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 09/20/2020)

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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 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 79231635 NUCLEUS(Standard Characters, see http://uspto.report/TM/79231635/mark.png) has been amended as follows:

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

Applicant acknowledges the non-final office action mailed to the International Bureau on May 22, 2018, in which the Examiner cited prior pending applications and registrations as potential likelihoods of confusion.  Applicant expressly reserves the right to submit arguments to address the citations if and when the noted prior pending applications mature to registration.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Business management services; business administration services; business assistance services; business accounts management; preparation of business reports; data management services; office management services (for others); billing services; health insurance administration; administration of health insurance claims; marketing services; advertising services; medical referrals; business administration of patient reimbursement programs; business management of reimbursement programs for others; all of the aforesaid services being provided online, electronically or by other means
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Business management services; business administration services; business assistance services; business accounts management; preparation of business reports; data management services; data management services, namely data processing; office management services (for others); office management services, namely providing office functions for others; billing services; health insurance administration; tracking and monitoring of health insurance administration compliance for business purposes; administration of health insurance claims; administration of health insurance claims auditing services; marketing services; advertising services; medical referrals; business administration of patient reimbursement programs; business management of reimbursement programs for others; all of the aforesaid services being provided online, electronically or by other meansClass 035 for Business management services; business administration services; business assistance services; business accounts management; preparation of business reports; data management services, namely data processing; office management services, namely providing office functions for others; billing services; tracking and monitoring of health insurance administration compliance for business purposes; administration of health insurance claims auditing services; marketing services; advertising services; medical referrals; business administration of patient reimbursement programs; business management of reimbursement programs for others; all of the aforesaid services being provided online, electronically or by other means

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; computer and technology services, including computer and technology services for securing patient medical data, patient personal and financial information, hearing aid data and prosthetic hearing device data; software as a service (saas) for medical data capture, storage, processing, and transmission; software as a service (saas), including software as a service (saas) for practice management, clinics and managing clinical data; software as a service (saas) for fitting, programming, controlling, testing, monitoring and managing hearing aids, prosthetic hearing devices and associated speech processors; software as a service (saas) for use in the diagnosis, treatment or amelioration of hearing deficiencies; software as a service (saas) for patient financing, patient credit card processing, patient communications, patient claims processing, patient call sourcing, patient calendaring and patient document processing; data storage (other than physical storage); computerised data storage services
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Scientific and technological services and research and design relating thereto; Scientific and technological services and research and design relating thereto, namely research in the field of hearing loss and development of new hearing aid products; industrial analysis and research services; design and development of computer hardware and software; computer and technology services, namely software as a services (SAAS) feature software for securing patient medical data, patient personal and financial information, hearing aid data and prosthetic hearing device data; computer and technology services, including computer and technology services for securing patient medical data, patient personal and financial information, hearing aid data and prosthetic hearing device data; software as a service (SaaS) featuring software for medical data capture, storage, processing, and transmission; software as a service (saas) for medical data capture, storage, processing, and transmission; software as a service (SaaS) featuring software for practice management, managing clinics and managing clinical data; software as a service (saas), including software as a service (saas) for practice management, clinics and managing clinical data; software as a service (SaaS) featuring software for fitting, programming, controlling, testing, monitoring and managing hearing aids, prosthetic hearing devices and associated speech processors; software as a service (saas) for fitting, programming, controlling, testing, monitoring and managing hearing aids, prosthetic hearing devices and associated speech processors; software as a service (SaaS) featuring software for use in the diagnosis, managing of treatment plans, and monitoring the amelioration of hearing deficiencies; software as a service (saas) for use in the diagnosis, treatment or amelioration of hearing deficiencies; software as a service (SaaS) featuring software for managing patient financing, patient credit card processing, patient communications, patient claims processing, patient call sourcing, patient calendaring and patient document processing; software as a service (saas) for patient financing, patient credit card processing, patient communications, patient claims processing, patient call sourcing, patient calendaring and patient document processing; electronic data storage; data storage (other than physical storage); computerised electronic data storage services; computerised data storage servicesClass 042 for Scientific and technological services and research and design relating thereto, namely research in the field of hearing loss and development of new hearing aid products; design and development of computer hardware and software; computer and technology services, namely software as a services (SAAS) feature software for securing patient medical data, patient personal and financial information, hearing aid data and prosthetic hearing device data; software as a service (SaaS) featuring software for medical data capture, storage, processing, and transmission; software as a service (SaaS) featuring software for practice management, managing clinics and managing clinical data; software as a service (SaaS) featuring software for fitting, programming, controlling, testing, monitoring and managing hearing aids, prosthetic hearing devices and associated speech processors; software as a service (SaaS) featuring software for use in the diagnosis, managing of treatment plans, and monitoring the amelioration of hearing deficiencies; software as a service (SaaS) featuring software for managing patient financing, patient credit card processing, patient communications, patient claims processing, patient call sourcing, patient calendaring and patient document processing; electronic data storage; computerised electronic data storage services

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 044 for Medical services; audiologist services, including hearing aid fitting services and prosthetic hearing device fitting services; speech and hearing therapy; medical services for the treatment and aid of the hearing impaired; auditory habilitation and rehabilitation services; medical counselling; optometry services; speech and language therapy services; surgical treatment and diagnostic services; providing medical and device information
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Medical services; audiologist services, including hearing aid fitting services and prosthetic hearing device fitting services; audiologist services, namely hearing aid services and prosthetic hearing device services; speech and hearing therapy; medical services for the treatment and aid of the hearing impaired; auditory habilitation and rehabilitation services; medical counselling; optometry services; speech and language therapy services; surgical treatment and diagnostic services; surgical treatment services; providing medical and device information; medical diagnostic services for identifying hearing deficiencies; providing medical and medical device informationClass 044 for Medical services; audiologist services, namely hearing aid services and prosthetic hearing device services; speech and hearing therapy; medical services for the treatment and aid of the hearing impaired; auditory habilitation and rehabilitation services; medical counselling; optometry services; speech and language therapy services; surgical treatment services; medical diagnostic services for identifying hearing deficiencies; providing medical and medical device information

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

SIGNATURE(S)
Response Signature
Signature: /Jason M. Vogel/     Date: 11/20/2018
Signatory's Name: Jason Vogel
Signatory's Position: Attorney for Applicant, California and New York Bar Member

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; 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. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 79231635
Internet Transmission Date: Tue Nov 20 15:34:28 EST 2018
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XXX-201811201534284
05234-79231635-610dddd2ceab114821162bd53
f2c2dfb597104ca71699ace2134b8d3c2fc606ea
9-N/A-N/A-20181120101129932411