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. 88636352 AXIS(Standard Characters, see http://uspto.report/TM/88636352/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Apparatus for recording, display, transmission or reproduction of images for controlling and analysing medical data; data processing equipment and computers for medical purposes; computer software used for controlling diagnostic and therapeutic processes in medical technical apparatus; image processing apparatus for medical use, in particular for transforming visual information into electronic signals and vice versa
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: Apparatus for recording, display, transmission or reproduction of images for controlling and analysing medical data; recorded and downloadable computer software for controlling medical diagnostic and therapeutic apparatuses; data processing equipment and computers for medical purposes; computer software used for controlling diagnostic and therapeutic processes in medical technical apparatus; image processing apparatus for medical use, in particular for transforming visual information into electronic signals and vice versaClass 009 for recorded and downloadable computer software for controlling medical diagnostic and therapeutic apparatuses
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.

Applicant proposes to amend the following:

Current:
Class 010 for Medical apparatus and instruments for endourology, namely, ureteroscopes
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: Medical apparatus and instruments for endourology, namely, ureteroscopes; medical imaging apparatus; medical instruments for endourology, namely, ureteroscopesClass 010 for medical imaging apparatus; medical instruments for endourology, namely, ureteroscopes
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.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Dornier MedTech GmbH a(n) gesellschaft mit beschränkter haftung (gmbh), legally organized under the laws of Germany, having an address of
      Argelsrieder Feld 7
      Weßling, 82234
      Germany

Proposed: Dornier MedTech GmbH, gesellschaft mit beschränkter haftung (gmbh) legally organized under the laws of Germany, having an address of
      Argelsrieder Feld 7
      Weßling, 82234
      Germany
      Email Address: XXXX
Correspondence Information (current):
      HOLMES J. HAWKINS, III
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@kslaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): efox@kslaw.com; vbantug@kslaw.com

The docket/reference number is 22569.TBA.
Correspondence Information (proposed):
      Holmes J. Hawkins, III
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@kslaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): efox@kslaw.com; mrussell@kslaw.com

The docket/reference number is 22569.TBA.

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: /EMF/     Date: 06/08/2020
Signatory's Name: Elizabeth M. Fox
Signatory's Position: Attorney of record, Georgia Bar Member

Signatory's Phone Number: 404-572-2743

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:    HOLMES J. HAWKINS, III
   KING & SPALDING LLP
   
   1180 PEACHTREE STREET NE
   ATLANTA, Georgia 30309
Mailing Address:    Holmes J. Hawkins, III
   KING & SPALDING LLP
   1180 PEACHTREE STREET NE
   ATLANTA, Georgia 30309
        
Serial Number: 88636352
Internet Transmission Date: Mon Jun 08 12:24:19 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20200608122419
422672-88636352-710e11e192d3843f7d92a926
228cdc558d9989361be72dd52e383481521ca84-
N/A-N/A-20200608121936170731