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
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
88312606 |
LAW OFFICE ASSIGNED |
LAW OFFICE 112 |
MARK SECTION |
MARK |
http://uspto.report/TM/88312606/mark.png |
LITERAL ELEMENT |
COMPHEALTH |
STANDARD CHARACTERS |
YES |
USPTO-GENERATED IMAGE |
YES |
MARK STATEMENT |
The mark consists of standard characters, without claim to any particular font style, size or color. |
ARGUMENT(S) |
In the Office Action mailed on February 5, 2020, the Examining Attorney found the identification of the goods of class 9 must be clarified.
IDENTIFICATION OF GOODS - Limited to Class 9 The Examining Attorney has refused registration of the applied-for mark because the identification of goods in Class 9 is indefinite and must be clarified
or limited. Applicant amends the identification of Class 9 as follows: Downloadable and non-downloadable computer software, namely, workforce management software for tracking, recording, analyzing
and managing the activities of employees, contingent workers and other staff; Downloadable and non-downloadable computer software, namely, workforce management software for tracking, recording,
analyzing and managing human resources data, employee time and attendance, employee staffing and scheduling, employee payroll and compensation information, employee performance reviews, employee
benefits information, employee succession planning, employee credentials, employee competencies, personal information about employees, employee productivity, employee workflow, employee educational,
learning and development requirements and information, recruiting activities and workforce planning In view of the foregoing remarks, Applicant respectfully submits that its applied-for mark is
entitled to registration and requests that is be promptly allowed for publication. If the Examining Attorney requires any changes to the application that could be made by Examiner's Amendment,
Applicant respectfully requests that she telephone the undersigned attorney at: (801) 533-9800. The Commissioner for Trademarks is authorized to charge any additional fees associated with this
response to Deposit Account No. 23-3178. |
GOODS AND/OR SERVICES SECTION (009)(current) |
INTERNATIONAL CLASS |
009 |
DESCRIPTION |
computer software, namely, workforce management software for tracking, recording, analyzing and managing the activities of employees,
contingent workers and other staff; computer software, namely, workforce management software for tracking, recording, analyzing and managing human resources data, employee time and attendance,
employee staffing and scheduling, employee payroll and compensation information, employee performance reviews, employee benefits information, employee succession planning, employee credentials,
employee competencies, personal information about employees, employee productivity, employee workflow, employee educational, learning and development requirements and information, recruiting
activities and workforce planning |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (009)(proposed) |
INTERNATIONAL CLASS |
009 |
TRACKED TEXT DESCRIPTION |
computer software, namely, workforce management software for tracking, recording, analyzing and managing
the activities of employees, contingent workers and other staff; Downloadable and non-downloadable computer software, namely, workforce management software for
tracking, recording, analyzing and managing the activities of employees, contingent workers and other staff; computer software, namely, workforce management
software for tracking, recording, analyzing and managing human resources data, employee time and attendance, employee staffing and scheduling, employee payroll and compensation information, employee
performance reviews, employee benefits information, employee succession planning, employee credentials, employee competencies, personal information about employees, employee productivity, employee
workflow, employee educational, learning and development requirements and information, recruiting activities and workforce planning; downloadable and
non-downloadable computer software, namely, workforce management software for tracking, recording, analyzing and managing human resources data, employee time and attendance, employee staffing and
scheduling, employee payroll and compensation information, employee performance reviews, employee benefits information, employee succession planning, employee credentials, employee competencies,
