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. 88650936 BEST(Standard Characters, see http://uspto.report/TM/88650936/mark.png) has been amended as follows:

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

Please see actual argument text attached within the Evidence section

EVIDENCE
Evidence has been attached: response and supporting documents
Original PDF file:
evi_2041694221-2020071718 0339187294_._8965110.pdf
Converted PDF file(s) ( 9 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8Evidence-9
Original PDF file:
evi_2041694221-2020071718 0339187294_._8964651.PDF
Converted PDF file(s) ( 9 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8Evidence-9
Original PDF file:
evi_2041694221-2020071718 0339187294_._8964713.PDF
Converted PDF file(s) ( 9 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8Evidence-9
Original PDF file:
evi_2041694221-2020071718 0339187294_._8964776.PDF
Converted PDF file(s) ( 7 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 010 for Stimulator for applying electrical pulses directly to tissue
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: Stimulator for applying electrical pulses directly to tissue; electrical stimulator that applies electrical pulses directly to tissue for the purpose of peripheral nerve regeneration.Class 010 for electrical stimulator that applies electrical pulses directly to tissue for the purpose of peripheral nerve regeneration.
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: Checkpoint Surgical, Inc., a corporation of Delaware, having an address of

            Suite 360      22901 MILLCREEK BOULEVARD
      Cleveland, Ohio 44122
      United States

Proposed: Checkpoint Surgical, Inc., a corporation of Delaware, having an address of
      Suite 360
      22901 MILLCREEK BOULEVARD
      Cleveland, Ohio 44122
      United States
      Email Address: XXXX
Correspondence Information (current):
      TODD A. BENNI
      PRIMARY EMAIL FOR CORRESPONDENCE: ipmailbox@mcdonaldhopkins.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): lcouncil@mcdonaldhopkins.com; tbenni@mcdonaldhopkins.com

The docket/reference number is 37694-00094.
Correspondence Information (proposed):
      Todd A. Benni
      PRIMARY EMAIL FOR CORRESPONDENCE: ipmailbox@mcdonaldhopkins.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): tbenni@mcdonaldhopkins.com

The docket/reference number is 37694-00094.

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: /Todd A. Benni/     Date: 07/17/2020
Signatory's Name: Todd A. Benni
Signatory's Position: Attorney of record, Ohio 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:    TODD A. BENNI
   MCDONALD HOPKINS LLC
   SUITE 2100
   SUPERIOR AVENUE EAST
   CLEVELAND, Ohio 44114-2653
Mailing Address:    Todd A. Benni
   MCDONALD HOPKINS LLC
   SUITE 2100
   SUPERIOR AVENUE EAST
   CLEVELAND, Ohio 44114-2653
        
Serial Number: 88650936
Internet Transmission Date: Fri Jul 17 18:17:53 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XXX-2020071718175376
8233-88650936-740841e6289822e9830d6c8dac
de8bdc3d14419484441acfd50509ff3b4e5d0771
b-N/A-N/A-20200717180339187294