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. 88252671 DMD (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8825267 1/large) has been amended as follows:

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

See attached arguments explaining why Likelihood of Confusion refusal is not applicable to this case and responding to the CSA refusal (Cl. 9 and 35) and Information About the Services requirements.

EVIDENCE
Evidence has been attached: Exhibit A: Design Code for serial no. 88252671, Exhibit B: Design Code for serial no. 88484383, Exhibit C: USPTO application record for Serial No. 88/252,671, Exhibit D: USPTO record for application serial no. 88484383, Exhibit E: USPTO search results for "Medical Consulting Network" as Applicant, Exhibit F: USPTO record for Reg. No. 4562783
Original PDF file:
evi_3814218582-2020022815 5609707561_._MDLogo_Respo ndOA_Final_2_28_2020.pdf
Converted PDF file(s) ( 4 pages) Evidence-1Evidence-2Evidence-3Evidence-4
Original PDF file:
evi_3814218582-2020022815 5609707561_._ExhibitA.pdf
Converted PDF file(s) ( 1 page) Evidence-1
Original PDF file:
evi_3814218582-2020022815 5609707561_._ExhibitB.pdf
Converted PDF file(s) ( 1 page) Evidence-1
Original PDF file:
evi_3814218582-2020022815 5609707561_._ExhibitC.pdf
Converted PDF file(s) ( 14 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8Evidence-9Evidence-10Evidence-11Evidence-12Evidence-13Evidence-14
Original PDF file:
evi_3814218582-2020022815 5609707561_._ExhibitD.pdf
Converted PDF file(s) ( 4 pages) Evidence-1Evidence-2Evidence-3Evidence-4
Original PDF file:
evi_3814218582-2020022815 5609707561_._ExhibitE.pdf
Converted PDF file(s) ( 1 page) Evidence-1
Original PDF file:
evi_3814218582-2020022815 5609707561_._ExhibitF.pdf
Converted PDF file(s) ( 5 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Downloadable mobile applications featuring a medical cannabis provider directory; Downloadable mobile applications featuring a symptom tracker; Downloadable mobile application for medical office patient sign in, patient verification system, and patient scheduling; Downloadable mobile applications featuring information on medical cannabis; Downloadable mobile applications for use in the collection and analysis of personal medical data and for providing product recommendations; Online downloadable publications, namely, guides, forms, brochures, and pamphlets, in the field of medical cannabis
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 12/22/2017 and first used in commerce at least as early as 12/22/2017 , and is now in use in such commerce.


Proposed:

Tracked Text Description: Downloadable mobile applications featuring a medical cannabis provider directory; Downloadable mobile applications for helping users find medical cannabis providers through use of a medical cannabis provider directory; Downloadable mobile applications featuring a symptom tracker; Downloadable mobile applications for tracking medical symptoms of users; Downloadable mobile application for medical office patient sign in, patient verification system, and patient scheduling; Downloadable mobile application for medical office patient sign in and patient scheduling; Downloadable mobile applications featuring information on medical cannabis; Downloadable mobile applications for use in the collection and analysis of personal medical data and for providing product recommendations; Online downloadable publications, namely, guides, forms, brochures, and pamphlets, in the field of medical cannabis; Online downloadable electronic publications, namely guides, forms, brochures, and pamphlets, in the field of medical cannabisClass 009 for Downloadable mobile applications for helping users find medical cannabis providers through use of a medical cannabis provider directory; Downloadable mobile applications for tracking medical symptoms of users; Downloadable mobile application for medical office patient sign in and patient scheduling; Downloadable mobile applications featuring information on medical cannabis; Downloadable mobile applications for use in the collection and analysis of personal medical data and for providing product recommendations; Online downloadable electronic publications, namely guides, forms, brochures, and pamphlets, in the field of medical cannabis;
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 12/22/2017 and first used in commerce at least as early as 12/22/2017 , and is now in use in such commerce.
Applicant proposes to amend the following:

Current:
Class 035 for Online directory featuring medical cannabis doctors, dispensaries, and clinics; Advertising and directory services, namely, promoting the services of others by providing a web directory; Providing a website featuring guides, information, blogs, news, articles, research, case studies, and recipes, in the field of medical cannabis; Healthcare management service organization (MSO) services, namely, providing practice organization, management and administrative support services to individual physicians or small group practices; Providing a website featuring information on medical cannabis laws; Affiliate marketing; On-line promotion of computer networks and websites; Providing a searchable online advertising website and informational guide featuring the goods and services of other vendors via the internet in the field of physicians servicing the medical cannabis industry; Promoting the goods and services of others by means of operating an on-line shopping mall with links to the retail web sites of others; Providing a web site featuring information on physicians' for the purpose of assisting prospective patients in making physician selection decisions; Medical referrals; physician referrals; Medical data management services for electronic data collection for medical practice management
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 12/22/2017 and first used in commerce at least as early as 12/22/2017 , and is now in use in such commerce.


