Response to Office Action

ENGAGE BY GREENWICH BIOSCIENCES

GW Research Limited

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)

Response to Office Action


The table below presents the data as entered.

Input Field
Entered
SERIAL NUMBER 88226693
LAW OFFICE ASSIGNED LAW OFFICE 122
MARK SECTION
MARK FILE NAME http://uspto.report/TM/88226693/mark.png
LITERAL ELEMENT ENGAGE BY GREENWICH BIOSCIENCES
STANDARD CHARACTERS NO
USPTO-GENERATED IMAGE NO
COLOR(S) CLAIMED
(If applicable)
Color is not claimed as a feature of the mark.
DESCRIPTION OF THE MARK
(and Color Location, if applicable)
The mark consists of the wording "engage" appearing in larger font above the wording "by Greenwich Biosciences" appearing in smaller font. All of the aforementioned appears to the right of a series of dots forming a vertical curved line graduating in size from bottom to top.
GOODS AND/OR SERVICES SECTION (016)(current)
INTERNATIONAL CLASS 016
DESCRIPTION
Printed matter; books; magazines; posters; leaflets; manuals; instructional and teaching materials; all of the aforesaid relating to medical disorders and conditions, medical treatments and equipment, pharmaceutical preparations and dosing and administering of medication
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (016)(proposed)
INTERNATIONAL CLASS 016
TRACKED TEXT DESCRIPTION
Printed matter; printed matter, namely, books, magazines, posters, leaflets, manuals, and instructional and teaching materials, in the field of medical disorders and conditions, medical treatments and equipment, pharmaceutical preparations and dosing and administering of medication; books; magazines; posters; leaflets; manuals; instructional and teaching materials; all of the aforesaid relating to medical disorders and conditions, medical treatments and equipment, pharmaceutical preparations and dosing and administering of medication
FINAL DESCRIPTION
printed matter, namely, books, magazines, posters, leaflets, manuals, and instructional and teaching materials, in the field of medical disorders and conditions, medical treatments and equipment, pharmaceutical preparations and dosing and administering of medication
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (036)(current)
INTERNATIONAL CLASS 036
DESCRIPTION
Medical and health care insurance services; savings scheme services relating to medical and health care insurance; administration of patient reimbursement programs; assisting others with insurance verification and evaluation, eligibility status and related information; providing information about medical and healthcare insurance plans; information, advisory and consultancy services relating to all the aforesaid services
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (036)(proposed)
INTERNATIONAL CLASS 036
TRACKED TEXT DESCRIPTION
Medical and health care insurance services; Medical and health care insurance services, namely, medical and health care insurance information, consultancy, administration, brokerage, underwriting, providing information about healthcare insurance plans; savings scheme services relating to medical and health care insurance; savings account services relating to medical and health care insurance; administration of patient reimbursement programs; financial administration of patient reimbursement programs; assisting others with insurance verification and evaluation, eligibility status and related information; insurance services, namely, insurance eligibility review and verification and consultation related to medical and health care insurance; providing information about medical and healthcare insurance plans; information, advisory and consultancy services relating to all the aforesaid services; providing information, advisory and consultancy services relating to the aforesaid services
FINAL DESCRIPTION
Medical and health care insurance services, namely, medical and health care insurance information, consultancy, administration, brokerage, underwriting, providing information about healthcare insurance plans; savings account services relating to medical and health care insurance; financial administration of patient reimbursement programs; insurance services, namely, insurance eligibility review and verification and consultation related to medical and health care insurance; providing information about medical and healthcare insurance plans; providing information, advisory and consultancy services relating to the aforesaid services
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (044)(current)
INTERNATIONAL CLASS 044
DESCRIPTION
Providing medical support to healthcare professionals, caregivers and patients; provision of information and advice relating to medical disorders and conditions, medical treatments and pharmaceutical preparations; provision of information and advice relating to the dosing and administering of medication; provision of information and advice relating to medical equipment; information, advisory and consultancy services relating to all the aforesaid services
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (044)(proposed)
INTERNATIONAL CLASS 044
TRACKED TEXT DESCRIPTION
Providing medical support to healthcare professionals, caregivers and patients; providing medical support namely, providing an internet website for medical professionals, caregivers, and patients featuring medical information; provision of information and advice relating to medical disorders and conditions, medical treatments and pharmaceutical preparations; provision of information and advice relating to the dosing and administering of medication; provision of information and advice relating to medical equipment; information, advisory and consultancy services relating to all the aforesaid services; providing information, advisory and consultancy services relating to the aforesaid services
FINAL DESCRIPTION
providing medical support namely, providing an internet website for medical professionals, caregivers, and patients featuring medical information; provision of information and advice relating to medical disorders and conditions, medical treatments and pharmaceutical preparations; provision of information and advice relating to the dosing and administering of medication; provision of information and advice relating to medical equipment; providing information, advisory and consultancy services relating to the aforesaid services
FILING BASIS Section 1(b)
ADDITIONAL STATEMENTS SECTION
DISCLAIMER No claim is made to the exclusive right to use "BIOSCIENCES" apart from the mark as shown.
ATTORNEY SECTION (current)
NAME Anessa O. Kramer
ATTORNEY BAR MEMBERSHIP NUMBER NOT SPECIFIED
YEAR OF ADMISSION NOT SPECIFIED
U.S. STATE/ COMMONWEALTH/ TERRITORY NOT SPECIFIED
FIRM NAME HONIGMAN MILLER SCHWARTZ AND COHN LLP
STREET 39400 WOODWARD AVENUE, SUITE 101
CITY BLOOMFIELD HILLS
STATE Michigan
POSTAL CODE 48304-5151
COUNTRY US
PHONE 248-566-8406
FAX 248-566-8407
EMAIL trademark@honigman.com
AUTHORIZED TO COMMUNICATE VIA EMAIL Yes
DOCKET/REFERENCE NUMBER 224143-TBD
ATTORNEY SECTION (proposed)
NAME Anessa O. Kramer
ATTORNEY BAR MEMBERSHIP NUMBER XXX
YEAR OF ADMISSION XXXX
U.S. STATE/ COMMONWEALTH/ TERRITORY XX
FIRM NAME HONIGMAN LLP
STREET 39400 WOODWARD AVE STE 101
CITY BLOOMFIELD HILLS
STATE Michigan
POSTAL CODE 48304-5151
COUNTRY United States
PHONE 248-566-8406
FAX 248-566-8407
EMAIL trademark@honigman.com
AUTHORIZED TO COMMUNICATE VIA EMAIL Yes
DOCKET/REFERENCE NUMBER 224143-TBD
OTHER APPOINTED ATTORNEY Jennifer M. Hetu, Julie E. Reitz, Angela Sujek, Nicole Kryzhan, Amanda M. Blackburn
CORRESPONDENCE SECTION (current)
NAME ANESSA O. KRAMER
FIRM NAME HONIGMAN MILLER SCHWARTZ AND COHN LLP
STREET 39400 WOODWARD AVENUE, SUITE 101
CITY BLOOMFIELD HILLS
STATE Michigan
POSTAL CODE 48304-5151
COUNTRY US
PHONE 248-566-8406
FAX 248-566-8407
EMAIL trademark@honigman.com
AUTHORIZED TO COMMUNICATE VIA EMAIL Yes
DOCKET/REFERENCE NUMBER 224143-TBD
CORRESPONDENCE SECTION (proposed)
NAME Anessa O. Kramer
FIRM NAME HONIGMAN LLP
STREET 39400 WOODWARD AVE STE 101
CITY BLOOMFIELD HILLS
STATE Michigan
POSTAL CODE 48304-5151
COUNTRY United States
PHONE 248-566-8406
FAX 248-566-8407
EMAIL trademark@honigman.com
AUTHORIZED TO COMMUNICATE VIA EMAIL Yes
DOCKET/REFERENCE NUMBER 224143-TBD
SIGNATURE SECTION
RESPONSE SIGNATURE /jmh/
SIGNATORY'S NAME Jennifer M. Hetu
SIGNATORY'S POSITION Attorney of record, Michigan bar member
SIGNATORY'S PHONE NUMBER 2485668452
DATE SIGNED 09/06/2019
AUTHORIZED SIGNATORY YES
FILING INFORMATION SECTION
SUBMIT DATE Fri Sep 06 16:10:59 EDT 2019
TEAS STAMP USPTO/ROA-XXX.XXX.XX.XXX-
20190906161059016143-8822
6693-6107f11dd8f7c97d5857
e101de15bdfd433a7dddab1b1
c54d5149a537d1144917-N/A-
N/A-20190906160610847578



