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. 88262932 CERTIFIED CLINICAL RESEARCH ASSOCIATE CCRA (Stylized and/or with Design, see http://uspto.report/TM/88262932/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 a pdf titled CCRA Response has been attached.
Original PDF file:
evi_1-19294203253-20190916175930452387_._CCRA_Response.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 042 for Accreditation services, namely, developing and administering standards and procedures for certifying professionals in the field of clinical research, and issuing credentials in connection therewith; business services for others, namely, testing, analysis, and evaluation of the knowledge, skills and abilities of others for the purpose of credentialing in the field of clinical research; providing online information in the field of testing, analysis, and evaluation of the knowledge, skills and abilities of others as it relates to credentialing in the field of clinical research

Applicant hereby adds the following class of goods/services to the application:
New: Class 035 (Original Class: 042 ) for Business services for others, namely, testing to determine professional competency in the field of clinical research; business services for others, namely, testing, analysis, and evaluation of the knowledge, skills and abilities of others for the purpose of determining professional competency in the field of clinical research; providing professional competency testing information in the field of clinical research accreditation testing preparation; business services for others, namely, testing to determine professional competency, namely, testing and evaluation of professionals working in the clinical research field to determine their level of education, experience and competency
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 01/01/2014 and first used in commerce at least as early as 01/01/2014 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 035 . The specimen(s) submitted consists of webpage .
"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:
SPU0-19294203253-20190916175930452387_._CCRA_Specimen.pdf
Converted PDF file(s) ( 13 pages)
Specimen File1
Specimen File2
Specimen File3
Specimen File4
Specimen File5
Specimen File6
Specimen File7
Specimen File8
Specimen File9
Specimen File10
Specimen File11
Specimen File12
Specimen File13

The applicant's current attorney information: Andrew D. Price. Andrew D. Price of VENABLE LLP, is located at

      P.O. BOX 34385
      WASHINGTON, District of Columbia 20043-9998
      US
The docket/reference number is 32616-496371.

The phone number is 202-344-8156.

The fax number is 202-344-8300.

The email address is trademarkdocket@venable.com

The applicants proposed attorney information: Andrew D. Price. Other appointed attorneys are Rebecca Liebowitz, Halle B. Markus, Steve Powell, Sean T. Phelan, Marjorie W. Norman, Kristen S. Ruisi, Catherine Mitros, Paula E. Hopkins, Michael J. Hirsch, Kelly Williams. Andrew D. Price 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
The docket/reference number is 32616-496371.

The phone number is 202-344-8156.

The fax number is 202-344-8300.

The email address is trademarkdocket@venable.com

Andrew D. Price 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: ANDREW D. PRICE. ANDREW D. PRICE of VENABLE LLP, is located at

      P.O. BOX 34385
      WASHINGTON, District of Columbia 20043-9998
      US
The docket/reference number is 32616-496371.

The phone number is 202-344-8156.

The fax number is 202-344-8300.

The email address is trademarkdocket@venable.com; adprice@venable.com; cmitros@venable.com; pjmiles@venable.com

The applicants proposed correspondence information: Andrew D. Price. Andrew D. Price of VENABLE LLP, is located at

      P.O. BOX 34385
      WASHINGTON, District of Columbia 20043-9998
      United States
The docket/reference number is 32616-496371.

The phone number is 202-344-8156.

The fax number is 202-344-8300.

The email address is trademarkdocket@venable.com; adprice@venable.com; cmitros@venable.com; pjmiles@venable.com

ADDITIONAL STATEMENTS
Description of mark
The mark consists of a circle, with the wording "CERTIFIED CLINICAL RESEARCH ASSOCIATE" in uppercase lettering curving around the upper half of the circle, inside of which appears the letters CCRA.

SECTION 2(f) Claim of Acquired Distinctiveness, IN PART, based on Five or More Years' Use
CERTIFIED CLINICAL RESEARCH ASSOCIATE has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.


SIGNATURE(S)
Declaration Signature
Original PDF file:
HS_19294203253-175930452_._Signed_CCRA_declaration.pdf
Converted PDF file(s) (2 pages)
Signature File1
Signature File2
Signatory's Name: Jim Kremidas
Signatory's Position: Executive Director

Response Signature
Signature: /Catherine Mitros/     Date: 09/16/2019
Signatory's Name: Catherine Mitros
Signatory's Position: Associate Attorney, Venable LLP, DC Bar Member

Signatory's Phone Number: 2023444998

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:    ANDREW D. PRICE
   VENABLE LLP
   
   P.O. BOX 34385
   WASHINGTON, District of Columbia 20043-9998
Mailing Address:    Andrew D. Price
   VENABLE LLP
   P.O. BOX 34385
   WASHINGTON, District of Columbia 20043-9998
        
Serial Number: 88262932
Internet Transmission Date: Mon Sep 16 18:15:59 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-201909161815597
21257-88262932-6101488c28a9c43e1f4b438a7
6523f6db9c120b3266292e943fa7e0ca72fc3572
-N/A-N/A-20190916175930452387