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. 88146047 AGILE IMPLEMENTATION(Standard Characters, see http://uspto.report/TM/88146047/mark.png) has been amended as follows:

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

The term “AGILE IMPLEMENTATION” has been characterized as being “merely descriptive”.  The basis for this is, in part, a citation to the Oxford Dictionary.  However, while a definition for “AGILE” is referenced, that is the second definition.  The first definition from the Oxford Dictionary is “able to move quickly and easily”.  See, http://en.oxforddictionaries.com/definition/agile. 

             By comparison, the Oxford Dictionary contrasts the definition of AGILE cited in the Office Action with the term “WATERFALL”.  In doing so, the Oxford Dictionary provides a link to a definition of the term “WATERFALL” as “Relating to or denoting a method of project management that is characterized by sequential stages and a fixed plan of work”.  See, http://en.oxforddictionaries.com/definition/waterfall.  This again is the second definition.  The first definition for “WATERFALL” is provided as “a cascade of water falling from a height, formed when a river or stream flows over a precipice or steep incline”. 

             Reliance on secondary definitions does not support a conclusion that a consumer would “immediately understand” a feature of the services. 

             The initial conclusion in the Office Action is that the term “merely describes a feature of applicant’s services, namely, putting healthcare solution plans into effect through the use of software development ….”  As a follow up to this conclusion, two questions have been posed.  Applicant appreciates this opportunity to clarify the situation and to demonstrate that the mark is not “merely descriptive”.  Applicant responds as follows:

             “1)  Does applicant provide agile project management services or instruction about agile project management services?”  Applicant provides instructions in how to manage projects, and provides services of managing projects.  The services are based on Applicant’s own version of project management methodology.  Using the broad definitions provided by the Oxford Dictionary, Applicant’s methodology would likely be considered to be covered by both definitions.

             “2)  Does applicant provide software development services or instruction about software development?”  No, the services by Applicant do not involve software development services or instruction about software development.  As the Office Action cites from Applicant’s website, the services provide a “bridge between academia and care delivery that utilizes the best practices of innovation, implementation science, lean, and design thinking methodologies for patient-centered care”.

             Applicant is not a hardware or software business.  Applicant has expertise derived from providing undergraduate and graduate level teaching in the healthcare field, including the highly-regarded Indiana University School of Medicine, the largest medical school in the United States.  The filed mark is used in association with the provision of services which transfer the considerable expertise of Applicant to other healthcare providers.  The services are not about software

             The Office Action further concludes that “Ultimately, when purchasers encounter applicant’s services using the mark “AGILE IMPLEMENTATION”, they will immediately understand the mark as an indication of a feature of applicant’s services – that they are instruction about and developing execution strategies involving agile software development for healthcare solutions ….”  Emphasis added.  Applicant submits that the mark cannot be “merely descriptive” as this “description” does not apply to Applicant’s services.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Educational services regarding classes, conferences, seminars, symposia, public lectures on the topic of methodologies for developing healthcare solutions
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.

Proposed:
Tracked Text Description: Educational services regarding classes, conferences, seminars, symposia, public lectures on the topic of methodologies for developing healthcare solutions; Educational services, namely, providing classes, conferences, seminars, symposia, public lectures on the topic of methodologies for developing healthcare solutionsClass 041 for Educational services, namely, providing classes, conferences, seminars, symposia, public lectures on the topic of methodologies for developing healthcare solutions
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Services involving performing the development of the healthcare solutions
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.

Proposed:
Tracked Text Description: Services involving performing the development of the healthcare solutions; Design and development of healthcare solutions and frameworks for patient care standards and practices for the healthcare industryClass 042 for Design and development of healthcare solutions and frameworks for patient care standards and practices for the healthcare industry
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.

ADDITIONAL STATEMENTS
Miscellaneous Statement
Applicant appreciates the comments regarding the identifications of services. Applicant is not adopting the proposed identifications for classes 35, 36 and 42 as they are not applicable. Applicant has accepted the proposed revision to the identification of services for class 41.


SIGNATURE(S)
Response Signature
Signature: /thomas q henry/     Date: 04/22/2019
Signatory's Name: Thomas Q. Henry
Signatory's Position: Attorney of Record, Indiana Bar Member

Signatory's Phone Number: 317-634-3456

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: 88146047
Internet Transmission Date: Mon Apr 22 11:51:58 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.X-20190422115158628
307-88146047-6206c6e2130a59b4525c1ee1575
de2f2f9a017307558196ff20be508f2f4ee9-N/A
-N/A-20190417133723190368