TEAS Request Reconsideration after FOA

PTO- 1960

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

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PTO- 1960

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 88155327 SOLUTION(Standard Characters, see http://uspto.report/TM/88155327/mark.png) has been amended as follows:

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

Pursuant to the Examiner's request, Applicant has removed the problematic language related to the likelihood of confusion citation. Accordingly, Applicant hereby requests this application move forward to publication.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Downloadable computer software applications for providing assessment and consultation based on user generated contents in the field of health and lifestyle; Downloadable computer software to enable uploading, capturing, posting, showing, editing, viewing, displaying, tagging, blogging, sharing, manipulating, distributing, publishing, reproducing, and otherwise providing electronic media, multimedia content, pictures, images, text, photos, user-generated content, and information via mobile devices, the Internet, and other communications networks; Providing downloadable software for lifestyle, health, microbiome, DNA, genetic information assessment and consultation in the field of health and lifestyle; Downloadable computer software to enable users to upload, store, manage, share, retrieve, aggregate, and analyze data in the field of healthcare and lifestyle; Downloadable computer software for use in the field of healthcare and lifestyle to assist users in assessing, personalizing and selecting healthcare and lifestyle products; Downloadable computer software to assess user generated contents in the field of health and lifestyle for providing assistance in selecting dietary supplements and personalizing dietary supplement formulas
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: Downloadable computer software applications for providing assessment and consultation based on user generated contents in the field of health and lifestyle; - Downloadable computer software applications for providing assessment and consultation based on user generated contents in the field of health and lifestyle; Downloadable computer software to enable uploading, capturing, posting, showing, editing, viewing, displaying, tagging, blogging, sharing, manipulating, distributing, publishing, reproducing, and otherwise providing electronic media, multimedia content, pictures, images, text, photos, user-generated content, and information via mobile devices, the Internet, and other communications networks; Providing downloadable software for lifestyle, health, microbiome, DNA, genetic information assessment and consultation in the field of health and lifestyle; Downloadable computer software to enable users to upload, store, manage, share, retrieve, aggregate, and analyze data in the field of healthcare and lifestyle; Downloadable computer software for use in the field of healthcare and lifestyle to assist users in assessing, personalizing and selecting healthcare and lifestyle products; Downloadable computer software to assess user generated contents in the field of health and lifestyle for providing assistance in selecting dietary supplements and personalizing dietary supplement formulasClass 009 for - Downloadable computer software applications for providing assessment and consultation based on user generated contents in the field of health and lifestyle; Downloadable computer software to enable uploading, capturing, posting, showing, editing, viewing, displaying, tagging, blogging, sharing, manipulating, distributing, publishing, reproducing, and otherwise providing electronic media, multimedia content, pictures, images, text, photos, user-generated content, and information via mobile devices, the Internet, and other communications networks; Providing downloadable software for lifestyle, health, microbiome, DNA, genetic information assessment and consultation in the field of health and lifestyle; Downloadable computer software to enable users to upload, store, manage, share, retrieve, aggregate, and analyze data in the field of healthcare and lifestyle; Downloadable computer software for use in the field of healthcare and lifestyle to assist users in assessing, personalizing and selecting healthcare and lifestyle products; Downloadable computer software to assess user generated contents in the field of health and lifestyle for providing assistance in selecting dietary supplements and personalizing dietary supplement formulas
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.

Webpage URL: None Provided
Webpage Date of Access: None Provided


Applicant proposes to amend the following:

Current:
Class 040 for Preparation of personalized dietary supplements for others, namely, custom manufacture of dietary supplements
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:
Class 040 for Preparation of personalized dietary supplements for others, namely, custom manufacture of dietary supplements
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.

Webpage URL: None Provided
Webpage Date of Access: None Provided


Applicant proposes to amend the following:

