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. 90621008 OSCAR(Standard Characters, see http://uspto.report/TM/90621008/mark.png) has been amended as follows:

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

REMARKS

The Office states the proposed mark may be refused registration in light of U.S. Application No. 88762285. The Applicant respectfully disagrees.

Although the Applicant is not required to address the potential citation, the Applicant contends there is no likelihood of confusion that would result from registration of Applicant’s proposed mark. The Applicant notes the cited application is directed, in part, to software for interfacing computer peripherals, and software for computer switching equipment. In vast contrast, the proposed mark is directed to medical software and equipment for facilitating simulated eye surgery. These are vastly differing fields and ones that would not overlap in the marketplace. Indeed, the consumers of Applicant’s marks would be medical personnel, such as doctors, medical researcher or medical students, that would be utilizing a highly specialized software and hardware system for a very distinct and specific purpose. Accordingly, there would be no likelihood of confusion between the marks.

The Office further states the identification of goods is indefinite and requires clarification. The Applicant has amended the identification of goods in substantial compliance with the Office’s suggestions and believes the identification is now acceptable.

The Applicant believes all outstanding issues have been resolved and respectfully requests the application be passed to publication.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for A hardware and software solution used for remote eye surgery training. The hardware is an animatronic hardware assembly customized to reproduce human and animal anatomical eye movements for the purposes of simulating a live, direct or remote surgery training. The software includes all necessary hardware and software control, remote control, and safety systems necessary to operate the hardware system. An operating system governs the human-like and/or animal-like movement of the animatronics which is species dependent. A hardware and software solution for calibrating a target location in eye. A hardware and software solution used for testing of performance of surgical equipment and applications in live, virtual, and remote. A hardware and software solution for training surgeons and technicians. A hardware and software solution integrating the GUI of a laser device to the robotics of the animatronic system
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: The applicant believes the applicant is entitled to use the mark in commerce on or in connection with the goods or 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. 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.


Proposed:

Tracked Text Description: A hardware and software solution used for remote eye surgery training. The hardware is an animatronic hardware assembly customized to reproduce human and animal anatomical eye movements for the purposes of simulating a live, direct or remote surgery training. The software includes all necessary hardware and software control, remote control, and safety systems necessary to operate the hardware system. An operating system governs the human-like and/or animal-like movement of the animatronics which is species dependent. A hardware and software solution for calibrating a target location in eye. A hardware and software solution used for testing of performance of surgical equipment and applications in live, virtual, and remote. A hardware and software solution for training surgeons and technicians. A hardware and software solution integrating the GUI of a laser device to the robotics of the animatronic system; Surgical simulators being computer hardware and recorded software used for training in the performance of remote eye surgery; medical workstation in the nature of computer hardware and recorded software for calibrating a target location in a patient's eye during eye surgery; medical workstation in the nature of computer hardware and recorded software for testing the performance of surgical equipment and computer applications in live, virtual, and remote eye surgery procedures; medical workstations in the nature of surgical simulators comprised of computer hardware and recorded software for training surgeons and technicians in the performance of eye surgeries; surgical simulators being computer hardware and recorded software to provide a graphical user interface to enable users to control incorporated medical laser devices in connection with robotic and animatronic simulator componentsClass 009 for Surgical simulators being computer hardware and recorded software used for training in the performance of remote eye surgery; medical workstation in the nature of computer hardware and recorded software for calibrating a target location in a patient's eye during eye surgery; medical workstation in the nature of computer hardware and recorded software for testing the performance of surgical equipment and computer applications in live, virtual, and remote eye surgery procedures; medical workstations in the nature of surgical simulators comprised of computer hardware and recorded software for training surgeons and technicians in the performance of eye surgeries; surgical simulators being computer hardware and recorded software to provide a graphical user interface to enable users to control incorporated medical laser devices in connection with robotic and animatronic simulator components
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: The applicant believes the applicant is entitled to use the mark in commerce on or in connection with the goods or 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. 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.

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

Correspondence Information (current):
      Anna M. Vradenburgh
      PRIMARY EMAIL FOR CORRESPONDENCE: tmdocketing@onellp.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): avradenburgh@onellp.com

The docket/reference number is ACEVI010US01.
Correspondence Information (proposed):
      Anna M. Vradenburgh
      PRIMARY EMAIL FOR CORRESPONDENCE: tmdocketing@onellp.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): avradenburgh@onellp.com

The docket/reference number is ACEVI010US01.

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: /anna m vradenburgh/     Date: 05/10/2022
Signatory's Name: Anna M. Vradenburgh
Signatory's Position: Attorney of Record, California Bar Member

Signatory's Phone Number: 424-279-8202 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:    Anna M. Vradenburgh
   ONE LLP
   
   2815 Townsgate Road, Suite 320
   Westlake Village, California 91361
Mailing Address:    Anna M. Vradenburgh
   ONE LLP
   2815 Townsgate Road, Suite 320
   Westlake Village, California 91361
        
Serial Number: 90621008
Internet Transmission Date: Tue May 10 19:13:47 ET 2022
TEAS Stamp: USPTO/ROA-XXXX:XXX:XXXX:XXXX::XXXX-20220
510191347274872-90621008-800c3d2c23347a3
ac4b7a484bc3b244e23819536325e3a7b829821f
4a3a6750fb-N/A-N/A-20220510165954672294