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. 88226693 ENGAGE BY GREENWICH BIOSCIENCES (Stylized and/or with Design, see http://uspto.report/TM/88226693/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 016 for Printed matter; books; magazines; posters; leaflets; manuals; instructional and teaching materials; all of the aforesaid relating to medical disorders and conditions, medical treatments and equipment, pharmaceutical preparations and dosing and administering of medication
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: Printed matter; printed matter, namely, books, magazines, posters, leaflets, manuals, and instructional and teaching materials, in the field of medical disorders and conditions, medical treatments and equipment, pharmaceutical preparations and dosing and administering of medication; books; magazines; posters; leaflets; manuals; instructional and teaching materials; all of the aforesaid relating to medical disorders and conditions, medical treatments and equipment, pharmaceutical preparations and dosing and administering of medicationClass 016 for printed matter, namely, books, magazines, posters, leaflets, manuals, and instructional and teaching materials, in the field of medical disorders and conditions, medical treatments and equipment, pharmaceutical preparations and dosing and administering of medication
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 036 for Medical and health care insurance services; savings scheme services relating to medical and health care insurance; administration of patient reimbursement programs; assisting others with insurance verification and evaluation, eligibility status and related information; providing information about medical and healthcare insurance plans; information, advisory and consultancy services relating to all the aforesaid services
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: Medical and health care insurance services; Medical and health care insurance services, namely, medical and health care insurance information, consultancy, administration, brokerage, underwriting, providing information about healthcare insurance plans; savings scheme services relating to medical and health care insurance; savings account services relating to medical and health care insurance; administration of patient reimbursement programs; financial administration of patient reimbursement programs; assisting others with insurance verification and evaluation, eligibility status and related information; insurance services, namely, insurance eligibility review and verification and consultation related to medical and health care insurance; providing information about medical and healthcare insurance plans; information, advisory and consultancy services relating to all the aforesaid services; providing information, advisory and consultancy services relating to the aforesaid servicesClass 036 for Medical and health care insurance services, namely, medical and health care insurance information, consultancy, administration, brokerage, underwriting, providing information about healthcare insurance plans; savings account services relating to medical and health care insurance; financial administration of patient reimbursement programs; insurance services, namely, insurance eligibility review and verification and consultation related to medical and health care insurance; providing information about medical and healthcare insurance plans; providing information, advisory and consultancy services relating to the aforesaid 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 proposes to amend the following class of goods/services in the application:
Current: Class 044 for Providing medical support to healthcare professionals, caregivers and patients; provision of information and advice relating to medical disorders and conditions, medical treatments and pharmaceutical preparations; provision of information and advice relating to the dosing and administering of medication; provision of information and advice relating to medical equipment; information, advisory and consultancy services relating to all the aforesaid services
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 medical support to healthcare professionals, caregivers and patients; providing medical support namely, providing an internet website for medical professionals, caregivers, and patients featuring medical information; provision of information and advice relating to medical disorders and conditions, medical treatments and pharmaceutical preparations; provision of information and advice relating to the dosing and administering of medication; provision of information and advice relating to medical equipment; information, advisory and consultancy services relating to all the aforesaid services; providing information, advisory and consultancy services relating to the aforesaid servicesClass 044 for providing medical support namely, providing an internet website for medical professionals, caregivers, and patients featuring medical information; provision of information and advice relating to medical disorders and conditions, medical treatments and pharmaceutical preparations; provision of information and advice relating to the dosing and administering of medication; provision of information and advice relating to medical equipment; providing information, advisory and consultancy services relating to the aforesaid 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.

