TEAS Petition to Revive Abandon Applic

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 2194 (Rev 03/2012)

OMB No. 0651-0054 (Exp 12/31/2020)

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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 2194 (Rev 03/2012)

OMB No. 0651-0054 (Exp 12/31/2020)

Petition To Revive Abandoned Application - Failure To Respond Timely To Office Action

To the Commissioner for Trademarks:

Application serial no. 88707416 SHUTTLE PIN(Standard Characters, see http://uspto.report/TM/88707416/mark.png) has been amended as follows: PETITION
Petition Statement
Applicant has firsthand knowledge that the failure to respond to the Office Action by the specified deadline was unintentional, and requests the USPTO to revive the abandoned application.RESPONSE TO OFFICE ACTION

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

The Examining Attorney has refused registration because of an alleged likelihood of confusion between marks (SHUTTLE and SHUTTLE SELECT) in commonly owned registrations and a mark (SUPER SHUTTLE) registered to a second owner.

All three cited marks are registered in International Class 10 and relate to medical/surgical devices. The coexistence of these registrations, all including the word “Shuttle” and related to different medical products, highlights that other marks including prefixes or suffixes with “Shuttle” can coexist without a likelihood of confusion in the medical industry.

In comparing the mark SHUTTLE with Applicant’s mark, the word “Pin” has significance in distinguishing the two marks, in the same way that “SELECT” and “SUPER”, in combination with “SHUTTLE”, distinguish over the mark SHUTTLE by itself.

Respectfully, in its entirety, the Applicant’s mark clearly distinguishes over all three of the marks in the cited registrations adequately that its use, on the goods identified, would not create a likelihood of confusion with respect to any of the other cited marks on their respective goods.

The Examining Attorney argues that the word “Shuttle” is the “dominant term” in all of the marks. Were that the case, the concurrent use of the marks SHUTTLE SELECT and SUPER SHUTTLE would create a likelihood of confusion as related to medical devices. This was determined not to be the case by reason of the simultaneous registration.

It is respectfully submitted that the word “Pin” is adequately dominant that the Applicant’s mark, viewed in its entirety, is not confusingly similar to any of the cited marks.

With respect to the comparison of goods, the Examining Attorney has concluded that “[a]pplicant’s and registrants’ medical devices all function in similar ways and are considered related for purposes of determining likelihood of confusion under Section 2(d) of the Trademark Act.”

Applicant respectfully submits that the goods (Applicant’s and those in the cited registrations) are also adequately different to further support registration of Applicant’s mark, for reasons explained below relative to the refusal on the basis of Applicant’s mark being “merely descriptive.” In addressing the descriptiveness issue, it is helpful to consider the same in combination with the information about the goods required by the Examining Attorney.

Applicant is submitting herewith drawings from its pending provisional patent application directed to what will be identified by Applicant as its “shuttle pin” system.

As seen in Applicant’s patent application, an elongate body with a sharpened tip is utilized to create an opening in tissues, bone, etc. to draw a suture, carried in a slot, therethrough.

Based upon the patent application disclosure in response to question A, “shuttle pins” are not a known type of device in the industry.

In response to question B, the answer is “no.” The elongate component does not stay implanted.

In response to question C, Applicant is not aware that competitors use the term “shuttle” in the medical field to describe structure to draw an elongate element into and through bone, tissue, etc.

In response to question D, the Applicant’s goods are not “pins”, within the definition identified by the Examining Attorney -- that being “a device or action used to fasten things together or as a support.”

Accordingly, in light of response to question D, the response to question E is likewise “no.” The device utilizes an elongate body but does not have a discrete head common to a “pin” construction as identified by the Examining Attorney.

Accordingly, the Applicant’s goods do not perform a typical function of a “pin” so as to be potentially descriptive.

Further, in each of the cited marks, the goods are identified as related to a pre-formed passage. SHUTTLE is used on “catheters.” SHUTTLE SELECT is used on “sheaths.” SUPER SHUTTLE is used on instruments for conveying a suture through a “portal or cannula.” Applicant’s goods and those in the cited registrations differ significantly.

Further, viewing the term “shuttle pin”, one would not be given more than a suggestion of what Applicant’s goods may be. This is confirmed by the Examining Attorney’s argument that “[t]hus, applicant’s applied-for mark SHUTTLE PIN appears to connote the function and type of the applied-for goods, namely, a pin that is transported through the body.”

Respectfully, this interpretation would suggest that the pin is transported through the body to perform a securing or fastening function, which is not the case. Thus, Applicant’s mark in its entirety is at most suggestive, but tends towards being more arbitrary in nature.

Accordingly, withdrawal of the refusal to register Applicant’s mark is requested.

EVIDENCE

Original PDF file:
evi_389813034-20200915165 403521597_._88707416_Draw ings.PDF
Converted PDF file(s) ( 3 pages) Evidence-1Evidence-2Evidence-3

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 010 for Surgical device, namely, a device for advancing an elongate flexible component through a part of a human body
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: Surgical device, namely, a device for advancing an elongate flexible component through a part of a human body; Surgical device, namely, a surgical device for advancing an elongated flexible component through a part of a human bodyClass 010 for Surgical device, namely, a surgical device for advancing an elongated flexible component through a part of a human body
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: TriMed, Incorporated, a corporation of California, having an address of
      27533 Avenue Hopkins
      Santa Clarita, California 91355
      United States

Proposed: TriMed, Incorporated, a corporation of California, having an address of
      27533 Avenue Hopkins
      Santa Clarita, California 91355
      United States
      Email Address: XXXX
Correspondence Information (current):
      JOHN S. MORTIMER
      PRIMARY EMAIL FOR CORRESPONDENCE: docketing@woodphillips.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 10718T00090U.
Correspondence Information (proposed):
      John S. Mortimer
      PRIMARY EMAIL FOR CORRESPONDENCE: docketing@woodphillips.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): lbowen@woodphillips.com

The docket/reference number is 10718T00090U.

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).

FEE(S)
Fee(s) in the amount of $100 is being submitted.

SIGNATURE(S)

Signature: /John S. Mortimer/      Date: 09/15/2020
Signatory's Name: John S. Mortimer
Signatory's Position: Attorney of record, Illinois bar member
Signatory's Phone Number: 312-876-2113


Response Signature
Signature: /John S. Mortimer/     Date: 09/15/2020
Signatory's Name: John S. Mortimer
Signatory's Position: Attorney of record, Illinois bar member

Signatory's Phone Number: 312-876-2113

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:    JOHN S. MORTIMER
   WOOD, PHILLIPS, KATZ, CLARK & MORTIMER
   SUITE 1130
   500 W. MADISON STREET
   CHICAGO, Illinois 60661-2562
Mailing Address:    John S. Mortimer
   WOOD, PHILLIPS, KATZ, CLARK & MORTIMER
   SUITE 1130
   500 W. MADISON STREET
   CHICAGO, Illinois 60661-2562
        
RAM Sale Number: 88707416
RAM Accounting Date: 09/15/2020
        
Serial Number: 88707416
Internet Transmission Date: Tue Sep 15 17:06:55 ET 2020
TEAS Stamp: USPTO/POA-XX.XX.XXX.XX-20200915170655784
353-88707416-750a9f3c8974b88504598604894
7faea8dd84b18fbf9a1fad23fb4dd927253d25b-
DA-06557726-20200915165403521597