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

The table below presents the data as entered.

Input Field
Entered
SERIAL NUMBER88027997
LAW OFFICE ASSIGNEDLAW OFFICE 107
MARK SECTION
MARK https://tmng-al.uspto.gov/resting2/api/img/88027997/large
LITERAL ELEMENT MEDIFY
STANDARD CHARACTERS YES
USPTO-GENERATED IMAGE YES
MARK STATEMENT The mark consists of standard characters, without claim to any particular font style, size or color.
ARGUMENT(S)
The Examining Attorney refused registration of the Applicant's mark MEDIFY in International Classes 009, 041, and 042 in view of Registration No. 5,151,924 for the mark MEDIFI in International Class 044. The Applicant respectfully submits that there is no likelihood of confusion and that its application should be allowed to register. To determine likelihood of confusion, several factors must be considered when applicable, including: (1) the similarity and dissimilarity of the impressions of the marks, including appearance, sound, and connotation; (2) the similarity of the nature of the goods or services; (3) the similarity of established and likely to continue trade channels; (4) conditions under which, and buyers to whom, sales are made; (5) the variety of goods on which a mark is used; and (6) the nature and extent of any actual confusion. In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973). Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re I.Am.Symbolic, LLC, 866 F.3d 1315, 1322, 123 U.S.P.Q.2d at 1747 (Fed. Cir. 2017) (quoting Herbko Int'l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 U.S.P.Q.2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 U.S.P.Q. 24, 29 (C.C.P.A. 1976) ("The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks."); TMEP ?1207.01. A. The Dissimilarity of the Marks Despite a phonetic similarity, the registered mark and the Applicant's mark are distinct both visually and with respect to the meanings that they convey. The registered mark is visually distinct from the Applicant's mark in that it ends in an "I" rather than with a "Y" as used by the Applicant. The registered mark is also presented to consumers as displayed on its website, as bisected with two different colors for "Medi" and "fi." (See Exhibit 1.) The marks are sufficiently, visually distinct to prevent consumer confusion as to the source of the respective services. The display of MEDIFI, bisected with two different colors for "Medi" and "fi" carries with it the connotations that "medi = medical" and "fi = find." The suffix "fi" as shown on the website for the registered mark implies doctors can "find" their patients' medical data and patients can "find" a doctor (i.e., a doctor can "fi"nd a patient's data and a patient can "fi"nd a remote medical professional). (See Exhibit 2.) The Applicant's mark does not incorporate an "I" at the end of the word and therefore does not suggest the "fi"nd connotation. Breaking up the mark with two colors is intentional, and implies that the doctor or patient can "fi"nd the medical information needed on the Medifi's website. The majority of the presentations of the word "Medifi" on the Registrant's website are not uses of the word as a trademark but, rather, as the company's name. (See Medifi's Term of Use Exhibit 3.) In all instances where the mark "Medifi" is used as a trademark, it has two colors bisecting "Medi" and "fi" along with a symbol. (See Exhibit 1.) In contrast, the Applicant?s mark ends with a letter "Y" which does not suggest the same connotation as the registered mark. The dissimilarity of the marks, both visually and in their respective meanings, is evidence that there is no likelihood that confusion will exist with the concurrent