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. 88452155 PNEUX(Standard Characters, see http://uspto.report/TM/88452155/mark.png) has been amended as follows:

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

Applicant notes that a Change Address or Representation Form was filed earlier today, appointing Megan R. Bradshaw as attorney of record, but the PTO database records do not yet appear to have been updated. Applicant submits this response to the Office Action issued August 28, 2019. In that Office Action, the Examiner refused registration on grounds of a likelihood of confusion with U.S. Reg. No. 3211794 and also raised the possibility that a likelihood of confusion refusal would be raised if and when U.S. Ser. No. 86912513 matures to registration. Applicant respectfully asserts that there is no likelihood of confusion between Applicant's mark PNEUX and the cited mark PNEUMRX, considering (1) the differences in the marks visually and phonetically, as well as in meaning and commercial impression, (2) the limited scope of protection afforded to the PNEUMRX mark (given its coexistence with other PNEU formative marks), (3) differences in the covered goods, and (4) differences in the target consumers, including the sophisticated nature of the consumers. Applicant's mark PNEUX is different from the cited mark PNEUMRX, considering the additional letters M and R that appear in the cited mark and lead to a different visual and aural presentation as well as different meanings and commercial impressions, including the fact that the cited mark incorporates "RX," a common abbreviation for "prescription." Furthermore, the cited mark PNEUMRX is already coexisting with at least 18 other PNEU formative marks on the register for related goods, indicating that the scope of protection is limited and consumers can distinguish between these marks based on small differences in the marks and goods. Applicant also respectfully notes that there are differences in the particular medical and surgical goods covered by the subject application and the cited mark. Finally, the consumers of both Applicant's particular medical and surgical goods and the cited medical and surgical goods are sophisticated and will exercise care in their purchase, reducing any likelihood of consumer confusion. If the prior-pending application matures to registration, Applicant reserves the right to further address the potential likelihood of confusion at a later time.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Indian Ocean Medical Inc., a corporation of Seychelles, having an address of
      Revolution Avenue, P.O. Box 18
      Mahe,
      Seychelles

Proposed: Indian Ocean Medical Inc., a corporation of Seychelles, having an address of
      Revolution Avenue, P.O. Box 18
      Mahe,
      Seychelles
      Email Address: client@pirkeybarber.com

The owner's/holder's current attorney information: Connie L. Ellerbach. Connie L. Ellerbach of FENWICK & WEST LLP, is located at

      902 BROADWAY, SUITE 14
      NEW YORK, New York 10010
      United States
The docket/reference number is 33933-00112.
      The phone number is 212-921-2001.
      The fax number is 650-938-5200.
      The email address is Trademarks@fenwick.com

The owner's/holder's proposed attorney information: Connie L. Ellerbach. Other appointed attorneys are all other attorneys with the firm. Connie L. Ellerbach of Pirkey Barber PLLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      1801 East 6th Street, Suite 300
      Austin, Texas 78702
      United States
The docket/reference number is JENK013US.
      The phone number is 512-322-5200.
      The email address is tmcentral@pirkeybarber.com

Connie L. Ellerbach 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.Correspondence Information (current):
      Connie L. Ellerbach
      PRIMARY EMAIL FOR CORRESPONDENCE: Trademarks@fenwick.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): jgreene@fenwick.com; mmurphy@fenwick.com

The docket/reference number is 33933-00112.
Correspondence Information (proposed):
      Connie L. Ellerbach
      PRIMARY EMAIL FOR CORRESPONDENCE: tmcentral@pirkeybarber.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): mbradshaw@pirkeybarber.com; kcilino@pirkeybarber.com; svale@pirkeybarber.com

The docket/reference number is JENK013US.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /Megan R. Bradshaw/     Date: 02/28/2020
Signatory's Name: Megan R. Bradshaw
Signatory's Position: Attorney of record, Texas Bar member

Signatory's Phone Number: 512-322-5200

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:    Connie L. Ellerbach
   FENWICK & WEST LLP
   
   902 BROADWAY, SUITE 14
   NEW YORK, New York 10010
Mailing Address:    Connie L. Ellerbach
   Pirkey Barber PLLC
   1801 East 6th Street, Suite 300
   Austin, Texas 78702
        
Serial Number: 88452155
Internet Transmission Date: Fri Feb 28 15:11:26 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-202002281511260
08310-88452155-710681f39d9b794ae41bb3aec
5aedf64c4474bacafb089b06c4291c5488d1278d
-N/A-N/A-20200228144830623790