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. 88216695 COSMOS(Standard Characters, see http://uspto.report/TM/88216695/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Providing an online searchable database featuring educational content, including conference handouts, case studies, regulatory information, audio recordings, magazines, newsletters, journals, articles, books, manuals, studies, surveys, news and reports and a platform for e-publications and downloadable regulatory compliance and ethics content, for healthcare and corporate compliance and ethics professionals
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: Providing an online searchable database featuring educational content, including conference handouts, case studies, regulatory information, audio recordings, magazines, newsletters, journals, articles, books, manuals, studies, surveys, news and reports and a platform for e-publications and downloadable regulatory compliance and ethics content, for healthcare and corporate compliance and ethics professionals; Providing educational content, including conference handouts, case studies, regulatory information, audio recordings, magazines, newsletters, journals, articles, books, manuals, studies, surveys, news and reports for healthcare and corporate compliance and ethics professionals.Class 041 for Providing educational content, including conference handouts, case studies, regulatory information, audio recordings, magazines, newsletters, journals, articles, books, manuals, studies, surveys, news and reports for healthcare and corporate compliance and ethics professionals.
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 042 for Platform as a service (PAAS) featuring computer software platforms that can distribute to third party systems, via proprietary APIs, U.S. state, federal, and international legal, regulatory and administrative primary source materials, audio and video recordings, and authored and/or editorially-curated data in the field of compliance and business ethics for healthcare and corporate compliance and ethics professionals.
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 045 for Providing an online searchable database featuring regulatory compliance information in the field of state and federal laws and regulations, ethics content, for healthcare and corporate compliance and ethics professionals, including the ability to view such information in the form of conference handouts, case studies, U.S. state, federal, and international legal, regulatory and administrative materials, audio and video recordings, magazines, newsletters, journals, articles, books, manuals, studies, surveys, news and reports.
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 03/28/2019 and first used in commerce at least as early as 03/28/2019 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 045 . The specimen(s) submitted consists of Screenshots of Applicant's website found online at http://www.compliancecosmos.org showing the Applicant's services as specified in the description. .
"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:
SPN1-65121642-20190906102303467679_._HCCA_Specimen_1_for_88216695.pdf
Converted PDF file(s) ( 1 page)
Specimen File1
Original PDF file:
SPN1-65121642-20190906102303467679_._HCCA_Specimen_2_for_88216695.pdf
Converted PDF file(s) ( 1 page)
Specimen File1
Original PDF file:
SPN1-65121642-20190906102303467679_._HCCA_Specimen_3_for_88216695.pdf
Converted PDF file(s) ( 1 page)
Specimen File1

Applicant hereby adds the following class of goods/services to the application:
New: Class 035 for Providing an online searchable database of content in the field of business ethics for healthcare and corporate compliance and ethics professionals, including the ability to view such information in the form of conference handouts, case studies, U.S. state, federal, and international legal, regulatory and administrative materials, audio and video recordings, magazines, newsletters, journals, articles, books, manuals, studies, surveys, news and reports.
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 03/28/2019 and first used in commerce at least as early as 03/28/2019 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 035 . The specimen(s) submitted consists of Screenshots of Applicant's website found online at http://www.compliancecosmos.org showing the Applicant's services as specified in the description. .
"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:
SPN2-65121642-20190906102303467679_._HCCA_Specimen_1_for_88216695.pdf
Converted PDF file(s) ( 1 page)
Specimen File1
Original PDF file:
SPN2-65121642-20190906102303467679_._HCCA_Specimen_2_for_88216695.pdf
Converted PDF file(s) ( 1 page)
Specimen File1
Original PDF file:
SPN2-65121642-20190906102303467679_._HCCA_Specimen_3_for_88216695.pdf
Converted PDF file(s) ( 1 page)
Specimen File1