use and registration of these marks. B. The Goods, Customers, and Channels of Trade Are Sufficiently Distinct The Applicant's goods and services compared to the services of the cited registration as well as the consumers to which the respective goods and services are directed, are unrelated and distinctly different. The Applicant's goods and services are related to computer software for information regarding education in the medical field and training to assist "prospective medical students in obtaining placements at medical training institutions." A prospective medical student is a sophisticated consumer with a very narrow purpose, trying to gain entry into medical school. In sharp contrast, the services offered under the registered mark, MEDIFI, are directed to medical professionals and their patients. These services allow medical information to be accessed remotely via electronic patient monitoring devices and permit the medical professionals to monitor and diagnose medical conditions. The difference in International Classes of the two marks further illustrates the vast difference between the services offered. The services of provided under the mark "MEDIFY," which are related to professional education, will not be confused with the services provided under the mark "MEDIFI," which is a website directed at doctors and other medical professionals for the tracking of patient medical records and files. The use of the mark MEDIFI targets practicing medical professionals, while the use of the mark MEDIFY targets prospective medical students. A look at the opening pages of each website illustrates the targeted audiences. (See Exhibits 4 and 5.) Both audiences are sophisticated consumers, which further prevents any likelihood of confusion between the concurrent use of the two marks. The differences between the respective consumers and the services of the two marks support a finding that there is no likelihood of confusion. The Applicant's amendments to its goods and services removes general terms and render the description of the goods and services as specific guidance and assistance services for prospective medical students. C. Prior Pending Application The Examining Attorney calls attention to the filing date of pending U.S. Application No. 87/959,563, filed on June 13, 2018. This mark does not precede the priority date for the Applicant's application. On February 22, 2019, the Applicant submitted the Priority document, United Kingdom Trademark Registration No. UK00003291872 dated June 8, 2018, which gives priority to the Applicant's application. The Examining Attorney acknowledged the priority in an e-mail on March 25, 2019. The Applicant respectfully requests the refusal for the mark MEDIFY be reconsidered and the mark be allowed to register.
EVIDENCE SECTION
        EVIDENCE FILE NAME(S)
       ORIGINAL PDF FILEevi_10436569-20190503161242241601_._186US.Amd.Ex.1.050319x.pdf
       CONVERTED PDF FILE(S)
       (1 page) 		\\TICRS\EXPORT17\IMAGEOUT17\880\279\88027997\xml7\ROA0002.JPG
       ORIGINAL PDF FILEevi_10436569-20190503161242241601_._186US.Amd.Ex.2.050319x.pdf
       CONVERTED PDF FILE(S)
       (1 page) 		\\TICRS\EXPORT17\IMAGEOUT17\880\279\88027997\xml7\ROA0003.JPG
       ORIGINAL PDF FILEevi_10436569-20190503161242241601_._186US.Amd.Ex.3.050319x.pdf
       CONVERTED PDF FILE(S)
       (2 pages) 		\\TICRS\EXPORT17\IMAGEOUT17\880\279\88027997\xml7\ROA0004.JPG
       \\TICRS\EXPORT17\IMAGEOUT17\880\279\88027997\xml7\ROA0005.JPG
       ORIGINAL PDF FILEevi_10436569-20190503161242241601_._186US.Amd.Ex.4.050319x.pdf
       CONVERTED PDF FILE(S)
       (1 page) 		\\TICRS\EXPORT17\IMAGEOUT17\880\279\88027997\xml7\ROA0006.JPG
