Response to Office Action

PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

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PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 90072799 PRISM(Standard Characters, see http://uspto.report/TM/90072799/mark.png) has been amended as follows:

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

This correspondence (“Response”) is filed in response to the Office Action of 10 Nov 2020 (“Action”) regarding the refusal to register Applicant’s PRISM mark (“Mark”) as set forth in the United States Patent and Trademark Office (“PTO”) Serial No. 90072799 (“Application”) filed by Proprio, Inc. (”Applicant”) in connection with “3D scanners; scanners; camera hardware system for scanning comprised of video cameras, display monitors, image sensors, 3D scanners, computers; 3D scanning equipment, namely, display monitors, computers, image sensors, video cameras, and operating system and application software for scanning 3D images, video capture and playback, providing virtual and mixed reality display, and data registration and integration; virtual reality headsets” in Class 9 and “Optical apparatus and instruments, medical, dental and surgical Medical imaging apparatus in the nature of apparatus for imaging and 3D scanning for medical, dental, and surgical purposes” in Class 10 (“Goods”). In the Action, the Examiner required revised descriptions for the Goods and noted numerous prior registered or filed applications that may result in a likelihood of confusion refusal for Applicant's Mark. In this Response, Applicant is amending the goods in Class 9 and deleting Class 10 in its entirety. In light of these amendments, the cited marks (both registrations and pending applications) are no longer a barrier to the current Application, being different in both the marks themselves and the claimed goods/services. It is Applicant’s position that the Mark is deserving of registration on the Principal Register. Applicant therefore respectfully requests the Examiner permit the Application to proceed to publication. Should there be any outstanding issues, the Examiner may contact the undersigned directly.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant hereby deletes the following class of goods/services from the application.
Class 010 for Optical apparatus and instruments, medical, dental and surgical Medical imaging apparatus in the nature of apparatus for imaging and 3D scanning for medical, dental, and surgical purposes

Applicant proposes to amend the following:

Current:
Class 009 for 3D scanners; scanners; camera hardware system for scanning comprised of video cameras, display monitors, image sensors, 3D scanners, computers; 3D scanning equipment, namely, display monitors, computers, image sensors, video cameras, and operating system and application software for scanning 3D images, video capture and playback, providing virtual and mixed reality display, and data registration and integration; virtual reality headsets
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: 3D scanners; Camera hardware system for scanning comprised of multimodal camera arrays and downloadable operating software for use in the medical and surgical fields; scanners; camera hardware system for scanning comprised of video cameras, display monitors, image sensors, 3D scanners, computers; 3D scanning equipment, namely, display monitors, computers, image sensors, video cameras, and operating system and application software for scanning 3D images, video capture and playback, providing virtual and mixed reality display, and data registration and integration; virtual reality headsetsClass 009 for Camera hardware system for scanning comprised of multimodal camera arrays and downloadable operating software for use in the medical and surgical fields
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.

Webpage URL: None Provided
Webpage Date of Access: None Provided

Correspondence Information (current):
      CLAIRE F. HAWKINS
      PRIMARY EMAIL FOR CORRESPONDENCE: IP@foster.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 24774-62003.
Correspondence Information (proposed):
      Claire F. Hawkins
      PRIMARY EMAIL FOR CORRESPONDENCE: IP@foster.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 24774-62003.

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: /Claire F. Hawkins/     Date: 05/10/2021
Signatory's Name: Claire F. Hawkins
Signatory's Position: Attorney of Record, Washington State Bar Member

Signatory's Phone Number: 206.447.4400 Signature method: Sent to third party for signature

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:    CLAIRE F. HAWKINS
   FOSTER GARVEY P.C.
   
   1111 THIRD AVENUE, SUITE 3000
   SEATTLE, Washington 98101
Mailing Address:    Claire F. Hawkins
   FOSTER GARVEY P.C.
   1111 THIRD AVENUE, SUITE 3000
   SEATTLE, Washington 98101
        
Serial Number: 90072799
Internet Transmission Date: Mon May 10 19:19:43 ET 2021
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2021051019194330
4593-90072799-780c37e93c35f485a125a9d473
6a12c76e080cb4955a8c2ad6f8b954cc5c9134-N
/A-N/A-20210510183303030788