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. 88253307 MY HEALTHY JOURNEY BY ROBARD CORPORATION(Standard Characters, see http://uspto.report/TM/88253307/mark.png) has been amended as follows:

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

Our Ref. No. R1008/30063

 

A.S.N. 88253307

MY HEALTHY JOURNEY BY ROBARD CORPORATION

 

         These comments are timely submitted in response to the Office Action dated March 26, 2019

SUMMARY OF ISSUES

·    Identification of Goods Amendment Requirement

·    Disclaimer

·    Earlier Filed Pending Applications

I.D. AMENDMENT

 

The Examining Attorney has required that Applicant amend the identification of goods with respect to International Class 9 because as presently worded the term “mobile application platform” is indefinite and must be clarified to indicate if the platform is recorded on media, downloadable, or non-downloadable.

It is hereby requested that the identification of goods be amended as suggested by the Examining Attorney.

The identification of goods should now read as follows:

009 – DOWNLOADABLE MOBILE APPLICATION PLATFORM TO AID IN THE TREATMENT OF OVERWEIGHT OR OBESE PATIENTS THAT WILL BE USED IN CONJUNCTION WITH A WEIGHT LOSS AND MAINTENANCE PROGRAM WHICH WILL UTILIZE/FEATURE A COMPLETE LINE OF MEDICAL AND NON-MEDICAL WEIGHT LOSS PROGRAMS AND PRODUCTS  

042 – is acceptable as written

 

 

DISCLAIMER:

            In accordance with the Examining Attorney’s requirement, please insert the following disclaimer:

-          - No claim is made to the exclusive right to use “CORPORATION” apart from the mark as shown. - -

EARLIER FILED APPLICATION

            The Examining Attorney has cited Application Serial Nos. 8781888 and 87818682 as earlier filed pending applications. If the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s). See 15 U.S.C. §1052(d);37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications. 

Applicant is electing not to submit arguments concerning the issue of a potential conflict between Applicant’s mark and the referenced applications.  Applicant reserves its right to address this issue later if a Section 2(d) refusal is issued. 

 

CONCLUSIONS

 

In view of the required amendment, and in light of the fact that Applicant has elected not to present arguments in support of registration, at the present time, it is understood that the present application will be suspended pending the disposition of Application Serial Nos. 87818688 and 87818682.  

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Mobile application platform to aid in the treatment of overweight or obese patients that will be used in conjunction with a weight loss and maintenance program which will utilize/feature a complete line of medical and non-medical weight loss programs and products
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: Mobile application platform to aid in the treatment of overweight or obese patients that will be used in conjunction with a weight loss and maintenance program which will utilize/feature a complete line of medical and non-medical weight loss programs and products; DOWNLOADABLE MOBILE APPLICATION PLATFORM TO AID IN THE TREATMENT OF OVERWEIGHT OR OBESE PATIENTS THAT WILL BE USED IN CONJUNCTION WITH A WEIGHT LOSS AND MAINTENANCE PROGRAM WHICH WILL UTILIZE/FEATURE A COMPLETE LINE OF MEDICAL AND NON-MEDICAL WEIGHT LOSS PROGRAMS AND PRODUCTSClass 009 for DOWNLOADABLE MOBILE APPLICATION PLATFORM TO AID IN THE TREATMENT OF OVERWEIGHT OR OBESE PATIENTS THAT WILL BE USED IN CONJUNCTION WITH A WEIGHT LOSS AND MAINTENANCE PROGRAM WHICH WILL UTILIZE/FEATURE A COMPLETE LINE OF MEDICAL AND NON-MEDICAL WEIGHT LOSS PROGRAMS AND PRODUCTS
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.

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


SIGNATURE(S)
Response Signature
Signature: /mdp/     Date: 03/27/2019
Signatory's Name: Manny D. Pokotilow
Signatory's Position: Attorney of Record, PA Bar Member

Signatory's Phone Number: 2155672010

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; 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. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 88253307
Internet Transmission Date: Wed Mar 27 13:03:01 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.X-2019032713030114
7231-88253307-620156ff296e3da4657543cf9c
911279c8f580f42be09217c23c409dd280e01d39
-N/A-N/A-20190327130034327757