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. 88268889 SMILE DIRECT CLUB(Standard Characters, see http://uspto.report/TM/88268889/mark.png) has been amended as follows:

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

The Examining Attorney initially refused the application based on an alleged likelihood of confusion with US Reg. No. 5,324,184. Applicant now owns US Reg. No. 5,324,184 and is claiming ownership of the same on this electronic response form. On this basis, Applicant respectfully requests that the Examining Attorney withdraw this refusal. The Examining Attorney also initially refused the application based on an alleged likelihood of confusion with US Reg. No. 5,707,207, but per the Office Action, the refusal based on this prior registration applied only to Applicant's applied-for "dental laboratory services." Applicant is deleting the "dental laboratory services" from the application. Applicant believes the deletion of these services should eliminate the Examining Attorney's concerns that there is an alleged likelihood of confusion with US Reg. No. 5,707,207, and Applicant respectfully requests that the Examining Attorney withdraw the refusal on this basis. The Examining Attorney also provisionally refused the application based on three US applications. Applicant respectfully directs the Examining Attorney's attention to the fact that US App. No. 88/222,860 for DR'S SMILE CLUB is abandoned and is no longer active. Thus, this application can no longer form the basis of a provisional refusal. Applicant expressly reserves its right to substantively address the other cited applications later.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for online non-downloadable software for viewing 3D computer models of human teeth; computer modeling services; dental laboratory services; online non-downloadable digital imaging software used to depict teeth and projected results following proposed treatment plan; providing a website featuring non-downloadable cloud records containing data used in diagnosing, assessing, planning, managing, and providing orthodontic treatment; online non-downloadable software for collecting and tracking patient data, interacting with patients, scheduling appointments for orthodontic treatment and assessment, and providing patient account details, treatment plans and information related to courses of orthodontic treatment; online non-downloadable software for photo editing and providing customized previews of results to be expected from orthodontic treatment plans
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 non-downloadable software for viewing 3D computer models of human teeth; computer modeling services; dental laboratory services; online non-downloadable digital imaging software used to depict teeth and projected results following proposed treatment plan; providing a website featuring technology that enables users to access non-downloadable cloud records containing data used in diagnosing, assessing, planning, managing, and providing orthodontic treatment; providing a website featuring non-downloadable cloud records containing data used in diagnosing, assessing, planning, managing, and providing orthodontic treatment; online non-downloadable software for collecting and tracking patient data, interacting with patients, scheduling appointments for orthodontic treatment and assessment, and providing patient account details, treatment plans and information related to courses of orthodontic treatment; online non-downloadable software for photo editing and providing customized previews of results to be expected from orthodontic treatment plansClass 042 for online non-downloadable software for viewing 3D computer models of human teeth; computer modeling services; online non-downloadable digital imaging software used to depict teeth and projected results following proposed treatment plan; providing a website featuring technology that enables users to access non-downloadable cloud records containing data used in diagnosing, assessing, planning, managing, and providing orthodontic treatment; online non-downloadable software for collecting and tracking patient data, interacting with patients, scheduling appointments for orthodontic treatment and assessment, and providing patient account details, treatment plans and information related to courses of orthodontic treatment; online non-downloadable software for photo editing and providing customized previews of results to be expected from orthodontic treatment plans
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
Claim of Active Prior Registration(s)
The applicant claims ownership of active prior U.S. Registration Number(s) 5324184.


SIGNATURE(S)
Response Signature
Signature: /AJ Schumacher/     Date: 10/03/2019
Signatory's Name: AJ Schumacher
Signatory's Position: Associate Attorney, Foley & Lardner LLP, WI and IL bar member

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.

        
Serial Number: 88268889
Internet Transmission Date: Thu Oct 03 18:20:59 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2019100318205946
0274-88268889-6109d27dac3eda31c0a4e04d52
accc32298888ad8f337ae87d5c536d7c24fe6b5-
N/A-N/A-20191003180438777997