       ORIGINAL PDF FILEevi_10436569-20190503161242241601_._186US.Amd.Ex.5.050319x.pdf
       CONVERTED PDF FILE(S)
       (1 page) 		\\TICRS\EXPORT17\IMAGEOUT17\880\279\88027997\xml7\ROA0007.JPG
DESCRIPTION OF EVIDENCE FILEDocuments in support of the Applicant's argument against likelihood of confusion.
GOODS AND/OR SERVICES SECTION (009)(current)
INTERNATIONAL CLASS009
DESCRIPTION
Computer software; downloadable computer applications software; downloadable computer applications software relating to medical education and training; downloadable computer applications software relating to providing guidance and assistance to prospective medical students in obtaining placements at medical training institutions
FILING BASISSection 44(d)
        FOREIGN APPLICATION NUMBER 3291872
       FOREIGN APPLICATION COUNTRYUnited Kingdom
        FOREIGN FILING DATE 02/22/2018
FILING BASISSection 44(e)
        FOREIGN REGISTRATION NUMBER UK0000329187
       FOREIGN REGISTRATION
       COUNTRY		United Kingdom
       FOREIGN REGISTRATION
       DATE		06/08/2018
       FOREIGN EXPIRATION DATE02/22/2028
GOODS AND/OR SERVICES SECTION (009)(proposed)
INTERNATIONAL CLASS009
TRACKED TEXT DESCRIPTION
Computer software; Downloadable computer applications software relating to providing guidance and assistance to prospective medical students in obtaining placements at medical training institutions; downloadable computer applications software; downloadable computer applications software relating to medical education and training
FINAL DESCRIPTION
Downloadable computer applications software relating to providing guidance and assistance to prospective medical students in obtaining placements at medical training institutions
FILING BASISSection 44(d)
       FOREIGN APPLICATION NUMBER3291872
       FOREIGN APPLICATION COUNTRYUnited Kingdom
       FOREIGN FILING DATE02/22/2018
       INTENT TO
       PERFECT 44(d)
At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.
FILING BASISSection 44(e)
       FOREIGN REGISTRATION NUMBERUK0000329187
       FOREIGN REGISTRATION
       COUNTRY		United Kingdom
       FOREIGN REGISTRATION
       DATE		06/08/2018
       FOREIGN EXPIRATION DATE02/22/2028
GOODS AND/OR SERVICES SECTION (041)(current)
INTERNATIONAL CLASS041
DESCRIPTION
Education and training; medical education and training; education and training information; medical education and training information; evaluation of education and training; providing guidance and assistance to prospective medical students in obtaining placements at medical training institutions
FILING BASISSection 44(d)
        FOREIGN APPLICATION NUMBER 3291872
       FOREIGN APPLICATION COUNTRYUnited Kingdom
        FOREIGN FILING DATE 02/22/2018
FILING BASISSection 44(e)
        FOREIGN REGISTRATION NUMBER UK0000329187
       FOREIGN REGISTRATION
       COUNTRY		United Kingdom
       FOREIGN REGISTRATION
       DATE		06/08/2018
       FOREIGN EXPIRATION DATE02/22/2028
GOODS AND/OR SERVICES SECTION (041)(proposed)
INTERNATIONAL CLASS041
TRACKED TEXT DESCRIPTION
Education and training; Providing information about education and training in the medical field; medical education and training; providing performance evaluation of education and training programs for prospective students considering entering those education and training programs; education and training information; education counselling services, namely, providing guidance and assistance to prospective medical students in obtaining placements at medical training institutions; medical education and training information; evaluation of education and training; providing guidance and assistance to prospective medical students in obtaining placements at medical training institutions
