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. 97649668 CADD-SOLIS(Standard Characters, see http://uspto.report/TM/97649668/mark.png) has been amended as follows:

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

The following amendments and remarks are submitted in response to the Office Action dated August 8, 2023. Applicant notes that a search of the U.S. Patent and Trademark Office records did not reveal any pending or registered mark which would bar registration under Section 2(d) of the Trademark Act. The Examining Attorney requested amendments to the identification of goods. As set forth, Applicant has amended the identification of goods to address issues raised by the Examining Attorney. The goods "medical infusion pumps" and "ambulatory infusion pumps" were objected to as indefinite. However, the U.S. Acceptable Identification of Goods and Services Manual specifically lists "infusion pumps." Thus, the more specific "medical infusion pumps" and "ambulatory infusion pumps" should be acceptable. The term "administration sets" is the generic term in the industry for medical devices such as tubing, connectors, valves, etc. used to administer fluids to a patient. Should the Examining Attorney have any questions, the Examining Attorney is encouraged to contact the undersigned at Knobbe, Martens, Olson & Bear, LLP, 2040 Main Street, Fourteenth floor, Irvine, California 92614.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Software as a component of a medical pump
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 12/00/2009 and first used in commerce at least as early as 12/00/2009 , and is now in use in such commerce.


Proposed:

Tracked Text Description: Software as a component of a medical pump; Recorded software as a component for programming and downloading medical data from medical pumps; recorded software as a component used for monitoring, controlling and maintaining medical pumps; recorded software as a component for the display and operation of applications and programs used with medical pumpsClass 009 for Recorded software as a component for programming and downloading medical data from medical pumps; recorded software as a component used for monitoring, controlling and maintaining medical pumps; recorded software as a component for the display and operation of applications and programs used with medical pumps
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 12/00/2009 and first used in commerce at least as early as 12/00/2009 , and is now in use in such commerce.

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

Applicant proposes to amend the following:

Current:
Class 010 for Medical devices and apparatus for infusion therapy and venous access; medical infusion pumps; ambulatory infusion pumps; medication cassette reservoirs for use in administering medical fluids and pharmaceuticals to patients; administration sets; catheters, tubing, bag spikes, filters, luers, check valves, anti-siphon valves, clamps and injection sites; cases for infusion pumps; pouches for ambulatory infusion pumps; and parts and fittings for all the foregoing
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 12/00/2009 and first used in commerce at least as early as 12/00/2009 , and is now in use in such commerce.


Proposed:

Tracked Text Description: Medical devices and apparatus for infusion therapy and venous access; medical infusion pumps; ambulatory infusion pumps; medication cassette reservoirs for use in administering medical fluids and pharmaceuticals to patients; cassette reservoirs for use with medical infusion pumps; administration sets; catheters, tubing, bag spikes, filters, luers, check valves, anti-siphon valves, clamps and injection sites; catheters; cases for infusion pumps; medical tubing for administering drugs; pouches for ambulatory infusion pumps; tubing for use with catheters; and parts and fittings for all the foregoing; medical devices, namely, intravenous bag spikes; blood filters; liquid medication filters; Medical instruments, namely, luer caps; luer needle locks; luer lock needles for medical use; medical valves for controlling the flow of fluid; clamps for surgical use; cases fitted for medical instruments, namely, cases for infusion pumps; pouches specially adapted for medical instruments, namely, pouches for ambulatory infusion pumps; embedded operating software sold as a component of vacuum pumps for medical purposesClass 010 for Medical devices and apparatus for infusion therapy and venous access; medical infusion pumps; ambulatory infusion pumps; cassette reservoirs for use with medical infusion pumps; administration sets; catheters; medical tubing for administering drugs; tubing for use with catheters; medical devices, namely, intravenous bag spikes; blood filters; liquid medication filters; Medical instruments, namely, luer caps; luer needle locks; luer lock needles for medical use; medical valves for controlling the flow of fluid; clamps for surgical use; cases fitted for medical instruments, namely, cases for infusion pumps; pouches specially adapted for medical instruments, namely, pouches for ambulatory infusion pumps; embedded operating software sold as a component of vacuum pumps for medical purposes
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 12/00/2009 and first used in commerce at least as early as 12/00/2009 , and is now in use in such commerce.

Webpage URL: None Provided
Webpage Date of Access: None Provided
Correspondence Information
      STEVEN J. NATAUPSKY
      PRIMARY EMAIL FOR CORRESPONDENCE: efiling@knobbe.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is ICUMM.767T.

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: /Steven J. Nataupsky/     Date: 11/10/2023
Signatory's Name: Steven J. Nataupsky
Signatory's Position: Attorney for Applicant, California bar member

Signatory's Phone Number: 949-760-0404 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:    STEVEN J. NATAUPSKY
   KNOBBE, MARTENS, OLSON & BEAR, LLP
   
   2040 MAIN STREET, 14TH FLOOR
   IRVINE, California 92614
Mailing Address:    Steven J. Nataupsky
   KNOBBE, MARTENS, OLSON & BEAR, LLP
   2040 MAIN STREET, 14TH FLOOR
   IRVINE, California 92614
        
Serial Number: 97649668
Internet Transmission Date: Fri Nov 10 18:56:32 ET 2023
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XX-2023111018563272
0472-97649668-850c4c5124fbf32d04be689d5a
7d51e7756af81d3fbb5ebd51b8d6d5a3331fd9-N
/A-N/A-20231110183244137259