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. 88243712 SIM (Stylized and/or with Design, see http://uspto.report/TM/88243712/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Please see the actual argument text attached within the Evidence section.

EVIDENCE
Evidence in the nature of argument text in PDF format has been attached.
Original PDF file:
evi_1481702412-20191001144315964026_._88243712_SIM_and_Design_ROA_-_executed.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant hereby deletes the following class of goods/services from the application.
Class 044 for dental imaging services; professional analysis of the face photographs of patients by processing and synthesizing data and information to determine the aesthetic ideal proportion of the patient's teeth and to help execute digital renderings of dental prostheses, implants, dental prototypes and provisional teeth for patients

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for dental imaging services; professional analysis of the face photographs of patients by processing and synthesizing data and information to determine the aesthetic ideal proportion of the patient's teeth and to help execute digital renderings of dental prostheses, implants, dental prototypes and provisional teeth for patients
Original Filing Basis:
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 05/10/2016 and first used in commerce at least as early as 05/10/2016 , and is now in use in such commerce.

Proposed:
Tracked Text Description: dental imaging services; Graphic illustration services for others, namely, illustration services designed to help execute digital renderings of dental prostheses, implants, dental prototypes and provisional teeth for dental patients so that patients may see the result of dental work prior to its execution; professional analysis of the face photographs of patients by processing and synthesizing data and information to determine the aesthetic ideal proportion of the patient's teeth and to help execute digital renderings of dental prostheses, implants, dental prototypes and provisional teeth for patientsClass 042 for Graphic illustration services for others, namely, illustration services designed to help execute digital renderings of dental prostheses, implants, dental prototypes and provisional teeth for dental patients so that patients may see the result of dental work prior to its execution
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 05/10/2016 and first used in commerce at least as early as 05/10/2016 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 042 . The specimen(s) submitted consists of screen shot from Applicant's website .
"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:
SPU0-1481702412-20190917151827058444_._SIM_and_Design_-_Sub_Specimen.pdf
Converted PDF file(s) ( 1 page)
Specimen File1

Applicant hereby adds the following class of goods/services to the application:
New: Class 041 for Photographic computer imaging services, namely, imaging services designed to help execute digital renderings of dental prostheses, implants, dental prototypes and provisional teeth for dental patients so that patients may see the result of dental work prior to its execution
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 05/10/2016 and first used in commerce at least as early as 05/10/2016 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 041 . The specimen(s) submitted consists of screen shot from Applicant's website .
"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:
SPN0-1481702412-20190917151827058444_._SIM_and_Design_-_Sub_Specimen.pdf
Converted PDF file(s) ( 1 page)
Specimen File1

Applicant hereby adds the following class of goods/services to the application:
New: Class 044 for Digital imaging services
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 05/10/2016 and first used in commerce at least as early as 05/10/2016 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 044 . The specimen(s) submitted consists of screen shot from Applicant's website .
"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:
SPN1-1481702412-20190917151827058444_._SIM_and_Design_-_Sub_Specimen.pdf
Converted PDF file(s) ( 1 page)
Specimen File1

The applicant's current attorney information: Matthew Nigriny. Matthew Nigriny of HUNTON ANDREWS KURTH LLP, is located at

      RIVERFRONT PLAZA, EAST TOWER
      951 EAST BYRD STREET
      RICHMOND, Virginia 23219-4074
      US
The docket/reference number is 121233.00001.

The phone number is 804-788-8636.

The fax number is 804-344-7999.

The email address is HWRITM@HuntonAK.com

The applicants proposed attorney information: Matthew Nigriny. Other appointed attorneys are Stephen P. Demm and John Gary Maynard, III. Matthew Nigriny of HUNTON ANDREWS KURTH 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

      Riverfront Plaza, East Tower
      951 East Byrd Street
      Richmond, Virginia 23219-4074
      United States
The docket/reference number is 121233.00001.

The phone number is 804-788-8636.

The fax number is 804-344-7999.

The email address is HWRITM@HuntonAK.com

Matthew Nigriny 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: MATTHEW NIGRINY. MATTHEW NIGRINY of HUNTON ANDREWS KURTH LLP, is located at

      RIVERFRONT PLAZA, EAST TOWER
      951 EAST BYRD STREET
      RICHMOND, Virginia 23219-4074
      US
The docket/reference number is 121233.00001.

The phone number is 804-788-8636.

The fax number is 804-344-7999.

The email address is HWRITM@HuntonAK.com

The applicants proposed correspondence information: Matthew Nigriny. Matthew Nigriny of HUNTON ANDREWS KURTH LLP, is located at

      Riverfront Plaza, East Tower
      951 East Byrd Street
      Richmond, Virginia 23219-4074
      United States
The docket/reference number is 121233.00001.

The phone number is 804-788-8636.

The fax number is 804-344-7999.

The email address is HWRITM@HuntonAK.com

ADDITIONAL STATEMENTS
Supplemental Register
The applicant seeks registration of the mark on the Supplemental Register (i.e., a change of the words 'Principal Register' to 'Supplemental Register').


FEE(S)
Fee(s) in the amount of $550 is being submitted.

SIGNATURE(S)
Declaration Signature
Original PDF file:
HS_1481702412-144315964_._SIM_and_Design_ROA_Decl.pdf
Converted PDF file(s) (1 page)
Signature File1
Signatory's Name: Scott Dudley
Signatory's Position: CEO

Response Signature
Signature: /Matthew Nigriny/     Date: 10/01/2019
Signatory's Name: Matthew Nigriny
Signatory's Position: Attorney of Record, Virginia Bar Member

Signatory's Phone Number: 804-788-8636

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:    MATTHEW NIGRINY
   HUNTON ANDREWS KURTH LLP
   RIVERFRONT PLAZA, EAST TOWER
   951 EAST BYRD STREET
   RICHMOND, Virginia 23219-4074
Mailing Address:    Matthew Nigriny
   HUNTON ANDREWS KURTH LLP
   Riverfront Plaza, East Tower
   951 East Byrd Street
   Richmond, Virginia 23219-4074
        
RAM Sale Number: 88243712
RAM Accounting Date: 10/01/2019
        
Serial Number: 88243712
Internet Transmission Date: Tue Oct 01 15:03:39 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.X-2019100115033904
5018-88243712-6107d2c67d0a8b719c9cdc4647
b45a1e35c8b8576f7ca1db153ec4cb42bfb2f4e4
-DA-02356388-20191001144315964026