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. 86540434 NATUS(Standard Characters, see http://uspto.report/TM/86540434/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 037 for medical equipment services, namely, maintaining, repairing and refurbishing medical equipment; technical support services, namely, troubleshooting in the nature of repairing medical equipment; medical equipment exchange services, namely, collection of medical equipment for recycling; maintenance and installation of computer hardware; maintenance and installation of medical apparatus, equipment and instruments for perinatal care
Original Filing Basis:
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 12/31/1989 and first used in commerce at least as early as 12/31/1989 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Medical equipment services, namely, maintaining, repairing and refurbishing medical equipment; technical support services, namely, troubleshooting in the nature of repairing medical equipment; medical equipment exchange services, namely, collection of medical equipment for recycling; maintenance and installation of computer hardware; maintenance and installation of medical apparatus, equipment and instruments for perinatal careClass 037 for Medical equipment services, namely, maintaining, repairing and refurbishing medical equipment; technical support services, namely, troubleshooting in the nature of repairing medical equipment; medical equipment exchange services, namely, collection of medical equipment for recycling; maintenance and installation of computer hardware; maintenance and installation of medical apparatus, equipment and instruments for perinatal care
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 12/31/1989 and first used in commerce at least as early as 12/31/1989 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 038 for providing an interactive website for patients and caretakers of perinatal patients; Electronic transmission of medical data and healthcare information to medical providers; wireless communications services, namely, the transmission of data from implanted medical devices by mobile communication devices
Original Filing Basis:
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 12/31/2003 and first used in commerce at least as early as 12/31/2003 , and is now in use in such commerce.

Proposed:
Tracked Text Description: providing an interactive website for patients and caretakers of perinatal patients; Electronic transmission of medical data and healthcare information to medical providers; wireless communications services, namely, the transmission of data from implanted medical devices by mobile communication devicesClass 038 for Electronic transmission of medical data and healthcare information to medical providers; wireless communications services, namely, the transmission of data from implanted medical devices by mobile communication devices
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 12/31/2003 and first used in commerce at least as early as 12/31/2003 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 044 for Consultation services in the field of medical information provided to medical professionals; consultation services in the use of medical and surgical equipment; Providing an on-line computer database, namely, a repository of information in the field of medical data and healthcare information accessible to healthcare providers; Computer services, namely, providing a database network for the purposes of collecting and sharing performance data and clinical data for medical devices; Providing a web site featuring medical information; Medical services, namely, providing medical information relating to perinatal diseases and disorders and the monitoring and management of said perinatal diseases and disorders
Original Filing Basis:
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 12/31/1989 and first used in commerce at least as early as 12/31/1989 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Consultation services in the field of medical information provided to medical professionals; consultation services in the use of medical and surgical equipment; consultation services in the nature of providing information in the use of medical and surgical equipment, namely medical and surgical equipment relating to newborn care, neurology, sleep disorders, hearing disorders and balance disorders; Providing an on-line computer database, namely, a repository of information in the field of medical data and healthcare information accessible to healthcare providers; Computer services, namely, providing a database network for the purposes of collecting and sharing performance data and clinical data for medical devices; Computer services, namely, providing a database network for the purposes of collecting and sharing medical performance data and clinical medical data for medical devices; Providing a web site featuring medical information; Medical services, namely, providing medical information relating to perinatal diseases and disorders and the monitoring and management of said perinatal diseases and disorders; providing an interactive website for parents and caretakers of perinatal patients featuring perinatal medical informationClass 044 for Consultation services in the field of medical information provided to medical professionals; consultation services in the nature of providing information in the use of medical and surgical equipment, namely medical and surgical equipment relating to newborn care, neurology, sleep disorders, hearing disorders and balance disorders; Providing an on-line computer database, namely, a repository of information in the field of medical data and healthcare information accessible to healthcare providers; Computer services, namely, providing a database network for the purposes of collecting and sharing medical performance data and clinical medical data for medical devices; Providing a web site featuring medical information; Medical services, namely, providing medical information relating to perinatal diseases and disorders and the monitoring and management of said perinatal diseases and disorders; providing an interactive website for parents and caretakers of perinatal patients featuring perinatal medical information
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 12/31/1989 and first used in commerce at least as early as 12/31/1989 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 045 for patient support program offering non-medical, administrative support services, namely, emotional support and help with medical forms; Licensing of computer software; Social networking services in the field of perinatal diseases and disorders and the monitoring and management of said diseases and disorders provided via a website
Original Filing Basis:
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 12/31/2013 and first used in commerce at least as early as 12/31/2013 , and is now in use in such commerce.