FINAL DESCRIPTION
Providing information about education and training in the medical field; providing performance evaluation of education and training programs for prospective students considering entering those education and training programs; education counselling services, namely, providing guidance and assistance to prospective medical students in obtaining placements at medical training institutions
FILING BASISSection 44(d)
       FOREIGN APPLICATION NUMBER3291872
       FOREIGN APPLICATION COUNTRYUnited Kingdom
       FOREIGN FILING DATE02/22/2018
       INTENT TO
       PERFECT 44(d)
At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.
FILING BASISSection 44(e)
       FOREIGN REGISTRATION NUMBERUK0000329187
       FOREIGN REGISTRATION
       COUNTRY		United Kingdom
       FOREIGN REGISTRATION
       DATE		06/08/2018
       FOREIGN EXPIRATION DATE02/22/2028
GOODS AND/OR SERVICES SECTION (042)(current)
INTERNATIONAL CLASS042
DESCRIPTION
Providing temporary use of non-downloadable software relating to medical education and training; providing temporary use of nondownloadable software relating to providing guidance and assistance to prospective medical students in obtaining placements at medical training institutions; technical services for providing a website relating to medical education and training; technical services for providing a website relating to providing guidance and assistance to prospective medical students in obtaining placements at medical training institutions
FILING BASISSection 44(d)
        FOREIGN APPLICATION NUMBER 3291872
       FOREIGN APPLICATION COUNTRYUnited Kingdom
        FOREIGN FILING DATE 02/22/2018
FILING BASISSection 44(e)
        FOREIGN REGISTRATION NUMBER UK0000329187
       FOREIGN REGISTRATION
       COUNTRY		United Kingdom
       FOREIGN REGISTRATION
       DATE		06/08/2018
       FOREIGN EXPIRATION DATE02/22/2028
GOODS AND/OR SERVICES SECTION (042)(proposed)
INTERNATIONAL CLASS042
TRACKED TEXT DESCRIPTION
Providing temporary use of non-downloadable software relating to medical education and training; Providing temporary use of nondownloadable software relating to providing guidance and assistance to prospective medical students in obtaining placements at medical training institutions; technical services for providing a website relating to medical education and training; technical services for providing a website relating to providing guidance and assistance to prospective medical students in obtaining placements at medical training institutions
FINAL DESCRIPTION
Providing temporary use of nondownloadable software relating to providing guidance and assistance to prospective medical students in obtaining placements at medical training institutions
FILING BASISSection 44(d)
       FOREIGN APPLICATION NUMBER3291872
       FOREIGN APPLICATION COUNTRYUnited Kingdom
       FOREIGN FILING DATE02/22/2018
       INTENT TO
       PERFECT 44(d)
At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.
FILING BASISSection 44(e)
       FOREIGN REGISTRATION NUMBERUK0000329187
       FOREIGN REGISTRATION
       COUNTRY		United Kingdom
       FOREIGN REGISTRATION
       DATE		06/08/2018
       FOREIGN EXPIRATION DATE02/22/2028
SIGNATURE SECTION
RESPONSE SIGNATURE /Brandi G. Brenner/
SIGNATORY'S NAME Brandi G. Brenner
SIGNATORY'S POSITION Attorney of record, Virginia bar member
SIGNATORY'S PHONE NUMBER 202-429-4560
DATE SIGNED 05/03/2019
AUTHORIZED SIGNATORY YES
FILING INFORMATION SECTION
SUBMIT DATE Fri May 03 16:43:46 EDT 2019
TEAS STAMP USPTO/ROA-XXX.X.XX.XX-201
90503164346685144-8802799
7-6201fcbf81d690787f44edd
fa3cb8a2c507c506455d0c0c0
1abff5be89ca6cff44-N/A-N/
A-20190503161242241601


