Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 85955624 WISH (Stylized and/or with Design, see http://uspto.report/TM/85955624/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Education; providing of training; arranging and conducting of colloquiums, conferences, congresses, seminars, symposiums and workshops; arranging and conducting summits relating to policies concerning the provision and advancement of medical and healthcare services; organization of exhibitions for educational purposes; publication of electronic books and journals online; teaching; practical training; provision of information in relation to all these services, including provision of information on these services via a global computer network; organizing and conducting colloquiums, conferences, congresses, seminars, symposiums and workshops, educational forums and lectures in the field of public health, public health investment, health and wellness education, and prevention and treatment of medical conditions, and public heath services, and public policies and legislation regarding all of the aforementioned, and provision of information regarding all of the aforementioned
Original Filing Basis:
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 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 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[ Qatar application number 81690 filed 05/15/2013]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Education; Education and providing of training, namely, arranging and conducting of colloquiums, conferences, congresses, seminars, symposiums and workshops relating to policies concerning the provision and advancement of medical and healthcare services; providing of training; arranging and conducting summits relating to policies concerning the provision and advancement of medical and healthcare services; arranging and conducting of colloquiums, conferences, congresses, seminars, symposiums and workshops; organization of exhibitions for educational purposes relating to policies concerning the provision and advancement of medical and healthcare services; publication of electronic books and journals online; organization of exhibitions for educational purposes; teaching in the field of policies concerning the provision and advancement of medical and healthcare services; practical training in the field of policies concerning the provision and advancement of medical and healthcare services; teaching; provision of information in relation to policies concerning the provision and advancement of medical and healthcare services, including provision of information on these services via a global computer network; practical training; organizing and conducting colloquiums, conferences, congresses, seminars, symposiums and workshops, educational forums and lectures in the field of public health, public health investment, health and wellness education, prevention and treatment of medical conditions, public health services, and public policies and legislation regarding all of the aforementioned, and provision of information regarding all of the aforementioned; provision of information in relation to all these services, including provision of information on these services via a global computer network; organizing and conducting colloquiums, conferences, congresses, seminars, symposiums and workshops, educational forums and lectures in the field of public health, public health investment, health and wellness education, and prevention and treatment of medical conditions, and public heath services, and public policies and legislation regarding all of the aforementioned, and provision of information regarding all of the aforementionedClass 041 for Education and providing of training, namely, arranging and conducting of colloquiums, conferences, congresses, seminars, symposiums and workshops relating to policies concerning the provision and advancement of medical and healthcare services; arranging and conducting summits relating to policies concerning the provision and advancement of medical and healthcare services; organization of exhibitions for educational purposes relating to policies concerning the provision and advancement of medical and healthcare services; publication of electronic books and journals online; teaching in the field of policies concerning the provision and advancement of medical and healthcare services; practical training in the field of policies concerning the provision and advancement of medical and healthcare services; provision of information in relation to policies concerning the provision and advancement of medical and healthcare services, including provision of information on these services via a global computer network; organizing and conducting colloquiums, conferences, congresses, seminars, symposiums and workshops, educational forums and lectures in the field of public health, public health investment, health and wellness education, prevention and treatment of medical conditions, public health services, and public policies and legislation regarding all of the aforementioned, and provision of information regarding all of the aforementioned
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 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 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 [ Qatar application number 81690 filed 05/15/2013]. 15 U.S.C.Section 1126(d), as amended.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 044 for Consultancy services relating to healthcare, surgery, nutrition and personal behaviour; information services relating to healthcare; advisory services relating to healthcare, surgery, nutrition and personal behaviour; medical information services; providing news and information in the fields of medicine, nutrition and healthcare; provision of information relating to medical specialists and practitioners; services that cannot be placed in other classes; provision of information in relation to all these services, including provision of information on these services via a global computer network; providing healthcare information; providing medical information; providing information on government medical and pharmaceutical programs
Original Filing Basis:
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 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 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[ Qatar application number 81691 filed 05/15/2013]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Consultancy services relating to healthcare, surgery, nutrition and personal behaviour; information services relating to healthcare; advisory services relating to healthcare, surgery, nutrition and personal behaviour; medical information services; providing news and information in the fields of medicine, nutrition and healthcare; provision of information relating to medical specialists and practitioners; services that cannot be placed in other classes; provision of information in relation to all these services, including provision of information on these services via a global computer network; providing healthcare information; providing medical information; providing information on government medical and pharmaceutical programsClass 044 for Consultancy services relating to healthcare, surgery, nutrition and personal behaviour; information services relating to healthcare; advisory services relating to healthcare, surgery, nutrition and personal behaviour; medical information services; providing news and information in the fields of medicine, nutrition and healthcare; provision of information relating to medical specialists and practitioners; provision of information in relation to all these services, including provision of information on these services via a global computer network; providing healthcare information; providing medical information; providing information on government medical and pharmaceutical programs
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 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 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 [ Qatar application number 81691 filed 05/15/2013]. 15 U.S.C.Section 1126(d), as amended.

ADDITIONAL STATEMENTS
Miscellaneous Statement
With regard to the requirement of submission of the foreign registration, that application is pending. Please suspend this application until a copy of the foreign registration is available.


SIGNATURE(S)
Response Signature
Signature: /Susan Goldsmith/     Date: 03/28/2014
Signatory's Name: Susan Okin Goldsmith
Signatory's Position: Attorney of record, NJ 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 applicant'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 applicant in this matter: (1) the applicant 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 applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant'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: 85955624
Internet Transmission Date: Fri Mar 28 11:09:08 EDT 2014
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XXX-2014032811090832
4126-85955624-500cff5cf7e9218749c913a87f
146d696823e788bfb13fe5f37343f913eed1e556
-N/A-N/A-20140328102657878205