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. 88078432 INSIGHT. IN TOUCH.(Standard Characters, see http://uspto.report/TM/88078432/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 035 for Providing a website featuring information in the field of patient relationship management services and cost containment in the field of insurance and health care
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 10/19/2015 and first used in commerce at least as early as 10/19/2015 , and is now in use in such commerce.


Proposed:

Tracked Text Description: Providing a website featuring information in the field of patient relationship management services and cost containment in the field of insurance and health care; providing a website featuring information regarding insurance legislation, namely, political information in the field of insurance; providing a website featuring public policy information in the field of legislation as it relates to healthcareClass 035 for Providing a website featuring information in the field of patient relationship management services and cost containment in the field of insurance and health care; providing a website featuring information regarding insurance legislation, namely, political information in the field of insurance; providing a website featuring public policy information in the field of legislation as it relates to healthcare
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 10/19/2015 and first used in commerce at least as early as 10/19/2015 , and is now in use in such commerce.
Applicant proposes to amend the following:

Current:
Class 036 for Providing a website featuring information in the field of insurance, namely, information regarding insurance claims administration and processing, and regarding insurance legislation
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 10/19/2015 and first used in commerce at least as early as 10/19/2015 , and is now in use in such commerce.


Proposed:

Tracked Text Description: Providing a website featuring information in the field of insurance, namely, information regarding insurance claims administration and processing, and regarding insurance legislation; Providing a website featuring information in the field of insurance, namely, information regarding insurance claims administration and processingClass 036 for Providing a website featuring information in the field of insurance, namely, information regarding insurance claims administration and processing
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 10/19/2015 and first used in commerce at least as early as 10/19/2015 , and is now in use in such commerce.
Applicant proposes to amend the following:

Current:
Class 044 for Providing a website featuring information in the field of healthcare and legislation as it relates to healthcare
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 10/19/2015 and first used in commerce at least as early as 10/19/2015 , and is now in use in such commerce.


Proposed:

Tracked Text Description: Providing a website featuring information in the field of healthcare and legislation as it relates to healthcare; Providing a website featuring information in the field of healthcareClass 044 for Providing a website featuring information in the field of healthcare
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 10/19/2015 and first used in commerce at least as early as 10/19/2015 , and is now in use in such commerce.
Applicant hereby adds the following class of goods/services to the application:
New: Class 045 for Providing a website featuring information regarding insurance legislation, namely, providing information in the field of insurance law via the Internet; providing a web site featuring information in the field of legislation as it relates to healthcare, namely, information on the development of healthcare law
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 10/19/2015 and first used in commerce at least as early as 10/19/2015 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 045 . The specimen(s) submitted consists of Pages from website .
"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:
SPN0-20519620714-20200317 163728746430_._INSIGHT._I N_TOUCH._class_45_specime n.pdf
Converted PDF file(s) ( 6 pages) Specimen File1Specimen File2Specimen File3Specimen File4Specimen File5Specimen File6

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: CorVel Corporation, a corporation of Delaware, having an address of
      2010 Main Street, Suite 600
      Irvine, California 92614
      United States

Proposed: CorVel Corporation, a corporation of Delaware, having an address of
      2010 Main Street, Suite 600
      Irvine, California 92614
      United States
      Email Address: XXXX

The owner's/holder's current attorney information: Carla B. Oakley. Carla B. Oakley of MORGAN, LEWIS & BOCKIUS LLP, is located at

      ONE MARKET STREET, SPEAR STREET TOWER
      SAN FRANCISCO, California 94105
      United States
The docket/reference number is 058165-2460.
      The email address is carla.oakley@morganlewis.com

The owner's/holder's proposed attorney information: Carla B. Oakley. Other appointed attorneys are the firm of Morgan, Lewis & Bockius LLP, CARLA B. OAKLEY, ROCHELLE D. ALPERT, SHARON R. SMITH, GENE K. PARK, LINDSEY SHINN, JENNA K. STOKES and PETER BYRNE, members of the California Bar, all located at One Market, Spear Street Tower, San Francisco, California 94105, RON N. DREBEN, KAREN A. BUTCHER, ANITA B. POLOTT, CAROLE R. KLEIN, JOSEPH E. WASHINGTON, KRISTIN H. ALTOFF, DANA S. GROSS, DANIEL S. MARKS, REBECCA MCDOUGALL, RACHEL FERTIG, SETH RAPPAPORT, JANE W. WISE and CONNIE BOUTSIKARIS, members of the District of Columbia Bar, all located at 1111 Pennsylvania Ave., NW, Washington, D.C. 20004, ANDREW J. GRAY IV, member of the California Bar, located at 1400 Page Mill Road, Palo Alto, California 94304, and RACHELLE A. DUBOW and DAVID O. JOHANSON, members of the Massachusetts Bar, both located at One Federal Street, Boston, Massachusetts 02110. Carla B. Oakley of MORGAN, LEWIS & BOCKIUS LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      ONE MARKET STREET, SPEAR STREET TOWER
      SAN FRANCISCO, California 94105
      United States
The docket/reference number is 058165-2460.
      The email address is carla.oakley@morganlewis.com

Carla B. Oakley 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.Correspondence Information (current):
      CARLA B. OAKLEY
      PRIMARY EMAIL FOR CORRESPONDENCE: carla.oakley@morganlewis.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): sftrademarks@morganlewis.com; jenna.stokes@morganlewis.com

The docket/reference number is 058165-2460.
Correspondence Information (proposed):
      Carla B. Oakley
      PRIMARY EMAIL FOR CORRESPONDENCE: carla.oakley@morganlewis.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): sftrademarks@morganlewis.com; jenna.stokes@morganlewis.com; thomas.loran@morganlewis.com

The docket/reference number is 058165-2460.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

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. § 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: /Jenna K. Stokes/      Date: 03/17/2020
Signatory's Name: Jenna K. Stokes
Signatory's Position: Attorney of Record, CA Bar Member
Signatory's Phone Number: 415-442-1191


Response Signature
Signature: /Jenna K. Stokes/     Date: 03/17/2020
Signatory's Name: Jenna K. Stokes
Signatory's Position: Attorney of Record, CA Bar Member

Signatory's Phone Number: 415-442-1191

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:    CARLA B. OAKLEY
   MORGAN, LEWIS & BOCKIUS LLP
   
   ONE MARKET STREET, SPEAR STREET TOWER
   SAN FRANCISCO, California 94105
Mailing Address:    Carla B. Oakley
   MORGAN, LEWIS & BOCKIUS LLP
   ONE MARKET STREET, SPEAR STREET TOWER
   SAN FRANCISCO, California 94105
        
RAM Sale Number: 88078432
RAM Accounting Date: 03/17/2020
        
Serial Number: 88078432
Internet Transmission Date: Tue Mar 17 20:10:54 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-202003172010548
10372-88078432-71074b86e1368a12d084f3acd
cb7dd95f9c19e3b0163d691de09c56301dffd278
-CC-10533335-20200317200119872239