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. 88027997 MEDIFY(Standard Characters, see https://tmng-al.uspto.gov/resting2/api/img/88027997/large) has been amended as follows:

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

The Examining Attorney refused registration of the Applicant's mark MEDIFY in International Classes 009, 041, and 042 in view of Registration No. 5,151,924 for the mark MEDIFI in International Class 044. The Applicant respectfully submits that there is no likelihood of confusion and that its application should be allowed to register. To determine likelihood of confusion, several factors must be considered when applicable, including: (1) the similarity and dissimilarity of the impressions of the marks, including appearance, sound, and connotation; (2) the similarity of the nature of the goods or services; (3) the similarity of established and likely to continue trade channels; (4) conditions under which, and buyers to whom, sales are made; (5) the variety of goods on which a mark is used; and (6) the nature and extent of any actual confusion. In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973). Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re I.Am.Symbolic, LLC, 866 F.3d 1315, 1322, 123 U.S.P.Q.2d at 1747 (Fed. Cir. 2017) (quoting Herbko Int'l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 U.S.P.Q.2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 U.S.P.Q. 24, 29 (C.C.P.A. 1976) ("The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks."); TMEP ?1207.01. A. The Dissimilarity of the Marks Despite a phonetic similarity, the registered mark and the Applicant's mark are distinct both visually and with respect to the meanings that they convey. The registered mark is visually distinct from the Applicant's mark in that it ends in an "I" rather than with a "Y" as used by the Applicant. The registered mark is also presented to consumers as displayed on its website, as bisected with two different colors for "Medi" and "fi." (See Exhibit 1.) The marks are sufficiently, visually distinct to prevent consumer confusion as to the source of the respective services. The display of MEDIFI, bisected with two different colors for "Medi" and "fi" carries with it the connotations that "medi = medical" and "fi = find." The suffix "fi" as shown on the website for the registered mark implies doctors can "find" their patients' medical data and patients can "find" a doctor (i.e., a doctor can "fi"nd a patient's data and a patient can "fi"nd a remote medical professional). (See Exhibit 2.) The Applicant's mark does not incorporate an "I" at the end of the word and therefore does not suggest the "fi"nd connotation. Breaking up the mark with two colors is intentional, and implies that the doctor or patient can "fi"nd the medical information needed on the Medifi's website. The majority of the presentations of the word "Medifi" on the Registrant's website are not uses of the word as a trademark but, rather, as the company's name. (See Medifi's Term of Use Exhibit 3.) In all instances where the mark "Medifi" is used as a trademark, it has two colors bisecting "Medi" and "fi" along with a symbol. (See Exhibit 1.) In contrast, the Applicant?s mark ends with a letter "Y" which does not suggest the same connotation as the registered mark. The dissimilarity of the marks, both visually and in their respective meanings, is evidence that there is no likelihood that confusion will exist with the concurrent use and registration of these marks. B. The Goods, Customers, and Channels of Trade Are Sufficiently Distinct The Applicant's goods and services compared to the services of the cited registration as well as the consumers to which the respective goods and services are directed, are unrelated and distinctly different. The Applicant's goods and services are related to computer software for information regarding education in the medical field and training to assist "prospective medical students in obtaining placements at medical training institutions." A prospective medical student is a sophisticated consumer with a very narrow purpose, trying to gain entry into medical school. In sharp contrast, the services offered under the registered mark, MEDIFI, are directed to medical professionals and their patients. These services allow medical information to be accessed remotely via electronic patient monitoring devices and permit the medical professionals to monitor and diagnose medical conditions. The difference in International Classes of the two marks further illustrates the vast difference between the services offered. The services of provided under the mark "MEDIFY," which are related to professional education, will not be confused with the services provided under the mark "MEDIFI," which is a website directed at doctors and other medical professionals for the tracking of patient medical records and files. The use of the mark MEDIFI targets practicing medical professionals, while the use of the mark MEDIFY targets prospective medical students. A look at the opening pages of each website illustrates the targeted audiences. (See Exhibits 4 and 5.) Both audiences are sophisticated consumers, which further prevents any likelihood of confusion between the concurrent use of the two marks. The differences between the respective consumers and the services of the two marks support a finding that there is no likelihood of confusion. The Applicant's amendments to its goods and services removes general terms and render the description of the goods and services as specific guidance and assistance services for prospective medical students. C. Prior Pending Application The Examining Attorney calls attention to the filing date of pending U.S. Application No. 87/959,563, filed on June 13, 2018. This mark does not precede the priority date for the Applicant's application. On February 22, 2019, the Applicant submitted the Priority document, United Kingdom Trademark Registration No. UK00003291872 dated June 8, 2018, which gives priority to the Applicant's application. The Examining Attorney acknowledged the priority in an e-mail on March 25, 2019. The Applicant respectfully requests the refusal for the mark MEDIFY be reconsidered and the mark be allowed to register.

EVIDENCE
Evidence in the nature of Documents in support of the Applicant's argument against likelihood of confusion. has been attached.
Original PDF file:
evi_10436569-20190503161242241601_._186US.Amd.Ex.1.050319x.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_10436569-20190503161242241601_._186US.Amd.Ex.2.050319x.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_10436569-20190503161242241601_._186US.Amd.Ex.3.050319x.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_10436569-20190503161242241601_._186US.Amd.Ex.4.050319x.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_10436569-20190503161242241601_._186US.Amd.Ex.5.050319x.pdf
Converted PDF file(s) ( 1 page)
Evidence-1

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Computer software; downloadable computer applications software; downloadable computer applications software relating to medical education and training; downloadable computer applications software relating to providing guidance and assistance to prospective medical students in obtaining placements at medical training institutions
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 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[ United Kingdom application number 3291872 filed 02/22/2018]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ United Kingdom registration number UK0000329187 registered 06/08/2018 with a renewal date of __________ and an expiration date of 02/22/2028 ], and translation thereof, if appropriate. 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. 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. For a certification 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 on or in connection with the identified goods/services, and 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.

