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. 88401627 ION (Stylized and/or with Design, see http://tmng-al.gov.uspto.report/resting2/api/img/88401627/large) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for System control and user interface software for use with a teleoperated medical system for diagnostic and therapeutic purposes
Original Filing Basis:
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: System control and user interface software for use with a teleoperated medical system for diagnostic and therapeutic purposes; Downloadable system control and user interface software for use with a teleoperated medical system for diagnostic purposes.Class 009 for Downloadable system control and user interface software for use with a teleoperated medical system for diagnostic purposes.
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 class of goods/services in the application:
Current: Class 010 for Teleoperated medical system comprised of master control unit and patient slave manipulating unit; component medical instruments, namely, catheters and biopsy needle assemblies, for use therewith; component video equipment, namely, displays, image processors, illuminators, and endoscopic video camera instruments, for use therewith; component accessories, namely, adaptors to connect component medical instruments to manipulators, electrical and optical cables and component parts thereof, medical instrument and endoscope insertion guides and seals, and connectors for endotracheal tubes and respiration devices, for use therewith; and system control and user interface software embedded therein and for use with the teleoperated medical system for diagnostic and therapeutic purposes
Original Filing Basis:
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: Teleoperated medical system comprised of master control unit and patient slave manipulating unit; Medical equipment, namely, teleoperated medical system comprised of master control unit and patient slave manipulating unit for use in the diagnosis of disease; component medical instruments, namely, catheters and biopsy needle assemblies, for use therewith; component parts of teleoperated medical system for use therewith, namely, medical instruments, namely, catheters and biopsy needle assemblies; component video equipment, namely, displays, image processors, illuminators, and endoscopic video camera instruments, for use therewith; component parts of teleoperated medical system for use therewith, namely, video equipment, namely, displays, image processors, illuminators, and endoscopic video camera instruments; component accessories, namely, adaptors to connect component medical instruments to manipulators, electrical and optical cables and component parts thereof, medical instrument and endoscope insertion guides and seals, and connectors for endotracheal tubes and respiration devices, for use therewith; component accessories of teleoperated medical system for use therewith, namely, adaptors to connect component medical instruments to manipulators, electrical and optical cables and component parts thereof, medical instrument and endoscope insertion guides and seals, and connectors for endotracheal tubes and respiration devices.; and system control and user interface software embedded therein and for use with the teleoperated medical system for diagnostic and therapeutic purposesClass 010 for Medical equipment, namely, teleoperated medical system comprised of master control unit and patient slave manipulating unit for use in the diagnosis of disease; component parts of teleoperated medical system for use therewith, namely, medical instruments, namely, catheters and biopsy needle assemblies; component parts of teleoperated medical system for use therewith, namely, video equipment, namely, displays, image processors, illuminators, and endoscopic video camera instruments; component accessories of teleoperated medical system for use therewith, namely, adaptors to connect component medical instruments to manipulators, electrical and optical cables and component parts thereof, medical instrument and endoscope insertion guides and seals, and connectors for endotracheal tubes and respiration devices.
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 class of goods/services in the application:
Current: Class 041 for Education and training of medical personnel on the operation and use of teleoperated medical systems and components thereof
Original Filing Basis:
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: Education and training of medical personnel on the operation and use of teleoperated medical systems and components thereof; Education services, namely, providing training to medical personnel on the operation and use of teleoperated medical systems and components thereof.Class 041 for Education services, namely, providing training to medical personnel on the operation and use of teleoperated medical systems and components thereof.
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 hereby adds the following class of goods/services to the application:
New: Class 042 for Online, non-downloadable software used to provide system control and user interface software for use with a teleoperated medical system for diagnostic purposes.
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.

The applicant's current attorney information: Michelle D. Kahn. Michelle D. Kahn of SHEPPARD MULLIN RICHTER & HAMPTON LLP, is located at

      FOUR EMBARCADERO CENTER, 17TH FLOOR
      SAN FRANCISCO, California 94111
      US
The docket/reference number is 038T-.

The email address is mkahn@sheppardmullin.com

The applicants proposed attorney information: Michelle D. Kahn. Michelle D. Kahn of SHEPPARD MULLIN RICHTER & HAMPTON LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      FOUR EMBARCADERO CENTER, 17TH FLOOR
      SAN FRANCISCO, California 94111
      United States
The docket/reference number is 038T-297869.

The email address is mkahn@sheppardmullin.com

Michelle D. Kahn 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.
The applicant's current correspondence information: MICHELLE D. KAHN. MICHELLE D. KAHN of SHEPPARD MULLIN RICHTER & HAMPTON LLP, is located at

      FOUR EMBARCADERO CENTER, 17TH FLOOR
      SAN FRANCISCO, California 94111
      US
The docket/reference number is 038T-.

The email address is mkahn@sheppardmullin.com; pmarquez@sheppardmullin.com; sftmdocket@sheppardmullin.com

The applicants proposed correspondence information: Michelle D. Kahn. Michelle D. Kahn of SHEPPARD MULLIN RICHTER & HAMPTON LLP, is located at

      FOUR EMBARCADERO CENTER, 17TH FLOOR
      SAN FRANCISCO, California 94111
      United States
The docket/reference number is 038T-297869.

The email address is mkahn@sheppardmullin.com; pmarquez@sheppardmullin.com; sftmdocket@sheppardmullin.com

FEE(S)
Fee(s) in the amount of $275 is being submitted.

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /MDK/      Date: 12/19/2019
Signatory's Name: Michelle D. Kahn
Signatory's Position: Attorney of record, CA Bar Member

Response Signature
Signature: /MDK/     Date: 12/19/2019
Signatory's Name: Michelle D. Kahn
Signatory's Position: Attorney of record, CA 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:    MICHELLE D. KAHN
   SHEPPARD MULLIN RICHTER & HAMPTON LLP
   
   FOUR EMBARCADERO CENTER, 17TH FLOOR
   SAN FRANCISCO, California 94111
Mailing Address:    Michelle D. Kahn
   SHEPPARD MULLIN RICHTER & HAMPTON LLP
   FOUR EMBARCADERO CENTER, 17TH FLOOR
   SAN FRANCISCO, California 94111
        
RAM Sale Number: 88401627
RAM Accounting Date: 12/19/2019
        
Serial Number: 88401627
Internet Transmission Date: Thu Dec 19 12:37:41 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2019121912374136
7158-88401627-7009e93731d282b8a97d42873e
ea2886910fce2c41790e88e1242e84dbde0effd6
0-DA-37405036-20191219120607106234