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)

---

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. 88237809 PROACTIVE(Standard Characters, see http://uspto.report/TM/88237809/mark.png) has been amended as follows:

EVIDENCE
Evidence in the nature of Response to Office Action and Declaration of Lori Shyavitz with Exhibits A-F has been attached.
Original PDF file:
evi_63764866-20190913152444305056_._PROACTIVE_-_9.13.19_Response_to_Office_Action.pdf
Converted PDF file(s) ( 13 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
Original PDF file:
evi_63764866-20190913152444305056_._OACTIVE_-_9.13.19_Declaration_of_Lori_Shyavitz_with_exhibits.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_63764866-20190913152444305056_._PROACTIVE_exhibit_a.PDF
Converted PDF file(s) ( 12 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
Original PDF file:
evi_63764866-20190913152444305056_._PROACTIVE_exhibit_b.PDF
Converted PDF file(s) ( 11 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Original PDF file:
evi_63764866-20190913152444305056_._PROACTIVE_exhibit_c.PDF
Converted PDF file(s) ( 41 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
Evidence-16
Evidence-17
Evidence-18
Evidence-19
Evidence-20
Evidence-21
Evidence-22
Evidence-23
Evidence-24
Evidence-25
Evidence-26
Evidence-27
Evidence-28
Evidence-29
Evidence-30
Evidence-31
Evidence-32
Evidence-33
Evidence-34
Evidence-35
Evidence-36
Evidence-37
Evidence-38
Evidence-39
Evidence-40
Evidence-41
Original PDF file:
evi_63764866-20190913152444305056_._PROACTIVE_exhibit_d.PDF
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Original PDF file:
evi_63764866-20190913152444305056_._PROACTIVE_exhibit_e.pdf
Converted PDF file(s) ( 16 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
Evidence-16
Original PDF file:
evi_63764866-20190913152444305056_._PROACTIVE_exhibit_f.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 010 for (Based on Use in Commerce) (Based on 44(d) Priority Application) Hot compresses; cold compresses; hot and cold compresses; (Based on Intent to Use) (Based on 44(e)) Trans Cutaneous Electrical Stimulators; Muscle Stimulators; Electrical Muscle Stimulators; Electro Massagers
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.

Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 11/30/2018 and first used in commerce at least as early as 11/30/2018 , and is now in use in such commerce.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Canada registration number TMA652974 registered 11/18/2005 with a renewal date of 11/18/2020 and an expiration date of 11/18/2020 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: (Based on Use in Commerce) (Based on 44(d) Priority Application) Hot compresses; (Based on Use in Commerce) (Based on 44(d) Priority Application) Chemically activated hot and cold compresses; cold compresses; therapeutic hot and cold compression wraps; hot and cold compresses; thermal energy transfer activated hold and cold compresses; (Based on Intent to Use) (Based on 44(e)) Trans Cutaneous Electrical Stimulators; chemically activated hot compresses; Muscle Stimulators; therapeutic hot compression wraps; Electrical Muscle Stimulators; thermal energy transfer activated hot compresses; Electro Massagers; chemically activated cold compresses; therapeutic cold compression wraps; thermal energy transfer activated cold compresses; (Based on Intent to Use) (Based on 44(e)) electromedical rehabilitative and pain management products for clinical and home use, namely, trans cutaneous electrical stimulators, muscle stimulators and electrical muscle stimulators; electric massage apparatusClass 010 for (Based on Use in Commerce) (Based on 44(d) Priority Application) Chemically activated hot and cold compresses; therapeutic hot and cold compression wraps; thermal energy transfer activated hold and cold compresses; chemically activated hot compresses; therapeutic hot compression wraps; thermal energy transfer activated hot compresses; chemically activated cold compresses; therapeutic cold compression wraps; thermal energy transfer activated cold compresses; (Based on Intent to Use) (Based on 44(e)) electromedical rehabilitative and pain management products for clinical and home use, namely, trans cutaneous electrical stimulators, muscle stimulators and electrical muscle stimulators; electric massage apparatus
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.

Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 11/30/2018 and first used in commerce at least as early as 11/30/2018 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 010 . The specimen(s) submitted consists of Screenshot of website displaying the mark where the product is being offered for sale .
"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:
SPU0-63764866-20190913152444305056_._PROACTIVE_-_New_specimen.pdf
Converted PDF file(s) ( 21 pages)
Specimen File1
Specimen File2
Specimen File3
Specimen File4
Specimen File5
Specimen File6
Specimen File7
Specimen File8
Specimen File9
Specimen File10
Specimen File11
Specimen File12
Specimen File13
Specimen File14
Specimen File15
Specimen File16
Specimen File17
Specimen File18
Specimen File19
Specimen File20
Specimen File21

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Canada registration number TMA652974 registered 11/18/2005 with a renewal date of 11/18/2020 and an expiration date of 11/18/2020 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

The applicant's current attorney information: Lori J. Shyavitz. Lori J. Shyavitz of MCCARTER & ENGLISH, LLP, is located at

      265 FRANKLIN STREET
      BOSTON, Massachusetts 02110
      US

The phone number is 617-449-6561.

The fax number is 617-607-9336.

The email address is lshyavitz@mccarter.com

The applicants proposed attorney information: Lori J. Shyavitz. Lori J. Shyavitz of MCCARTER & ENGLISH, LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      265 FRANKLIN STREET
      BOSTON, Massachusetts 02110
      United States
The docket/reference number is 122530-00065.

The phone number is 617-449-6561.

The fax number is 617-607-9336.

The email address is lshyavitz@mccarter.com

Lori J. Shyavitz 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: LORI J. SHYAVITZ. LORI J. SHYAVITZ of MCCARTER & ENGLISH, LLP, is located at

      265 FRANKLIN STREET
      BOSTON, Massachusetts 02110
      US

The phone number is 617-449-6561.

The fax number is 617-607-9336.

The email address is lshyavitz@mccarter.com; dlynch@mccarter.com; nytmdocket@mccarter.com

The applicants proposed correspondence information: Lori J. Shyavitz. Lori J. Shyavitz of MCCARTER & ENGLISH, LLP, is located at

      265 FRANKLIN STREET
      BOSTON, Massachusetts 02110
      United States
The docket/reference number is 122530-00065.

The phone number is 617-449-6561.

The fax number is 617-607-9336.

The email address is lshyavitz@mccarter.com; dlynch@mccarter.com; nytmdocket@mccarter.com

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: /Lori J. Shyavitz/      Date: 09/13/2019
Signatory's Name: Lori J. Shyavitz, Esq.
Signatory's Position: Attorney for Applicant, Massachusetts Bar Member
Signatory's Phone Number: (617) 449-6500


Response Signature
Signature: /Lori J. Shyavitz/     Date: 09/14/2019
Signatory's Name: Lori J. Shyavitz
Signatory's Position: Attorney of Record, Massachusetts Bar member

Signatory's Phone Number: 617-449-6500

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:    LORI J. SHYAVITZ
   MCCARTER & ENGLISH, LLP
   
   265 FRANKLIN STREET
   BOSTON, Massachusetts 02110
Mailing Address:    Lori J. Shyavitz
   MCCARTER & ENGLISH, LLP
   265 FRANKLIN STREET
   BOSTON, Massachusetts 02110
        
Serial Number: 88237809
Internet Transmission Date: Sat Sep 14 07:53:30 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.XX.XX-201909140753301379
18-88237809-6102358e1c444f4eec409497f646
94ba5d12f1cf44d697d8f2816668fcd2fbe0-N/A
-N/A-20190913183009094036