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
The table below presents the data as entered.
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.
90094804 VISULYZE(Standard Characters, see http://uspto.report/TM/90094804/mark.png) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
With respect to prior filed application No. 90297163, Applicant defers its response, except as follows. Applicant believes that the business of the prior applicant is unrelated to Applicant's
business in general and, in particular, to Applicant's software, as amended herein. When the current broad identification of goods in the prior application is made more specific, as it will be, there
will be no basis for a Section 2(d) refusal.
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current:
Class 009 for software 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.
Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority
based upon a foreign application.
For a certification 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, 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, and the
applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Germany application number 3020200146844 filed 07/09/2020]. 15 U.S.C.Section 1126(d), as
amended.
Proposed:
Tracked Text Description: software in the field of ophthalmology;
Downloadable software used in the field of ophthalmology
to collect and analyze clinical data and to optimize intraocular lens calculation in treatment planningClass 009 for Downloadable software used in the field of ophthalmology to collect and
analyze clinical data and to optimize intraocular lens calculation in treatment planning
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
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority
based upon a foreign application.
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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Germany application number 3020200146844 filed 07/09/2020]. 15 U.S.C.Section
1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the
foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Germany registration number 302020014684 registered 07/20/2020
with a renewal date of __________ and an expiration date of 07/09/2030 ], 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:
FRU0-160793250-162657841_ ._VISULYZE_German_Certfic
ate.pdf
Converted PDF file(s) ( 4 pages)
Foreign Registration-1Foreign Registration-2Foreign Registration-3Foreign Registration-4
Original PDF file:
FRU0-160793250-162657841_ ._VISULYZE_German_Cert_Tr
anslation.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.
Correspondence Information (current):
RONALD S. KADDEN
PRIMARY EMAIL FOR CORRESPONDENCE: rkadden@vonmaltitz.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED
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): NOT PROVIDED
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: 02/04/2021
Signatory's Name: Ronald S. Kadden
Signatory's Position: Attorney of record, New York Bar member
Signatory's Phone Number: 212-661-1400 Signature method: Signed directly within the form
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
SUITE 1948
60 EAST 42ND STREET
NEW YORK, New York 10165
Mailing Address: Ronald S. Kadden
VON MALTITZ DERENBERG KUNIN JANSSEN & GIORDANO
SUITE 1948
60 EAST 42ND STREET
NEW YORK, New York 10165
Serial Number: 90094804
Internet Transmission Date: Thu Feb 04 16:44:38 ET 2021
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XX-20210204164438216
419-90094804-76036a6eb39cdd0d299abe85bda
cfa3361c2f1f7eddc99f23fb17dfbf470c850c7-
N/A-N/A-20210204162657841336