Statement of Use

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 1553 (Rev 09/2005)

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 1553 (Rev 09/2005)

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

Trademark/Service Mark Statement of Use
(15 U.S.C. Section 1051(d))

To the Commissioner for Trademarks:
MARK: ION (Stylized and/or with Design, see mark)
SERIAL NUMBER: 88401627


OWNER AND/OR ENTITY INFORMATION
The owner proposes to amend the following:
Current: Intuitive Surgical Operations, Inc., having an address of
      1020 Kifer Road
      Sunnyvale, California 94086
      United States
Proposed: Intuitive Surgical Operations, Inc., having an address of
      1020 Kifer Road
      Sunnyvale, California 94086
      United States
      Phone:
      Email: XXXX

The owner is submitting the following allegation of use information:

For International Class 009:
Current identification: Downloadable system control and user interface software for use with a teleoperated medical system for diagnostic purposes

The mark is in use in commerce on or in connection with all of the goods/services, or to indicate membership in the collective organization listed in the application or Notice of Allowance or as subsequently modified for this specific class.

The mark was first used by the applicant, or the applicant's related company, licensee, or predecessor in interest at least as early as 03/26/2019, and first used in commerce at least as early as 03/26/2019, and is now in use in such commerce. The applicant is submitting one specimen for the class showing the mark as used in commerce on or in connection with any item in the class, consisting of a(n) photographs and screenshots showing Applicant's goods used in connection with the mark.

Original PDF file:
SPN0-1214420254-202010061 51534071032_._ION__Styliz ed__-_Software.pdf
Converted PDF file(s) (1 page)
Specimen File1
Original PDF file:
SPN0-1214420254-202010061 51534071032_._ION__Styliz ed__-_Software2.pdf
Converted PDF file(s) (1 page)
Specimen File1
Original PDF file:
SPN0-1214420254-202010061 51534071032_._ION__Styliz ed__-_Software3.pdf
Converted PDF file(s) (1 page)
Specimen File1
Original PDF file:
SPN0-1214420254-202010061 51534071032_._ION__Styliz ed__-_Software_and_Equipm ent.pdf
Converted PDF file(s) (1 page)
Specimen File1


For International Class 010:
Current identification: 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

The mark is in use in commerce on or in connection with all of the goods/services, or to indicate membership in the collective organization listed in the application or Notice of Allowance or as subsequently modified for this specific class.

The mark was first used by the applicant, or the applicant's related company, licensee, or predecessor in interest at least as early as 03/26/2019, and first used in commerce at least as early as 03/26/2019, and is now in use in such commerce. The applicant is submitting one specimen for the class showing the mark as used in commerce on or in connection with any item in the class, consisting of a(n) photograph of Applicant's goods showing use of the mark.

Original PDF file:
SPN1-1214420254-202010061 51534071032_._ION__Styliz ed__-_Software_and_Equipm ent.pdf
Converted PDF file(s) (1 page)
Specimen File1


For International Class 037:
Current identification: Installation, maintenance, and repair services for computer-assisted teleoperated medical systems and components thereof

All ITU goods/services in this class are to be deleted or processed according to a request to divide.


For International Class 041:
Current identification: Education services, namely, providing training to medical personnel on the operation and use of teleoperated medical systems and components thereof

The mark is in use in commerce on or in connection with all of the goods/services, or to indicate membership in the collective organization listed in the application or Notice of Allowance or as subsequently modified for this specific class.

The mark was first used by the applicant, or the applicant's related company, licensee, or predecessor in interest at least as early as 03/26/2019, and first used in commerce at least as early as 03/26/2019, and is now in use in such commerce. The applicant is submitting one specimen for the class showing the mark as used in commerce on or in connection with any item in the class, consisting of a(n) website screenshots showing mark used in connection with Applicant's services.

Original PDF file:
SPN3-1214420254-202010061 51534071032_._ION__Styliz ed__-_Training.pdf
Converted PDF file(s) (2 pages)
Specimen File1
Specimen File2


For International Class 042:
Current identification: Online, non-downloadable software used to provide system control and user interface software for use with a teleoperated medical system for diagnostic purposes

The mark is in use in commerce on or in connection with all of the goods/services, or to indicate membership in the collective organization listed in the application or Notice of Allowance or as subsequently modified for this specific class.

