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 11/30/2023)

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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 11/30/2023)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 90080256 ELIOS(Standard Characters, see http://uspto.report/TM/90080256/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 010 for Medical devices for use in connection with eye surgery; medical devices, namely, lasers for incisions during eye surgery; medical devices for use in treating glaucoma; medical ophthalmological equipment, namely, devices for draining eye fluid; surgical instruments, namely, lasers for use in eye surgery
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: Medical devices for use in connection with eye surgery; Medical devices being surgical instruments for use in connection with eye surgery; medical devices, namely, lasers for incisions during eye surgery; medical devices for use in treating glaucoma; medical ophthalmological equipment, namely, devices for draining eye fluid; surgical instruments, namely, lasers for use in eye surgeryClass 010 for Medical devices being surgical instruments for use in connection with eye surgery; medical devices, namely, lasers for incisions during eye surgery; medical devices for use in treating glaucoma; medical ophthalmological equipment, namely, devices for draining eye fluid; surgical instruments, namely, lasers for use in eye surgery
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:

Current:
Class 042 for medical clinical research in the field of ophthalmology; medical research relating to eye health, ophthalmic surgery, laser eye surgery, the medical treatment of eye diseases, the medical treatment of glaucoma; providing medical information relating to eye health, ophthalmic surgery, laser eye surgery, the medical treatment of eye diseases, the medical treatment of glaucoma; providing a website featuring medical information in the field of ophthalmology; medical publications featuring information in the field of ophthalmology
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: Medical clinical research in the field of ophthalmology; medical research relating to eye health, ophthalmic surgery, laser eye surgery, the medical treatment of eye diseases, the medical treatment of glaucoma; providing medical information relating to eye health, ophthalmic surgery, laser eye surgery, the medical treatment of eye diseases, the medical treatment of glaucoma; providing a website featuring medical information in the field of ophthalmology; medical publications featuring information in the field of ophthalmologyClass 042 for Medical clinical research in the field of ophthalmology; medical research relating to eye health, ophthalmic surgery, laser eye surgery, the medical treatment of eye diseases, the medical treatment of glaucoma
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:

Current:
Class 044 for ophthalmology services, namely, treatment of eye diseases, treatment of glaucoma and eye surgery; surgery, namely, laser eye surgery
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: Ophthalmology services, namely, treatment of eye diseases, treatment of glaucoma and eye surgery; surgery, namely, laser eye surgery; providing medical information relating to eye health, ophthalmic surgery, laser eye surgery, the medical treatment of eye diseases, and the medical treatment of glaucoma; providing a website featuring medical information in the field of ophthalmologyClass 044 for Ophthalmology services, namely, treatment of eye diseases, treatment of glaucoma and eye surgery; surgery, namely, laser eye surgery; providing medical information relating to eye health, ophthalmic surgery, laser eye surgery, the medical treatment of eye diseases, and the medical treatment of glaucoma; providing a website featuring medical information in the field of ophthalmology
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.
Correspondence Information (current):
      AARON D. HENDELMAN
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@wsgr.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 55919-TM1001.
Correspondence Information (proposed):
      Aaron D. Hendelman
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@wsgr.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 55919-TM1001.

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: /Chidera Anyanwu/     Date: 12/30/2020
Signatory's Name: Chidera N. Anyanwu
Signatory's Position: Attorney of record, California bar member

Signatory's Phone Number: 650-493-9300

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:    AARON D. HENDELMAN
   WILSON SONSINI GOODRICH & ROSATI
   
   650 PAGE MILL ROAD
   PALO ALTO, California 94304-1050
Mailing Address:    Aaron D. Hendelman
   WILSON SONSINI GOODRICH & ROSATI
   650 PAGE MILL ROAD
   PALO ALTO, California 94304-1050
        
Serial Number: 90080256
Internet Transmission Date: Wed Dec 30 17:01:19 ET 2020
TEAS Stamp: USPTO/ROA-XX.X.XX.XX-2020123017011918725
1-90080256-750d6f8bb6c57d9c5ecf687da4f9b
eb6257925d35b7b4df50637ef142f5c5738e4e-N
/A-N/A-20201230115028258750