Proposed:
Tracked Text Description: Computer software; Downloadable computer applications software relating to providing guidance and assistance to prospective medical students in obtaining placements at medical training institutions; downloadable computer applications software; downloadable computer applications software relating to medical education and training

Class 009 for Downloadable computer applications software relating to providing guidance and assistance to prospective medical students in obtaining placements at medical training institutions
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 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 [ United Kingdom application number 3291872 filed 02/22/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ United Kingdom registration number UK0000329187 registered 06/08/2018 with a renewal date of __________ and an expiration date of 02/22/2028 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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. For a certification 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 on or in connection with the identified goods/services, and 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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Education and training; medical education and training; education and training information; medical education and training information; evaluation of education and training; providing guidance and assistance to prospective medical students in obtaining placements at medical training institutions
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 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[ United Kingdom application number 3291872 filed 02/22/2018]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ United Kingdom registration number UK0000329187 registered 06/08/2018 with a renewal date of __________ and an expiration date of 02/22/2028 ], and translation thereof, if appropriate. 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. 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. For a certification 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 on or in connection with the identified goods/services, and 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.

Proposed:
Tracked Text Description: Education and training; Providing information about education and training in the medical field; medical education and training; providing performance evaluation of education and training programs for prospective students considering entering those education and training programs; education and training information; education counselling services, namely, providing guidance and assistance to prospective medical students in obtaining placements at medical training institutions; medical education and training information; evaluation of education and training; providing guidance and assistance to prospective medical students in obtaining placements at medical training institutions

Class 041 for Providing information about education and training in the medical field; providing performance evaluation of education and training programs for prospective students considering entering those education and training programs; education counselling services, namely, providing guidance and assistance to prospective medical students in obtaining placements at medical training institutions
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 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 [ United Kingdom application number 3291872 filed 02/22/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ United Kingdom registration number UK0000329187 registered 06/08/2018 with a renewal date of __________ and an expiration date of 02/22/2028 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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. For a certification 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 on or in connection with the identified goods/services, and 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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Providing temporary use of non-downloadable software relating to medical education and training; providing temporary use of nondownloadable software relating to providing guidance and assistance to prospective medical students in obtaining placements at medical training institutions; technical services for providing a website relating to medical education and training; technical services for providing a website relating to providing guidance and assistance to prospective medical students in obtaining placements at medical training institutions
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 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[ United Kingdom application number 3291872 filed 02/22/2018]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ United Kingdom registration number UK0000329187 registered 06/08/2018 with a renewal date of __________ and an expiration date of 02/22/2028 ], and translation thereof, if appropriate. 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. 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. For a certification 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 on or in connection with the identified goods/services, and 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.

Proposed:
Tracked Text Description: Providing temporary use of non-downloadable software relating to medical education and training; Providing temporary use of nondownloadable software relating to providing guidance and assistance to prospective medical students in obtaining placements at medical training institutions; technical services for providing a website relating to medical education and training; technical services for providing a website relating to providing guidance and assistance to prospective medical students in obtaining placements at medical training institutions

Class 042 for Providing temporary use of nondownloadable software relating to providing guidance and assistance to prospective medical students in obtaining placements at medical training institutions
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 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 [ United Kingdom application number 3291872 filed 02/22/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ United Kingdom registration number UK0000329187 registered 06/08/2018 with a renewal date of __________ and an expiration date of 02/22/2028 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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. For a certification 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 on or in connection with the identified goods/services, and 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.

SIGNATURE(S)
Response Signature
Signature: /Brandi G. Brenner/     Date: 05/03/2019
Signatory's Name: Brandi G. Brenner
Signatory's Position: Attorney of record, Virginia bar member

Signatory's Phone Number: 202-429-4560

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: 88027997
Internet Transmission Date: Fri May 03 16:43:46 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.X.XX.XX-201905031643466851
44-88027997-6201fcbf81d690787f44eddfa3cb
8a2c507c506455d0c0c01abff5be89ca6cff44-N
/A-N/A-20190503161242241601