Proposed: Class 045 for patient support program offering non-medical, administrative support services, namely, emotional support and help with medical forms; Licensing of computer software; Social networking services in the field of perinatal diseases and disorders and the monitoring and management of said diseases and disorders provided via a website
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 12/31/2013 and first used in commerce at least as early as 12/31/2013 , and is now in use in such commerce.
Applicant hereby adds the following class of goods/services to the application:
New: Class 041 for Consultation services in the nature of providing training services in the use and operation of medical and surgical equipment relating to newborn care, neurology, sleep disorders, hearing disorders and balance disorders
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 12/31/1989 and first used in commerce at least as early as 12/31/1989 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 041 . The specimen(s) submitted consists of training services advertisement .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPN0-7322040137-20150514100442976206_._Use_in_Commerce_2015_-_Class_041_-_training_invite.pdf
Converted PDF file(s) ( 2 pages)
Specimen File1
Specimen File2

ADDITIONAL STATEMENTS
Miscellaneous Statement
Natus Neurology Incorporated operates as a wholly owned subsidiary Natus Medical Incorporated


FEE(S)
Fee(s) in the amount of $275 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. Section 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 amendment to allege use (AAU) unsigned, all statements in the application or AAU and this submission based on the signatory's own knowledge are true, and all statements in the application or AAU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AAU: If the applicant filed an unsigned application under 15 U.S.C. Section 1051(a) or AAU under 15 U.S.C. Section 1051(c), the signatory additionally believes that: the applicant is the owner of the trademark/service mark sought to be registered; the applicant or the applicant's related company or licensee is using the mark in commerce and has been using the mark in commerce as of the filing date of the application or AAU on or in connection with the goods/services in the application or AAU, and such use by the applicant's related company or licensee inures to the benefit of the applicant; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AAU on or in connection with the goods/services in the application or AAU; and to the best of the signatory's knowledge and belief, no other person has 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 of such other person, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. Section 1051(b), Section 1126(d), and/or Section 1126(e), the signatory additionally believes that: the applicant is entitled to use the mark in commerce; the applicant has a bona fide intention and has had a bona fide intention as of the application filing date to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the goods/services in the application; and to the best of the signatory's knowledge and belief, no other person has 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 of such other person, to cause confusion or mistake, or to deceive.

Signature: /Mathew J. Temmerman/      Date: 05/14/2015
Signatory's Name: Mathew J. Temmerman
Signatory's Position: Attorney for Applicant, CA Bar 232407
Signatory's Phone Number: 4152938436


Response Signature
Signature: /Mathew J. Temmerman/     Date: 05/14/2015
Signatory's Name: Mathew J. Temmerman
Signatory's Position: Attorney for Applicant, CA Bar No. 232407

Signatory's Phone Number: 4152938436

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.

        
RAM Sale Number: 86540434
RAM Accounting Date: 05/14/2015
        
Serial Number: 86540434
Internet Transmission Date: Thu May 14 10:21:19 EDT 2015
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2015051410211978
9849-86540434-530614ab5e3eeff7cf5aede975
79df34fc5c8b2a23291889eefdea0779feec365-
CC-8820-20150514100442976206