Proposed:

Tracked Text Description: Online directory featuring medical cannabis doctors, dispensaries, and clinics; Online business directory featuring medical cannabis doctors, dispensaries, and clinics; Advertising and directory services, namely, promoting the services of others by providing a web directory; Advertising and directory services, namely, promoting the services of others by providing a web directory featuring links to the websites of others; Providing a website featuring guides, information, blogs, news, articles, research, case studies, and recipes, in the field of medical cannabis; Healthcare management service organization (MSO) services, namely, providing practice organization, management and administrative support services to individual physicians or small group practices; Affiliate marketing; Providing a website featuring information on medical cannabis laws; Online promotion of computer networks and websites; Providing a searchable online advertising website and informational guide featuring the goods and services of other vendors via the internet in the field of physicians servicing the medical cannabis industry; On-line promotion of computer networks and websites; Providing a web site featuring information in the nature of professional biographical information on physicians' for the purpose of assisting prospective patients in making physician selection decisions; Medical referrals; Promoting the goods and services of others by means of operating an on-line shopping mall with links to the retail web sites of others; physician referrals; Providing a web site featuring information on physicians' for the purpose of assisting prospective patients in making physician selection decisions; Medical data management services, namely, electronic data collection for business purposes for medical practice management; Medical data management services for electronic data collection for medical practice managementClass 035 for Online business directory featuring medical cannabis doctors, dispensaries, and clinics; Advertising and directory services, namely, promoting the services of others by providing a web directory featuring links to the websites of others; Healthcare management service organization (MSO) services, namely, providing practice organization, management and administrative support services to individual physicians or small group practices; Affiliate marketing; Online promotion of computer networks and websites; Providing a searchable online advertising website and informational guide featuring the goods and services of other vendors via the internet in the field of physicians servicing the medical cannabis industry; Providing a web site featuring information in the nature of professional biographical information on physicians' for the purpose of assisting prospective patients in making physician selection decisions; Medical referrals; physician referrals; Medical data management services, namely, electronic data collection for business purposes for medical practice management;
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 12/22/2017 and first used in commerce at least as early as 12/22/2017 , and is now in use in such commerce.
OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Medical Consulting Network, Inc., a corporation of Delaware, having an address of
      88 Sunnyside Blvd LL
      Plainview, New York 11803
      United States

Proposed: Medical Consulting Network, Inc., a corporation of Delaware, having an address of
      88 Sunnyside Blvd LL
      Plainview, New York 11803
      United States
      Email Address: XXXX

ADDITIONAL STATEMENTS
Miscellaneous Statement
Per 1402.08, Applicant requests that the services "Providing information in the nature of news, articles, research, and case studies in the field of medical cannabis" in Class 35 of serial no. 88252671 be moved from Class 35, to Class 44 of serial no. 88976127


The owner's/holder's current attorney information: Jonathan M. Purow. Jonathan M. Purow of GOTTLIEB, RACKMAN & REISMAN, P.C., is located at

      270 MADISON AVE. 8TH FLOOR
      NEW YORK, New York 10016
      United States
The docket/reference number is 9002/004.
      The phone number is 212-684-3900.
      The fax number is 212-684-3999.
      The email address is efiling@grr.com

The owner's/holder's proposed attorney information: Jonathan M. Purow. Other appointed attorneys are George Gottlieb, Allen I. Rubenstein, Jeffrey M. Kaden, Tiberiu Weisz, Maria A. Savio, Marc P. Misthal, Barry R. Lewin, Mitchell S. Feller, Jason R. Wachter, Donna L. Mirman, Gloria Tsui-Yip, David Rodrigues, Robert Feinland, Alice Denenberg, Ilirian Durri, Shane Wax. Jonathan M. Purow of GOTTLIEB, RACKMAN & REISMAN, P.C., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      270 MADISON AVE. 8TH FLOOR
      NEW YORK, New York 10016
      United States
The docket/reference number is 9002/004.
      The phone number is 212-684-3900.
      The fax number is 212-684-3999.
      The email address is efiling@grr.com

Jonathan M. Purow 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.Correspondence Information (current):
      JONATHAN M. PUROW
      PRIMARY EMAIL FOR CORRESPONDENCE: efiling@grr.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): jpurow@grr.com; adenenberg@grr.com; lbrown@grr.com

The docket/reference number is 9002/004.
Correspondence Information (proposed):
      Jonathan M. Purow
      PRIMARY EMAIL FOR CORRESPONDENCE: efiling@grr.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): jpurow@grr.com; adenenberg@grr.com; lbrown@grr.com

The docket/reference number is 9002/004.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /Alice Denenberg/     Date: 02/28/2020
Signatory's Name: Alice Denenberg
Signatory's Position: Attorney of Record, New York State Bar Member

Signatory's Phone Number: 212-684-3900

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:    JONATHAN M. PUROW
   GOTTLIEB, RACKMAN & REISMAN, P.C.
   
   270 MADISON AVE. 8TH FLOOR
   NEW YORK, New York 10016
Mailing Address:    Jonathan M. Purow
   GOTTLIEB, RACKMAN & REISMAN, P.C.
   270 MADISON AVE. 8TH FLOOR
   NEW YORK, New York 10016
        
Serial Number: 88252671
Internet Transmission Date: Fri Feb 28 17:00:45 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2020022817004573
1155-88252671-7105bdfe563fac41912f6a6d57
6e9f6b53a8aaa78d6275253aabaae21144e65b6c
-N/A-N/A-20200228155609707561