The mark was first used by the applicant, or the applicant's related company, licensee, or predecessor in interest at least as early as 03/26/2019, and first used in commerce at least as early as 03/26/2019, and is now in use in such commerce. The applicant is submitting one specimen for the class showing the mark as used in commerce on or in connection with any item in the class, consisting of a(n) photographs and screenshots showing the mark used in connection with Applicant's services.

Original PDF file:
SPN4-1214420254-202010061 51534071032_._ION__Styliz ed__-_Software.pdf
Converted PDF file(s) (1 page)
Specimen File1
Original PDF file:
SPN4-1214420254-202010061 51534071032_._ION__Styliz ed__-_Software2.pdf
Converted PDF file(s) (1 page)
Specimen File1
Original PDF file:
SPN4-1214420254-202010061 51534071032_._ION__Styliz ed__-_Software3.pdf
Converted PDF file(s) (1 page)
Specimen File1
Original PDF file:
SPN4-1214420254-202010061 51534071032_._ION__Styliz ed__-_Software_and_Equipm ent.pdf
Converted PDF file(s) (1 page)
Specimen File1


REQUEST TO DIVIDE
The applicant is requesting to divide the application and specifies the following:
The following good(s) or service(s) is/are now in use: Class 09; Class 10; Class 41; Class 42
The following good(s) or service(s) remain(s) under the Section 1(b), intent to use basis: Class 37

The owner's/holder's current 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

The owner's/holder's proposed attorney information: Michelle D. Kahn. Other appointed attorneys are Mark A. Steiner; Meghan C. Killian. Michelle D. Kahn of Duane Morris LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      2475 Hanover Street
      Palo Alto, California 94304
      United States
The docket/reference number is R3647.

The phone number is 650.847.4150.

The fax number is 650.847.4151.

The email address is ipdocketing@duanemorris.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.Correspondence Information (current):
      Michelle D. Kahn
      PRIMARY EMAIL FOR CORRESPONDENCE: mkahn@sheppardmullin.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): pmarquez@sheppardmullin.com; sftmdocket@sheppardmullin.com

The docket/reference number is 038T-297869.
Correspondence Information (proposed):
      Michelle D. Kahn
      PRIMARY EMAIL FOR CORRESPONDENCE: ipdocketing@duanemorris.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): JMLantz@duanemorris.com; MStevland@duanemorris.com

The docket/reference number is R3647.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the applicant owner/holder and the applicant owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

A fee payment in the amount of $400 will be submitted with the form, representing payment for the allegation of use for 4 classes.

A fee payment in the amount of $100 will be submitted with the form, representing payment for the request to divide fee.


Declaration

	The signatory believes that the applicant is the owner of the mark sought to be registered. For a trademark or service mark application, the mark is in use in commerce on or in connection with all the goods/services in the application or notice of allowance, or as subsequently modified. For a collective trademark, collective service mark, collective membership mark application, the applicant is exercising legitimate control over the use of the mark in commerce by members on or in connection with all the goods/services/collective membership organization in the application or notice of allowance, or as subsequently modified. For a certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce by authorized users on or in connection with the all goods/services in the application or notice of allowance, or as subsequently modified, and 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.
	The specimen(s) shows the mark as used on or in connection with the goods/services/collective membership organization in commerce.
	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.
	To the best of the signatory's knowledge, information, and belief, formed after an inquiry reasonable under the circumstances, the allegations and other factual contentions made above have evidentiary support.
	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 all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.

Signature: /E. Curtis Boeschenstein/      Date Signed: 10/07/2020
Signatory's Name: Curt Boeschenstein
Signatory's Position: Senior Product Manager
Signatory's Phone: n/a

Request to Divide Signature


Signature: /Jennifer M. Lantz/    Date: 10/07/2020
Signatory's Name: Jennifer M. Lantz
Signatory's Position: Attorney of record, California bar member

Signatory's Phone: 408-401-6894


Mailing Address:
   Duane Morris LLP
   
   2475 Hanover Street
   Palo Alto, California 94304

RAM Sale Number: 88401627
RAM Accounting Date: 10/07/2020

Serial Number: 88401627
Internet Transmission Date: Wed Oct 07 13:16:07 ET 2020
TEAS Stamp: USPTO/SOU-XX.XXX.XX.XXX-2020100713160731
5397-88401627-750f918559e4146f0fc41dfeb8
9279e62adcb087e05b4c11118b79d5b162e3ca99
-DA-16066871-20201006170807598562