fax number is 202-672-5399.

The email address is IPDocketing@foley.com

The applicants proposed correspondence information: Norm J. Rich. Norm J. Rich of FOLEY & LARDNER LLP, is located at

      SIXTH FLOOR
      3000 K STREET, N.W.
      WASHINGTON, District of Columbia 20007
      United States
The docket/reference number is 302280-7128.

The phone number is 202-672-5300.

The fax number is 202-672-5399.

The email address is IPDocketing@foley.com

SIGNATURE(S)
Response Signature
Signature: /Norm J. Rich/     Date: 01/07/2020
Signatory's Name: Norm J. Rich
Signatory's Position: Attorney of record, District of Columbia Bar member

Signatory's Phone Number: 202-672-5300

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:    NORM J. RICH
   FOLEY & LARDNER LLP
   SIXTH FLOOR
   3000 K STREET, N.W.
   WASHINGTON, District of Columbia 20007
Mailing Address:    Norm J. Rich
   FOLEY & LARDNER LLP
   SIXTH FLOOR
   3000 K STREET, N.W.
   WASHINGTON, District of Columbia 20007
        
Serial Number: 88426914
Internet Transmission Date: Tue Jan 07 10:53:52 EST 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XX.X-202001071053528549
41-88426914-7007642ca1bdfc3b8c65154169a7
e696e7cf0147d9623963a8f6f613a03e81d01d-N
/A-N/A-20200107065918376067