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. 90751710 INSTINCT(Standard Characters, see http://uspto.report/TM/90751710/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 010 for Devices for monitoring blood glucose for medical purposes; insulin pumps; insulin delivery systems comprised of glucose monitors, insulin monitors, infusion sets, infusion reservoir and downloadable mobile application software used to display, manage, monitor, and track blood glucose and insulin for use in diabetes
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: Devices for monitoring blood glucose for medical purposes; insulin pumps; insulin delivery systems comprised of glucose monitors, insulin monitors, infusion sets, infusion reservoir and downloadable mobile application software used to display, manage, monitor, and track blood glucose and insulin for use in diabetes; medical apparatuses, namely, insulin delivery systems comprised of glucose monitors, insulin monitors, infusion sets, and infusion reservoirs sold as a unit and used to display, manage, monitor, and track blood glucose and insulin for use in diabetes patient managementClass 010 for Devices for monitoring blood glucose for medical purposes; insulin pumps; medical apparatuses, namely, insulin delivery systems comprised of glucose monitors, insulin monitors, infusion sets, and infusion reservoirs sold as a unit and used to display, manage, monitor, and track blood glucose and insulin for use in diabetes patient management
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


Applicant hereby adds the following class of goods/services to the application:
New: Class 009 for Downloadable mobile application software for mobile devices used to display, manage, monitor, and track blood glucose and insulin for use in diabetes
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


ADDITIONAL STATEMENTS
Miscellaneous Statement
This is in response to the Office Action dated February 26, 2022 in connection with the above-referenced application. The Examining Attorney has initially refused registration of the subject mark based on an alleged likelihood of confusion with the mark INSTINCT in U.S. Registration No. 4190636. Applicant notes that the deadline to file the Renewal Application under Sections 8 and 9 for the cited registration was August 14, 2022 and that a Renewal Application was not timely filed by the cited registrant. Under TMEP Section 716.02(e), Applicant respectfully request suspension of the subject application pending a determination of whether the cited registrant timely files, and the PTO accepts, the §8 affidavit and whether the cited registration is renewed.

Correspondence Information (current):
      Medtronic Minimed, Inc
      PRIMARY EMAIL FOR CORRESPONDENCE: jennifer.m.venckus@medtronic.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is T88968253US0.
Correspondence Information (proposed):
      Medtronic Minimed, Inc
      PRIMARY EMAIL FOR CORRESPONDENCE: jennifer.m.venckus@medtronic.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): rs.trademarkstwo@medtronic.com

The docket/reference number is T88968253US0.

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).

FEE(S)
Fee(s) in the amount of $350 is being submitted.

SIGNATURE(S)
Declaration Signature

DECLARATION: 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, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, 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. 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.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/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; the signatory is properly authorized to execute the declaration on behalf of the applicant; 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. 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.

Signature: /Sharon Mughal/      Date: 08/23/2022
Signatory's Name: Sharon Mughal
Signatory's Position: Attorney of Record, CA State Bar Member
Signatory's Phone Number: 5082618137

Signature method: Sent to third party for signature

Response Signature
Signature: /Sharon Mughal/     Date: 08/23/2022
Signatory's Name: Sharon Mughal
Signatory's Position: Attorney Of Record, CA State Bar Member

Signatory's Phone Number: 508-261-8137 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:    Medtronic Minimed, Inc
   
   IP Legal
   15 Hampshire street
   MANSFIELD, Massachusetts 02048
Mailing Address:    Medtronic Minimed, Inc
   
   IP Legal
   15 Hampshire street
   MANSFIELD, Massachusetts 02048
        
PAYMENT: 90751710
PAYMENT DATE: 08/23/2022
        
Serial Number: 90751710
Internet Transmission Date: Tue Aug 23 12:49:53 ET 2022
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2022082312495427
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fb3d4db39d277cc0b419b082c31cc03cf6a5e4d4
-DA-49532738-20220823085747534669