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 09/30/2020)

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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 09/30/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88765771 VISU360(Standard Characters, see http://uspto.report/TM/88765771/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 042 for a web based software for remote eye examination and refraction that connects eye doctors or optometrists with ophthalmic devices, enables them to control the devices and video chat with patients
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: a web based software for remote eye examination and refraction that connects eye doctors or optometrists with ophthalmic devices, enables them to control the devices and video chat with patients; Providing temporary use of a non-downloadable web-based software for remote eye examination and refraction that connects eye doctors or optometrists with ophthalmic devices, enables them to control the devices and video chat with patientsClass 042 for Providing temporary use of a non-downloadable web-based software for remote eye examination and refraction that connects eye doctors or optometrists with ophthalmic devices, enables them to control the devices and video chat with patients
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.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Germany registration number 302020001284 registered 02/05/2020 with a renewal date of __________ and an expiration date of 01/22/2030 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU0-160793250-105618111_ ._VISU360_German_Certific ate.pdf
Converted PDF file(s) ( 4 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3Foreign Registration-4
Original PDF file:
FRU0-160793250-105618111_ ._VISU360_German_Certific ate_Translation.pdf
Converted PDF file(s) ( 2 pages) Foreign Registration-1Foreign Registration-2

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Carl Zeiss Vision GmbH, a limited liability company legally organized under the laws of Germany, having an address of
      Turnstraße 27
      Aalen, 73430
      Germany

Proposed: Carl Zeiss Vision GmbH, a limited liability company legally organized under the laws of Germany, having an address of
      Turnstraße 27
      Aalen, 73430
      Germany
      Email Address: XXXX
Correspondence Information (current):
      Ronald S. Kadden
      PRIMARY EMAIL FOR CORRESPONDENCE: rkadden@vonmaltitz.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): ddonnelly@vonmaltitz.com

The docket/reference number is 4500.
Correspondence Information (proposed):
      Ronald S. Kadden
      PRIMARY EMAIL FOR CORRESPONDENCE: rkadden@vonmaltitz.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): ddonnelly@vonmaltitz.com

The docket/reference number is 4500.

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)
Declaration Signature
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice.
Response Signature
Signature: /Ronald S. Kadden/     Date: 10/08/2020
Signatory's Name: Ronald S. Kadden
Signatory's Position: Attorney of record, New York Bar member

Signatory's Phone Number: 212-661-1400

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:    Ronald S. Kadden
   VON MALTITZ DERENBERG KUNIN JANSSEN & GIORDANO
   
   60 EAST 42ND STREET
   NEW YORK, New York 10165
Mailing Address:    Ronald S. Kadden
   VON MALTITZ DERENBERG KUNIN JANSSEN & GIORDANO
   60 EAST 42ND STREET
   NEW YORK, New York 10165
        
Serial Number: 88765771
Internet Transmission Date: Thu Oct 08 11:04:15 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XX-20201008110415931
850-88765771-750d7c1ddd0e3862ba9bba2c0be
1cad2f40416c7141e0eb47cabe737a7cafb9a163
-N/A-N/A-20201008105618111449