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. 88222789 TRIALCLARITY(Standard Characters, see http://uspto.report/TM/88222789/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 009 for Software and cloud-based Software As A Service (SaaS) for use with collecting, storing, managing, organizing, and sharing data, images, messages, emails, and medical device data used in the fields of medical and pharmaceutical clinical trials and research, namely, for determining, managing, monitoring, controlling, analyzing, and reporting on the status, performance, safety, and results of medical and pharmaceutical clinical trials and medical research; for the deriving, computing, and determining indicators and metrics of status, performance, safety, results, and outcomes in a medical or pharmaceutical clinical trial or research program; for facilitating decision-making by sponsors of medical and pharmaceutical clinical trials and research regarding the conduct of and adjustments to the execution of a medical and pharmaceutical clinical trial and research to optimize the outcomes; and for communicating, enabling, guiding, facilitating, and tracking the actions taken by medical and pharmaceutical clinical trial and research team personnel
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: Software and cloud-based Software As A Service (SaaS) for use with collecting, storing, managing, organizing, and sharing data, images, messages, emails, and medical device data used in the fields of medical and pharmaceutical clinical trials and research, namely, for determining, managing, monitoring, controlling, analyzing, and reporting on the status, performance, safety, and results of medical and pharmaceutical clinical trials and medical research; Recorded software for collecting, storing, managing, organizing, and sharing data, images, messages, emails, and medical device data used in the fields of medical and pharmaceutical clinical trials and research, namely, for determining, managing, monitoring, controlling, analyzing, and reporting on the status, performance, safety, and results of medical and pharmaceutical clinical trials and medical research; for the deriving, computing, and determining indicators and metrics of status, performance, safety, results, and outcomes in a medical or pharmaceutical clinical trial or research program; recorded software for the deriving, computing, and determining indicators and metrics of status, performance, safety, results, and outcomes in a medical or pharmaceutical clinical trial or research program; for facilitating decision-making by sponsors of medical and pharmaceutical clinical trials and research regarding the conduct of and adjustments to the execution of a medical and pharmaceutical clinical trial and research to optimize the outcomes; recorded software for facilitating decision-making by sponsors of medical and pharmaceutical clinical trials and research regarding the conduct of and adjustments to the execution of a medical and pharmaceutical clinical trial and research to optimize the outcomes; and for communicating, enabling, guiding, facilitating, and tracking the actions taken by medical and pharmaceutical clinical trial and research team personnel; and recorded software for communicating, enabling, guiding, facilitating, and tracking the actions taken by medical and pharmaceutical clinical trial and research team personnelClass 009 for Recorded software for collecting, storing, managing, organizing, and sharing data, images, messages, emails, and medical device data used in the fields of medical and pharmaceutical clinical trials and research, namely, for determining, managing, monitoring, controlling, analyzing, and reporting on the status, performance, safety, and results of medical and pharmaceutical clinical trials and medical research; recorded software for the deriving, computing, and determining indicators and metrics of status, performance, safety, results, and outcomes in a medical or pharmaceutical clinical trial or research program; recorded software for facilitating decision-making by sponsors of medical and pharmaceutical clinical trials and research regarding the conduct of and adjustments to the execution of a medical and pharmaceutical clinical trial and research to optimize the outcomes; and recorded software for communicating, enabling, guiding, facilitating, and tracking the actions taken by medical and pharmaceutical clinical trial and research team personnel
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 Consulting services in the area of the design, planning, implementation, and use of software and SaaS, namely, installation, adaptation, customization, training, and education
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: Consulting services in the area of the design, planning, implementation, and use of software and SaaS, namely, installation, adaptation, customization, training, and education; Consulting services in the area of the design, planning, implementation, and use of software and SAAS services, namely, installation, and customization of computer software; software as a service (SAAS) services featuring software for collecting, storing, managing, organizing, and sharing data, images, messages, emails, and medical device data used in the fields of medical and pharmaceutical clinical trials and research, namely, for determining, managing, monitoring, controlling, analyzing, and reporting on the status, performance, safety, and results of medical and pharmaceutical clinical trials and medical research; software as a service (SAAS) services featuring software for the deriving, computing, and determining indicators and metrics of status, performance, safety, results, and outcomes in a medical or pharmaceutical clinical trial or research program; software as a service (SAAS) services featuring software for facilitating decision-making by sponsors of medical and pharmaceutical clinical trials and research regarding the conduct of and adjustments to the execution of a medical and pharmaceutical clinical trial and research to optimize the outcomes; and software as a service (SAAS) services featuring software for communicating, enabling, guiding, facilitating, and tracking the actions taken by medical and pharmaceutical clinical trial and research team personnelClass 042 for Consulting services in the area of the design, planning, implementation, and use of software and SAAS services, namely, installation, and customization of computer software; software as a service (SAAS) services featuring software for collecting, storing, managing, organizing, and sharing data, images, messages, emails, and medical device data used in the fields of medical and pharmaceutical clinical trials and research, namely, for determining, managing, monitoring, controlling, analyzing, and reporting on the status, performance, safety, and results of medical and pharmaceutical clinical trials and medical research; software as a service (SAAS) services featuring software for the deriving, computing, and determining indicators and metrics of status, performance, safety, results, and outcomes in a medical or pharmaceutical clinical trial or research program; software as a service (SAAS) services featuring software for facilitating decision-making by sponsors of medical and pharmaceutical clinical trials and research regarding the conduct of and adjustments to the execution of a medical and pharmaceutical clinical trial and research to optimize the outcomes; and software as a service (SAAS) services featuring software for communicating, enabling, guiding, facilitating, and tracking the actions taken by medical and pharmaceutical clinical trial and research team personnel
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.