Current:
Class 042 for Providing temporary use of online, non-downloadable software that allows users to interact with a website to provide users with access to a platform that assists users in the selection and personalization of dietary supplements and dietary supplement formulas, and contains information and how-to videos of techniques, digital tutorials and tips in the field of healthcare and lifestyle, and to purchase dietary supplements; Platform as a service (PAAS) featuring computer software platforms for users to upload, capture, post, show, edit, view, display, tag, blog, share, manipulate, distribute, publish, reproduce, and otherwise provide electronic media, multimedia content, pictures, images, text, photos, user-generated content, and information via mobile devices, the Internet, and other communications networks; Providing online non-downloadable software for lifestyle, health, microbiome, DNA, genetic information assessment and consultation in the field of health and lifestyle; Software as a service (SAAS) services, namely, hosting software to enable users to upload, store, manage, share, retrieve, aggregate, and analyze data in the field of healthcare and lifestyle; Software as a service (SAAS) services, namely, hosting software for users to upload, store, manage, share, retrieve, aggregate, and analyze data in the field of healthcare and lifestyle; Software as a service (SAAS) services, namely, hosting software for use in the field of healthcare and lifestyle to assist users in assessing, personalizing, and selecting healthcare and lifestyle products
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: Providing temporary use of online, non-downloadable software that allows users to interact with a website to provide users with access to a platform that assists users in the selection and personalization of dietary supplements and dietary supplement formulas, and contains information and how-to videos of techniques, digital tutorials and tips in the field of healthcare and lifestyle, and to purchase dietary supplements; - Providing temporary use of online, non-downloadable software that allows users to interact with a website to provide users with access to a platform that assists users in the selection and personalization of dietary supplements and dietary supplement formulas, and contains information and how-to videos of techniques, digital tutorials and tips in the field of healthcare and lifestyle, and to purchase dietary supplements; Platform as a service (PAAS) featuring computer software platforms for users to upload, capture, post, show, edit, view, display, tag, blog, share, manipulate, distribute, publish, reproduce, and otherwise provide electronic media, multimedia content, pictures, images, text, photos, user-generated content, and information via mobile devices, the Internet, and other communications networks; Providing online non-downloadable software for lifestyle, health, microbiome, DNA, genetic information assessment and consultation in the field of health and lifestyle; Software as a service (SAAS) services, namely, hosting software to enable users to upload, store, manage, share, retrieve, aggregate, and analyze data in the field of healthcare and lifestyle; Software as a service (SAAS) services, namely, hosting software for users to upload, store, manage, share, retrieve, aggregate, and analyze data in the field of healthcare and lifestyle; Software as a service (SAAS) services, namely, hosting software for use in the field of healthcare and lifestyle to assist users in assessing, personalizing, and selecting healthcare and lifestyle productsClass 042 for - Providing temporary use of online, non-downloadable software that allows users to interact with a website to provide users with access to a platform that assists users in the selection and personalization of dietary supplements and dietary supplement formulas, and contains information and how-to videos of techniques, digital tutorials and tips in the field of healthcare and lifestyle, and to purchase dietary supplements; Platform as a service (PAAS) featuring computer software platforms for users to upload, capture, post, show, edit, view, display, tag, blog, share, manipulate, distribute, publish, reproduce, and otherwise provide electronic media, multimedia content, pictures, images, text, photos, user-generated content, and information via mobile devices, the Internet, and other communications networks; Providing online non-downloadable software for lifestyle, health, microbiome, DNA, genetic information assessment and consultation in the field of health and lifestyle; Software as a service (SAAS) services, namely, hosting software to enable users to upload, store, manage, share, retrieve, aggregate, and analyze data in the field of healthcare and lifestyle; Software as a service (SAAS) services, namely, hosting software for users to upload, store, manage, share, retrieve, aggregate, and analyze data in the field of healthcare and lifestyle; Software as a service (SAAS) services, namely, hosting software for use in the field of healthcare and lifestyle to assist users in assessing, personalizing, and selecting healthcare and lifestyle products
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.

Webpage URL: None Provided
Webpage Date of Access: None Provided


Applicant proposes to amend the following:

Current:
Class 044 for Web-based health assessment services, namely, a series of health-related questions for response from the user that result in a report that provides health-related information in the form of recommended educational resources; Consultation services in the field of health, wellness, and nutrition; Wellness analysis to determine dietary supplements and formulas of dietary supplements that are best suited to particular individuals, namely, medical testing for treatment purposes; Health care services, namely, preparation of personalized dietary supplements for others for treatment purposes; Providing a website featuring information on health and nutrition, wellness and cosmetic skin care services
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: Web-based health assessment services, namely, a series of health-related questions for response from the user that result in a report that provides health-related information in the form of recommended educational resources; Providing a website featuring information on cosmetic skin care services; Consultation services in the field of health, wellness, and nutrition; Wellness analysis to determine dietary supplements and formulas of dietary supplements that are best suited to particular individuals, namely, medical testing for treatment purposes; Health care services, namely, preparation of personalized dietary supplements for others for treatment purposes; Providing a website featuring information on health and nutrition, wellness and cosmetic skin care servicesClass 044 for Providing a website featuring information on cosmetic skin care services
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.

Webpage URL: None Provided
Webpage Date of Access: None Provided

Correspondence Information (current):
      BRIAN R. COLEMAN
      PRIMARY EMAIL FOR CORRESPONDENCE: pctrademarks@perkinscoie.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): bcoleman@perkinscoie.com; dsuh@perkinscoie.com; kthompson@perkinscoie.com
Correspondence Information (proposed):
      Share Skincare Inc.
      PRIMARY EMAIL FOR CORRESPONDENCE: USPTO-Notifications@perkinscoie.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): bcoleman@perkinscoie.com; kthompson@perkinscoie.com

The docket/reference number is 130432-4001.

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).

SIGNATURE(S)
Request for Reconsideration Signature
Signature: /brian r. coleman/     Date: 06/03/2021
Signatory's Name: Brian R. Coleman
Signatory's Position: Attorney of Record, California Bar Member
Signature method: Sent to third party for signature

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.

The applicant is not filing a Notice of Appeal in conjunction with this Request for Reconsideration.

Mailing Address:    BRIAN R. COLEMAN
   PERKINS COIE LLP
   
   3150 PORTER DRIVE
   PALO ALTO, California 94304
Mailing Address:    Share Skincare Inc.
   1112 Montana Ave # 116
   Santa Monica, California 90403
        
Serial Number: 88155327
Internet Transmission Date: Thu Jun 03 19:39:06 ET 2021
TEAS Stamp: USPTO/RFR-XXX.XX.XXX.XXX-202106031939061
52771-88155327-780dbd91a415c4129eed7f0c1
574376b1bf084ace748069c86b44c6d19ebbabf9
-N/A-N/A-20210602134312694409