The applicant's current attorney information: Anessa O. Kramer. Anessa O. Kramer of HONIGMAN MILLER SCHWARTZ AND COHN LLP, is located at

      39400 WOODWARD AVENUE, SUITE 101
      BLOOMFIELD HILLS, Michigan 48304-5151
      US
The docket/reference number is 224143-TBD.

The phone number is 248-566-8406.

The fax number is 248-566-8407.

The email address is trademark@honigman.com

The applicants proposed attorney information: Anessa O. Kramer. Other appointed attorneys are Jennifer M. Hetu, Julie E. Reitz, Angela Sujek, Nicole Kryzhan, Amanda M. Blackburn. Anessa O. Kramer of HONIGMAN LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      39400 WOODWARD AVE STE 101
      BLOOMFIELD HILLS, Michigan 48304-5151
      United States
The docket/reference number is 224143-TBD.

The phone number is 248-566-8406.

The fax number is 248-566-8407.

The email address is trademark@honigman.com

Anessa O. Kramer 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: ANESSA O. KRAMER. ANESSA O. KRAMER of HONIGMAN MILLER SCHWARTZ AND COHN LLP, is located at

      39400 WOODWARD AVENUE, SUITE 101
      BLOOMFIELD HILLS, Michigan 48304-5151
      US
The docket/reference number is 224143-TBD.

The phone number is 248-566-8406.

The fax number is 248-566-8407.

The email address is trademark@honigman.com

The applicants proposed correspondence information: Anessa O. Kramer. Anessa O. Kramer of HONIGMAN LLP, is located at

      39400 WOODWARD AVE STE 101
      BLOOMFIELD HILLS, Michigan 48304-5151
      United States
The docket/reference number is 224143-TBD.

The phone number is 248-566-8406.

The fax number is 248-566-8407.

The email address is trademark@honigman.com

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use "BIOSCIENCES" apart from the mark as shown.


SIGNATURE(S)
Response Signature
Signature: /jmh/     Date: 09/06/2019
Signatory's Name: Jennifer M. Hetu
Signatory's Position: Attorney of record, Michigan bar member

Signatory's Phone Number: 2485668452

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:    ANESSA O. KRAMER
   HONIGMAN MILLER SCHWARTZ AND COHN LLP
   
   39400 WOODWARD AVENUE, SUITE 101
   BLOOMFIELD HILLS, Michigan 48304-5151
Mailing Address:    Anessa O. Kramer
   HONIGMAN LLP
   39400 WOODWARD AVE STE 101
   BLOOMFIELD HILLS, Michigan 48304-5151
        
Serial Number: 88226693
Internet Transmission Date: Fri Sep 06 16:10:59 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XXX-201909061610590
16143-88226693-6107f11dd8f7c97d5857e101d
e15bdfd433a7dddab1b1c54d5149a537d1144917
-N/A-N/A-20190906160610847578



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