The applicant's current attorney information: Holmes W. Anderson. Holmes W. Anderson of ANDERSON GORECKI LLP, is located at

      2 DUNDEE PARK, SUITE 301A
      ANDOVER, Massachusetts 01810
      US
The docket/reference number is 777-013T.

The phone number is 978-264-4001.

The email address is handerson@andersongorecki.com

The applicants proposed attorney information: Holmes W. Anderson. Holmes W. Anderson of ANDERSON GORECKI LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      2 DUNDEE PARK, SUITE 301A
      ANDOVER, Massachusetts 01810
      United States
The docket/reference number is 777-013T.

The phone number is 978-264-4001.

The email address is handerson@andersongorecki.com

Holmes W. Anderson 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: HOLMES W. ANDERSON. HOLMES W. ANDERSON of ANDERSON GORECKI LLP, is located at

      2 DUNDEE PARK, SUITE 301A
      ANDOVER, Massachusetts 01810
      US
The docket/reference number is 777-013T.

The phone number is 978-264-4001.

The email address is handerson@andersongorecki.com; jgorecki@andersongorecki.com

The applicants proposed correspondence information: Holmes W. Anderson. Holmes W. Anderson of ANDERSON GORECKI LLP, is located at

      2 DUNDEE PARK, SUITE 301A
      ANDOVER, Massachusetts 01810
      United States
The docket/reference number is 777-013T.

The phone number is 978-264-4001.

The email address is handerson@andersongorecki.com; handerson@smmalaw.com

SIGNATURE(S)
Response Signature
Signature: /Holmes W. Anderson/     Date: 09/12/2019
Signatory's Name: Holmes W. Anderson
Signatory's Position: Attorney of record

Signatory's Phone Number: 978-264-4001

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:    HOLMES W. ANDERSON
   ANDERSON GORECKI LLP
   
   2 DUNDEE PARK, SUITE 301A
   ANDOVER, Massachusetts 01810
Mailing Address:    Holmes W. Anderson
   ANDERSON GORECKI LLP
   2 DUNDEE PARK, SUITE 301A
   ANDOVER, Massachusetts 01810
        
Serial Number: 88222789
Internet Transmission Date: Thu Sep 12 11:38:47 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.XX.XXX-20190912113847454
494-88222789-61054306ec5383460fb7263f043
5935916a85236a145fd9b24d399907b28fd5b80-
N/A-N/A-20190912113532196164