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. 88247339 DREAM...DO...GROW!(Standard Characters, see http://uspto.report/TM/88247339/mark.png) has been amended as follows:

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

In Class 44, the Examiner requires further clarity with respect to the medical consultancy services and health care consultancy services by adding the language in the nature of consulting services in the field of medical care. Applicant respectfully submits that this additional language is unnecessary because the wording medical, health care, and especially for people with bleeding disorders already specifies the field for the consulting services. Further, the Trademark Office Identification Manual shows medical consultations is acceptable alone without more specificity. If medical consultations without more specificity is sufficient, health care consultations should be sufficient too. Moreover, recent registrations and approved applications shows the Office has approved and registered health care consultation, health care consultancy, consultancy related to health care services alone as well. (See Exhibit A.) Accordingly, Applicant respectfully requests that the Examiner reconsider and withdraw the requirement to add the additional language.

EVIDENCE
Evidence in the nature of Internet Evidence has been attached.
Original PDF file:
evi_19294203253-20190805161002305076_._339_496248_Exhibit_A_re_Medical_and_Health_Care_Consultation.pdf
Converted PDF file(s) ( 17 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

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 005 for Pharmaceuticals and pharmaceutical preparations, especially for people with bleeding disorders; Pharmaceutical products, in particular blood plasma preparations, plasma derivatives, coagulation factors, growth factors, proteins derived from plasma and medicines, especially containing immunoglobulin
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: Pharmaceuticals and pharmaceutical preparations, especially for people with bleeding disorders; Pharmaceuticals and pharmaceutical preparations for treating emergency and trauma conditions, bleeding disorders, and immunological disorders; Pharmaceutical products, in particular blood plasma preparations, plasma derivatives, coagulation factors, growth factors, proteins derived from plasma and medicines, especially containing immunoglobulin; Pharmaceutical preparations, namely blood plasma, blood plasma derivatives, blood plasma coagulation factors in the nature of Factor VIII and Von Willebrand factor blood-clotting proteins, blood plasma proteins in the nature of immunoglobulins, recombinant blood plasma derivatives, recombinant blood plasma factors, recombinant blood plasma proteins and recombinant immunoglobulins, all for treating emergency and trauma conditions, bleeding disorders, and immunological disordersClass 005 for Pharmaceuticals and pharmaceutical preparations for treating emergency and trauma conditions, bleeding disorders, and immunological disorders; Pharmaceutical preparations, namely blood plasma, blood plasma derivatives, blood plasma coagulation factors in the nature of Factor VIII and Von Willebrand factor blood-clotting proteins, blood plasma proteins in the nature of immunoglobulins, recombinant blood plasma derivatives, recombinant blood plasma factors, recombinant blood plasma proteins and recombinant immunoglobulins, all for treating emergency and trauma conditions, bleeding disorders, and immunological disorders
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 Medical services, particularly medical services of a blood donation center, medical consultancy services, health care consultancy services (medical), especially for people with bleeding disorders; medical information services, especially for people with bleeding disorders; medical consultancy services, especially for people with bleeding disorders
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 services, particularly medical services of a blood donation center, medical consultancy services, health care consultancy services (medical), especially for people with bleeding disorders; Medical services, namely, medical services provided at a blood donation center, medical consultancy services and health care consultancy services especially for people with bleeding disorders; medical information services, especially for people with bleeding disorders; medical consultancy services, especially for people with bleeding disorders; medical consultancy services especially for people with bleeding disordersClass 044 for Medical services, namely, medical services provided at a blood donation center, medical consultancy services and health care consultancy services especially for people with bleeding disorders; medical information services, especially for people with bleeding disorders; medical consultancy services especially for people with bleeding disorders
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 hereby appoints Rebecca Liebowitz. Other appointed attorneys are Andrew Price, Halle Markus, Kristen Ruisi, Steven Powell, Marjorie Norman, Catherine Mitros, Paula Hopkins, Sean Phelan, Michael Hirsch, Kelly Williams. Rebecca Liebowitz of Venable 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

      P.O. Box 34385
      Washington, District of Columbia 20043-9998
      United States
to submit this Response to Office Action Form on behalf of the applicant.
The docket/reference number is 37385-496248.

The phone number is 2023444976.

The email address is trademarkdocket@venable.com

Rebecca Liebowitz submitted the following statement: I attest that I am an 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).
The applicant's current correspondence information: . , is located at

      
      ,

The applicants proposed correspondence information: Rebecca Liebowitz. Rebecca Liebowitz of Venable LLP, is located at

      P.O. Box 34385
      Washington, District of Columbia 20043-9998
      United States
The docket/reference number is 37385-496248.

The phone number is 2023444976.

The email address is trademarkdocket@venable.com; rliebowitz@venable.com; klwilliams@venable.com

ADDITIONAL STATEMENTS
Miscellaneous Statement
The Examiner requests clarification of the date on which the application declaration was signed. It was signed on January 16, 2019.


SIGNATURE(S)
Response Signature
Signature: /kelly l. williams/     Date: 08/05/2019
Signatory's Name: Kelly L. Williams
Signatory's Position: Applicant's Attorney, MD Bar Member

Signatory's Phone Number: 2023444041

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:    
   
   
   
   ,
Mailing Address:    Rebecca Liebowitz
   Venable LLP
   P.O. Box 34385
   Washington, District of Columbia 20043-9998
        
Serial Number: 88247339
Internet Transmission Date: Mon Aug 05 16:32:57 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-201908051632574
80200-88247339-610bf237e49c9a2f9c498cd4f
10152dc1f6a67123ee7edad93aceae101ae8c38-
N/A-N/A-20190805161002305076