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. 88155327 SOLUTION(Standard Characters, see http://uspto.report/TM/88155327/mark.png) has been amended as follows:

EVIDENCE
Evidence in the nature of argument has been attached.
Original PDF file:
evi_6677102222-20190724200612876292_._SOLUTION_ROA_Classes_9_42_44.pdf
Converted PDF file(s) ( 15 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
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
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: 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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for 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
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: 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.

Applicant proposes to amend the following class of goods/services in the application:
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, nutrition and lifestyle; Wellness analysis to determine dietary supplements and formulas of dietary supplements that are best suited to particular individuals; Preparation of personalized dietary supplements for others; Providing a website featuring information on health and nutrition, wellness and cosmetics
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: 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, nutrition and lifestyle; 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; Wellness analysis to determine dietary supplements and formulas of dietary supplements that are best suited to particular individuals, namely, medical testing for treatment purposes; Preparation of personalized dietary supplements for others; 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 cosmetics; Providing a website featuring information on health and nutrition, wellness and cosmetic skin care servicesClass 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.

Applicant hereby adds the following class of goods/services to the application:
New: 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.

CORRESPONDENCE ADDRESS CHANGE
Applicant proposes to amend the following:
Current:
BRIAN R. COLEMAN
PERKINS COIE LLP
3150 PORTER DRIVE
PALO ALTO
California
US
94304

Proposed:
BRIAN R. COLEMAN of PERKINS COIE LLP, having an address of
3150 PORTER DRIVE PALO ALTO, California 94304
United States
pctrademarks@perkinscoie.com;bcoleman@perkinscoie.com;dsuh@perkinscoie.com;kthompson@perkinscoie.com
650-838-4300
650-838-4350
The docket/reference number is 130432-4001 .



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: /Danielle Suh/      Date: 07/24/2019
Signatory's Name: Danielle Suh
Signatory's Position: Associate of Attorney of Record, CA bar member

Response Signature
Signature: /Danielle Suh/     Date: 07/24/2019
Signatory's Name: Danielle Suh
Signatory's Position: Associate of Attorney of Record, CA bar member

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.

Mailing Address:    BRIAN R. COLEMAN
   PERKINS COIE LLP
   3150 PORTER DRIVE
   PALO ALTO, California 94304
        
RAM Sale Number: 88155327
RAM Accounting Date: 07/25/2019
        
Serial Number: 88155327
Internet Transmission Date: Wed Jul 24 22:07:55 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2019072422075589
5930-88155327-620bb3b862757d460c859906ba
8cdca9c2b84de5beaf423ac5279663973129fec-
DA-6543-20190724200612876292