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. 88301097 IMPRESS(Standard Characters, see http://uspto.report/TM/88301097/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Educational services in the field of health and treatment; Publication of the results of clinical trials
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: Educational services in the field of health and treatment; Educational services, namely, providing classes, seminars and workshops in the field of health and treatment; Publication of the results of clinical trials; Publication of reports, journals, articles, and newsletters featuring the results of clinical trials.Class 041 for Educational services, namely, providing classes, seminars and workshops in the field of health and treatment; Publication of reports, journals, articles, and newsletters featuring the results of clinical trials.
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Providing medical and scientific research information in the field of pharmaceuticals and clinical trials
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: Class 042 for Providing medical and scientific research information in the field of pharmaceuticals and clinical trials
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 044 for Providing medical information and treatment information in the field of health, pharmaceuticals and clinical trials
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: Providing medical information and treatment information in the field of health, pharmaceuticals and clinical trials; Providing medical information and treatment information in the field of health and medicine; Providing information relating to diagnostic, prophylactic and therapeutic properties of pharmaceuticals.Class 044 for Providing medical information and treatment information in the field of health and medicine; Providing information relating to diagnostic, prophylactic and therapeutic properties of pharmaceuticals.
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: Scott D. Woldow. Scott D. Woldow of SMITH, GAMBRELL & RUSSELL, LLP, is located at

      SUITE 400, 1055 THOMAS JEFFERSON ST. NW
      WASHINGTON, District of Columbia 20007
      US
The docket/reference number is 034845.127.

The phone number is 202-263-4300.

The fax number is 202-263-4329.

The email address is swoldow@sgrlaw.com

The applicants proposed attorney information: Scott D. Woldow. Scott D. Woldow of SMITH, GAMBRELL & RUSSELL, LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      SUITE 400, 1055 THOMAS JEFFERSON ST. NW
      WASHINGTON, District of Columbia 20007
      United States
The docket/reference number is 034845.127.

The phone number is 202-263-4300.

The fax number is 202-263-4329.

The email address is swoldow@sgrlaw.com

Scott D. Woldow 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: SCOTT D. WOLDOW. SCOTT D. WOLDOW of SMITH, GAMBRELL & RUSSELL, LLP, is located at

      SUITE 400, 1055 THOMAS JEFFERSON ST. NW
      WASHINGTON, District of Columbia 20007
      US
The docket/reference number is 034845.127.

The phone number is 202-263-4300.

The fax number is 202-263-4329.

The email address is swoldow@sgrlaw.com; docketing@sgrlaw.com

The applicants proposed correspondence information: Scott D. Woldow. Scott D. Woldow of SMITH, GAMBRELL & RUSSELL, LLP, is located at

      SUITE 400, 1055 THOMAS JEFFERSON ST. NW
      WASHINGTON, District of Columbia 20007
      United States
The docket/reference number is 034845.127.

The phone number is 202-263-4300.

The fax number is 202-263-4329.

The email address is swoldow@sgrlaw.com; docketing@sgrlaw.com

ADDITIONAL STATEMENTS
Miscellaneous Statement
Applicant adopts the Examiner's suggested amendments in their entirety, except for the addition of the term "newsletters."


SIGNATURE(S)
Response Signature
Signature: /SW/     Date: 09/06/2019
Signatory's Name: Scott D. Woldow
Signatory's Position: Attorney of Record, DC bar member

Signatory's Phone Number: 202-263-4300

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:    SCOTT D. WOLDOW
   SMITH, GAMBRELL & RUSSELL, LLP
   
   SUITE 400, 1055 THOMAS JEFFERSON ST. NW
   WASHINGTON, District of Columbia 20007
Mailing Address:    Scott D. Woldow
   SMITH, GAMBRELL & RUSSELL, LLP
   SUITE 400, 1055 THOMAS JEFFERSON ST. NW
   WASHINGTON, District of Columbia 20007
        
Serial Number: 88301097
Internet Transmission Date: Fri Sep 06 15:20:49 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2019090615204906
8362-88301097-61021da155e11e5b1535d9bad8
38745fe7272e45a99984eeff6c2f8c1b1b8857f6
8-N/A-N/A-20190906150922123880