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. 88258606 GENIUS(Standard Characters, see http://uspto.report/TM/88258606/mark.png) has been amended as follows:

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

This application was refused citing U.S. Trademark Application No. 88039347 as being confusingly similar to Applicant's GENIUS application. On March 21, 2019 and June 19, 2019, Applicant filed extensions of time to oppose this application and is working to resolve the dispute between the parties.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Online and non-downloadable computer software for storing, reviewing, reproducing, transmitting, archiving, and processing medical data and images in the field of breast imaging; Online and non-downloadable computer software used in the field of breast imaging; Online and non-downloadable computer software for screening for breast cancer; Online and non-downloadable computer software for diagnosing breast cancer; online and non-downloadable computer software used for the treatment of breast cancer; Online and non-downloadable computer software for radiological imaging systems; Software as service (SAAS) services featuring software for storing, reviewing, reproducing, transmitting, archiving, and processing medical data and images in the field of breast imaging
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: Online and non-downloadable computer software for storing, reviewing, reproducing, transmitting, archiving, and processing medical data and images in the field of breast imaging; Online non-downloadable computer software for storing, reviewing, reproducing, transmitting, archiving, and processing medical data and images in the field of breast imaging; Online and non-downloadable computer software used in the field of breast imaging; Online non-downloadable computer software used in the field of breast imaging; Online and non-downloadable computer software for screening for breast cancer; Online non-downloadable computer software for screening for breast cancer; Online and non-downloadable computer software for diagnosing breast cancer; Online non-downloadable computer software for diagnosing breast cancer; online and non-downloadable computer software used for the treatment of breast cancer; online non-downloadable computer software used for the treatment of breast cancer; Online and non-downloadable computer software for radiological imaging systems; Online non-downloadable computer software for radiological imaging systems; Software as service (SAAS) services featuring software for storing, reviewing, reproducing, transmitting, archiving, and processing medical data and images in the field of breast imagingClass 042 for Online non-downloadable computer software for storing, reviewing, reproducing, transmitting, archiving, and processing medical data and images in the field of breast imaging; Online non-downloadable computer software used in the field of breast imaging; Online non-downloadable computer software for screening for breast cancer; Online non-downloadable computer software for diagnosing breast cancer; online non-downloadable computer software used for the treatment of breast cancer; Online non-downloadable computer software for radiological imaging systems; Software as service (SAAS) services featuring software for storing, reviewing, reproducing, transmitting, archiving, and processing medical data and images in the field of breast imaging
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's current attorney information: Douglas A. Rettew. Douglas A. Rettew of FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LL, is located at

      901 NEW YORK AVENUE, N.W.
      WASHINGTON, District of Columbia 20001
      US
The docket/reference number is 14379.0007-2.

The phone number is 202-408-4000.

The fax number is 202-408-4400.

The email address is docketing@finnegan.com

The applicants proposed attorney information: Douglas A. Rettew. Other appointed attorneys are Each of the attorneys of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. Douglas A. Rettew of Finnegan, Henderson, Farabow, Garrett &, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      901 New York Avenue, N.W.
      WASHINGTON, District of Columbia 20001
      United States
The docket/reference number is 14379.0007-2.

The phone number is 202-408-4000.

The fax number is 202-408-4400.

The email address is docketing@finnegan.com

Douglas A. Rettew 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: DOUGLAS A. RETTEW. DOUGLAS A. RETTEW of FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LL, is located at

      901 NEW YORK AVENUE, N.W.
      WASHINGTON, District of Columbia 20001
      US
The docket/reference number is 14379.0007-2.

The phone number is 202-408-4000.

The fax number is 202-408-4400.

The email address is docketing@finnegan.com

The applicants proposed correspondence information: Douglas A. Rettew. Douglas A. Rettew of Finnegan, Henderson, Farabow, Garrett &, is located at

      901 New York Avenue, N.W.
      WASHINGTON, District of Columbia 20001
      United States
The docket/reference number is 14379.0007-2.

The phone number is 202-408-4000.

The fax number is 202-408-4400.

The email address is docketing@finnegan.com

SIGNATURE(S)
Response Signature
Signature: /Douglas A. Rettew/     Date: 08/09/2019
Signatory's Name: Douglas A. Rettew
Signatory's Position: Attorney of Record, DC Bar Member

Signatory's Phone Number: 2024084000

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:    DOUGLAS A. RETTEW
   FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LL
   
   901 NEW YORK AVENUE, N.W.
   WASHINGTON, District of Columbia 20001
Mailing Address:    Douglas A. Rettew
   Finnegan, Henderson, Farabow, Garrett &
   901 New York Avenue, N.W.
   WASHINGTON, District of Columbia 20001
        
Serial Number: 88258606
Internet Transmission Date: Fri Aug 09 09:33:38 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.X.X-2019080909333847400
3-88258606-6105e784f44174d61d5c5dcc13947
a3b8559d926138ae295f3e44c8fc74d81ac4-N/A
-N/A-20190809093151955500