Applicant hereby adds the following class of goods/services to the application:
New: Class 009 for Providing downloadable content in the field of compliance and business ethics for healthcare and corporate compliance and ethics professionals, including conference handouts, case studies, U.S. state, federal, and international legal, regulatory and administrative materials, audio and video recordings, magazines, newsletters, journals, articles, books, manuals, studies, surveys, news and reports.
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 03/28/2019 and first used in commerce at least as early as 03/28/2019 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 009 . The specimen(s) submitted consists of Screenshots of Applicant's website found online at http://www.compliancecosmos.org showing Applicant's downloadable content. As an example, from the main page of Applicant's website a search on a topic like ?incentives? would provide a list of search results (see Specimen 4a); select a specific article and a synopsis is provided (see Specimen 4b); and (if a subscriber or if purchased) the article would be provided as a downloadable PDF (see Specimen 4c - page 1 of a 64-page article). .
"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:
SPN3-65121642-20190906102303467679_._HCCA_Specimen_4a_for_88216695.pdf
Converted PDF file(s) ( 1 page)
Specimen File1
Original PDF file:
SPN3-65121642-20190906102303467679_._HCCA_Specimen_4b_for_88216695.pdf
Converted PDF file(s) ( 1 page)
Specimen File1
Original PDF file:
SPN3-65121642-20190906102303467679_._HCCA_Specimen_4c_for_88216695.pdf
Converted PDF file(s) ( 1 page)
Specimen File1

The applicant's current attorney information: Katheryn A. Andresen. Katheryn A. Andresen of NILAN JOHNSON LEWIS PA, is located at

      120 SOUTH SIXTH STREET, SUITE 400
      MINNEAPOLIS, Minnesota 55402
      US
The docket/reference number is 50508-0019.

The phone number is 612-305-7730.

The fax number is 612-305-7501.

The email address is kandresen@nilanjohnson.com

The applicants proposed attorney information: Katheryn A. Andresen. Other appointed attorneys are Kaitlin Eisler. Katheryn A. Andresen of NILAN JOHNSON LEWIS PA, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      120 SOUTH SIXTH STREET, SUITE 400
      MINNEAPOLIS, Minnesota 55402
      United States
The docket/reference number is 50508-0019.

The phone number is 612-305-7730.

The fax number is 612-305-7501.

The email address is kandresen@nilanjohnson.com

Katheryn A. Andresen 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: KATHERYN A. ANDRESEN. KATHERYN A. ANDRESEN of NILAN JOHNSON LEWIS PA, is located at

      120 SOUTH SIXTH STREET, SUITE 400
      MINNEAPOLIS, Minnesota 55402
      US
The docket/reference number is 50508-0019.

The phone number is 612-305-7730.

The fax number is 612-305-7501.

The email address is kandresen@nilanjohnson.com; trademark@nilanjohnson.com

The applicants proposed correspondence information: Katheryn A. Andresen. Katheryn A. Andresen of NILAN JOHNSON LEWIS PA, is located at

      120 SOUTH SIXTH STREET, SUITE 400
      MINNEAPOLIS, Minnesota 55402
      United States
The docket/reference number is 50508-0019.

The phone number is 612-305-7730.

The fax number is 612-305-7501.

The email address is kandresen@nilanjohnson.com; trademark@nilanjohnson.com

FEE(S)
Fee(s) in the amount of $1100 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: /KFEisler/      Date: 09/06/2019
Signatory's Name: Kaitlin F Eisler
Signatory's Position: Associate Attorney, Nilan Johnson Lewis, Minnesota Bar member
Signatory's Phone Number: 6123057760


Response Signature
Signature: /KFEisler/     Date: 09/06/2019
Signatory's Name: Kaitlin F Eisler
Signatory's Position: Associate Attorney, Nilan Johnson Lewis, Minnesota Bar member

Signatory's Phone Number: 6123057760

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:    KATHERYN A. ANDRESEN
   NILAN JOHNSON LEWIS PA
   
   120 SOUTH SIXTH STREET, SUITE 400
   MINNEAPOLIS, Minnesota 55402
Mailing Address:    Katheryn A. Andresen
   NILAN JOHNSON LEWIS PA
   120 SOUTH SIXTH STREET, SUITE 400
   MINNEAPOLIS, Minnesota 55402
        
RAM Sale Number: 88216695
RAM Accounting Date: 09/06/2019
        
Serial Number: 88216695
Internet Transmission Date: Fri Sep 06 11:39:36 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.X.XX-201909061139363854
83-88216695-6108282c3ea8e3df5ac68da2ad97
8a3f39934343a3c8176aeed41fb13665d0-CC-39
357610-20190906102303467679