| 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) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88068718 |
| LAW OFFICE ASSIGNED | LAW OFFICE 107 |
| MARK SECTION | |
| LITERAL ELEMENT | SOUTH TEXAS HEALTH SYSTEM ER MISSION |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| COLOR(S) CLAIMED (If applicable) |
Color is not claimed as a feature of the mark. |
| DESCRIPTION OF THE MARK (and Color Location, if applicable) |
The mark consists of the words "SOUTH TEXAS HEALTH SYSTEM ER MISSION" to the right of a design of star with two curved lines in the center. |
| ARGUMENT(S) | |
|
This is in response to the office action dated October 17, 2018 (the "Office Action") for U.S. Application Serial No. 88/068,718 for SOUTH TEXAS HEALTH SYSTEM ER MISSION & design (the "Application" or "Mark"). In the Office Action, the Examining Attorney issued a disclaimer requirement for the "SOUTH TEXAS HEALTH SYSTEM ER MISSION" wording in the Mark. With this present response, Applicant enters a 2(f)-in-part claim of acquired distinctiveness for the "SOUTH TEXAS HEALTH SYSTEM" wording based on Applicant's existing registration for the wording (U.S. Reg. No. 3,507,432). In addition, Applicant enters a disclaimer for the terms "ER" and "MISSION" in the Mark. Finally, Applicant has separately filed an Allegation of Use for the Mark. Having addressed all of the issues in the Office Action, Applicant respectfully requests that the Examining Attorney permit the Application to proceed to publication. |
|
| ADDITIONAL STATEMENTS SECTION | |
| DISCLAIMER | No claim is made to the exclusive right to use "ER" and "MISSION" apart from the mark as shown. |
| SECTION 2(f) Claim of Acquired Distinctiveness, IN PART, based on Active Prior Registration(s) | SOUTH TEXAS HEALTH SYSTEM has become distinctive of the goods/services as evidenced by the ownership on the Principal Register for the same mark for sufficiently similar goods/services of active U.S. Registration No(s). 3507432 |
| CORRESPONDENCE SECTION | |
| ORIGINAL ADDRESS | THOMAS F. BERGERT WILLIAMS MULLEN 321 EAST MAIN STREET, SUITE 400 CHARLOTTESVILLE Virginia US 22902-3200 |
| NEW CORRESPONDENCE SECTION | |
| NAME | THOMAS F. BERGERT |
| FIRM NAME | WILLIAMS MULLEN |
| DOCKET/REFERENCE NUMBER | 053160.1108 |
| STREET | 321 EAST MAIN STREET, SUITE 400 |
| CITY | CHARLOTTESVILLE |
| STATE | Virginia |
| ZIP/POSTAL CODE | 22902-3200 |
| COUNTRY | United States |
| PHONE | 434-951-5700 |
| FAX | 434-817-0977 |
| tbergert@williamsmullen.com;charlacher@williamsmullen.com; ip@williamsmullen.com; carolyn.esch@ushinc.com | |
| AUTHORIZED EMAIL COMMUNICATION | Yes |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | /Dante Bradley/ |
| SIGNATORY'S NAME | Dante Bradley |
| SIGNATORY'S POSITION | Associate General Counsel |
| SIGNATORY'S PHONE NUMBER | 610-382-3421 |
| DATE SIGNED | 02/26/2019 |
| RESPONSE SIGNATURE | /Christel E. Harlacher/ |
| SIGNATORY'S NAME | Christel E. Harlacher |
| SIGNATORY'S POSITION | Associate Attorney, Williams Mullen, Virginia bar member |
| SIGNATORY'S PHONE NUMBER | 804-420-6000 |
| DATE SIGNED | 02/26/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Feb 26 15:03:24 EST 2019 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XX-2 0190226150324526134-88068 718-620ec3cba30af2f8ed2ae dadfe5fdfe67ed04d5f6d11fa d7fad5d293ed2633339-N/A-N /A-20190222103726187148 |
| 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) |
This is in response to the office action dated October 17, 2018 (the "Office Action") for U.S. Application Serial No. 88/068,718 for SOUTH TEXAS HEALTH SYSTEM ER MISSION & design (the "Application" or "Mark"). In the Office Action, the Examining Attorney issued a disclaimer requirement for the "SOUTH TEXAS HEALTH SYSTEM ER MISSION" wording in the Mark.
With this present response, Applicant enters a 2(f)-in-part claim of acquired distinctiveness for the "SOUTH TEXAS HEALTH SYSTEM" wording based on Applicant's existing registration for the wording (U.S. Reg. No. 3,507,432). In addition, Applicant enters a disclaimer for the terms "ER" and "MISSION" in the Mark. Finally, Applicant has separately filed an Allegation of Use for the Mark.
Having addressed all of the issues in the Office Action, Applicant respectfully requests that the Examining Attorney permit the Application to proceed to publication.
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. § 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 allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.
STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have 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/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.
STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have 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/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.