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. 88077673 ARE YOU READY?(Standard Characters, see http://uspto.report/TM/88077673/mark.png) has been amended as follows:

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

Further to the undersigned counsel's telephone conference with the Examining Attorney on January 29, 2020, Applicant, Medline Industries, Inc., submits a substitute specimen showing its use of the mark in connection with business consulting services in the field of emergency medical services.  Specifically, Applicant submits an excerpt from its EMS catalog, discussing and promoting Applicant's services and showing use of ARE YOU READY? in a trademark manner.


CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Supply chain management services in the field of emergency medical equipment and supplies; business consulting services in the field of emergency medical services
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: 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 in the 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. 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, 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/services that meet the certification standards of the applicant.

In International Class 035, the mark was first used at least as early as 07/31/2018 and first used in commerce at least as early as 07/31/2018 .

Proposed: Class 035 for Supply chain management services in the field of emergency medical equipment and supplies; business consulting services in the field of emergency medical services

Deleted Filing Basis: 1(b)
In International Class 035, the mark was first used at least as early as 07/31/2018 . and first used in commerce at least as early as 07/31/2018 .

Applicant hereby submits one(or more) specimen(s) for Class 035 . The specimen(s) submitted consists of Excerpt from catalog .
"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:
SPU0-2165511194-20200131161409681780_._2019_CAT_EMS_Products_Pages.pdf
Converted PDF file(s) ( 4 pages)
Specimen File1
Specimen File2
Specimen File3
Specimen File4

The applicant's current attorney information: Janet A. Marvel. Janet A. Marvel of PATTISHALL, MCAULIFFE, NEWBURY, HILLIARD & GERALDS, is located at

      200 S. WACKER DRIVE, SUITE 2900
      CHICAGO, Illinois 60606
      US
The docket/reference number is 00786-1-4701.

The phone number is 312-554-8000.

The fax number is 312 554-8015.

The email address is jmarvel@pattishall.com

The applicants proposed attorney information: Janet A. Marvel. Other appointed attorneys are Seth I. Appel. Janet A. Marvel of PATTISHALL, MCAULIFFE, NEWBURY, HILLIARD & GERALDS, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      200 S. WACKER DRIVE, SUITE 2900
      CHICAGO, Illinois 60606
      United States
The docket/reference number is 00786-1-4701.

The phone number is 312-554-8000.

The fax number is 312 554-8015.

The email address is jmarvel@pattishall.com

Janet A. Marvel submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: JANET A. MARVEL. JANET A. MARVEL of PATTISHALL, MCAULIFFE, NEWBURY, HILLIARD & GERALDS, is located at

      200 S. WACKER DRIVE, SUITE 2900
      CHICAGO, Illinois 60606
      US
The docket/reference number is 00786-1-4701.

The phone number is 312-554-8000.

The fax number is 312 554-8015.

The email address is jmarvel@pattishall.com; aca@pattishall.com; sia@pattishall.com; docket@pattishall.com

The applicants proposed correspondence information: Janet A. Marvel. Janet A. Marvel of PATTISHALL, MCAULIFFE, NEWBURY, HILLIARD & GERALDS, is located at

      200 S. WACKER DRIVE, SUITE 2900
      CHICAGO, Illinois 60606
      United States
The docket/reference number is 00786-1-4701.

The phone number is 312-554-8000.

The fax number is 312 554-8015.

The email address is jmarvel@pattishall.com; sia@pattishall.com; aca@pattishall.com

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. § 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.

Signature: /Seth I. Appel/      Date: 01/31/2020
Signatory's Name: Seth I. Appel
Signatory's Position: Attorney of record, IL and CA bar member
Signatory's Phone Number: (312) 554-8000


Response Signature
Signature: /Seth I. Appel/     Date: 01/31/2020
Signatory's Name: Seth I. Appel
Signatory's Position: Attorney of record, IL and CA bar member

Signatory's Phone Number: (312) 554-8000

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); 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.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    JANET A. MARVEL
   PATTISHALL, MCAULIFFE, NEWBURY, HILLIARD & GERALDS
   
   200 S. WACKER DRIVE, SUITE 2900
   CHICAGO, Illinois 60606
Mailing Address:    Janet A. Marvel
   PATTISHALL, MCAULIFFE, NEWBURY, HILLIARD & GERALDS
   200 S. WACKER DRIVE, SUITE 2900
   CHICAGO, Illinois 60606
        
Serial Number: 88077673
Internet Transmission Date: Fri Jan 31 16:26:24 EST 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XXX-2020013116262432
1285-88077673-70083402829dabde8f55b32f89
6d7bdfd3c8fa5f9458c8a9fe39266a3c3ee80b5-
N/A-N/A-20200131161409681780