personal information about employees, employee productivity, employee workflow, employee educational, learning and development requirements and information, recruiting activities and workforce
planning |
FINAL DESCRIPTION |
Downloadable and non-downloadable computer software, namely, workforce management software for tracking, recording, analyzing and
managing the activities of employees, contingent workers and other staff; downloadable and non-downloadable computer software, namely, workforce management software for tracking, recording, analyzing
and managing human resources data, employee time and attendance, employee staffing and scheduling, employee payroll and compensation information, employee performance reviews, employee benefits
information, employee succession planning, employee credentials, employee competencies, personal information about employees, employee productivity, employee workflow, employee educational, learning
and development requirements and information, recruiting activities and workforce planning |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (042)(no change) |
ATTORNEY SECTION (current) |
NAME |
John C. Stringham |
ATTORNEY BAR MEMBERSHIP NUMBER |
NOT SPECIFIED |
YEAR OF ADMISSION |
NOT SPECIFIED |
U.S. STATE/ COMMONWEALTH/ TERRITORY |
NOT SPECIFIED |
FIRM NAME |
WORKMAN NYDEGGER |
INTERNAL ADDRESS |
SUITE 1000 |
STREET |
60 EAST SOUTH TEMPLE |
CITY |
SALT LAKE CITY |
STATE |
Utah |
POSTAL CODE |
84111 |
COUNTRY |
US |
PHONE |
801-533-9800 |
FAX |
801-328-1707 |
EMAIL |
jstringham@wnlaw.com |
AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
DOCKET/REFERENCE NUMBER |
15704.2.2 |
ATTORNEY SECTION (proposed) |
NAME |
John C. Stringham |
ATTORNEY BAR MEMBERSHIP NUMBER |
XXX |
YEAR OF ADMISSION |
XXXX |
U.S. STATE/ COMMONWEALTH/ TERRITORY |
XX |
FIRM NAME |
Workman Nydegger |
STREET |
60 East South Temple, Suite 1000 |
CITY |
Salt Lake City |
STATE |
Utah |
POSTAL CODE |
84111 |
COUNTRY |
United States |
PHONE |
801-533-9800 |
FAX |
801-328-1707 |
EMAIL |
jstringham@wnlaw.com |
AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
DOCKET/REFERENCE NUMBER |
15704.2.2 |
OTHER APPOINTED ATTORNEY |
Thomas R. Vuksinick, Jonathan W. Richards, John M. Guynn, Dana L. Tangren, Robyn L. Phillips, David R. Todd, David B. Dellenbach, Adrian
J. Lee, Fraser D. Roy, Carl T. Reed, Peter F. Malen, Jens C. Jenkins, Michael J. Frodsham, J. LaVar Oldham, Matthew A. Barlow, Chad E. Nydegger, Shane K. Jensen, Matthew D. Todd, Tom M. Bonacci,
Dustin Howell, Timothy D. Nichols, Kirk C. Coombs, David P. Johnson, Justin J. Cassell, W. Brad Barger, James W. McConkie, Roger J. McConkie, Charles A. Meeker, Stirling D. Fillmore, Logan B.
Christenson, Gerrit C. Winkel, J. Paul Norton, Brittany Frandsen, Levi S. Brown, Joseph M. Evans, Angela L. Silvers, Peter Shiozawa, Lynne Wang, Hannah Follender, Rachel Perry of WORKMAN
NYDEGGER |
CORRESPONDENCE SECTION (current) |
NAME |
John C. Stringham |
FIRM NAME |
WORKMAN NYDEGGER |
INTERNAL ADDRESS |
SUITE 1000 |
STREET |
60 EAST SOUTH TEMPLE |
CITY |
SALT LAKE CITY |
STATE |
Utah |
POSTAL CODE |
84111 |
COUNTRY |
US |
PHONE |
801-533-9800 |
FAX |
801-328-1707 |
EMAIL |
jstringham@wnlaw.com; docketing@wnlaw.com |
AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
DOCKET/REFERENCE NUMBER |
15704.2.2 |
CORRESPONDENCE SECTION (proposed) |
NAME |
John C. Stringham |
FIRM NAME |
Workman Nydegger |
STREET |
60 East South Temple, Suite 1000 |
CITY |
Salt Lake City |
STATE |
Utah |
POSTAL CODE |
84111 |
COUNTRY |
United States |
PHONE |
801-533-9800 |
FAX |
801-328-1707 |
EMAIL |
jstringham@wnlaw.com; docketing@wnlaw.com |
AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
DOCKET/REFERENCE NUMBER |
15704.2.2 |
SIGNATURE SECTION |
RESPONSE SIGNATURE |
/John C. Stringham/ |
SIGNATORY'S NAME |
John C. Stringham |
SIGNATORY'S POSITION |
Attorney for Applicant, Utah Bar Member |
SIGNATORY'S PHONE NUMBER |
8015339800 |
DATE SIGNED |
02/04/2020 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Tue Feb 04 17:36:46 EST 2020 |
TEAS STAMP |
USPTO/ROA-XX.XX.XXX.XXX-2
0200204173646121010-88312
606-70078d8a7040a38e34c6f
bdd74e3795881a55256806dee
b9b4c6067aa9d86e3-N/A-N/A
-20200203163146675231 |
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.
88312606 COMPHEALTH(Standard Characters, see http://uspto.report/TM/88312606/mark.png) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
In the Office Action mailed on February 5, 2020, the Examining Attorney found the identification of the goods of class 9 must be clarified. IDENTIFICATION OF GOODS - Limited to Class 9 The Examining
Attorney has refused registration of the applied-for mark because the identification of goods in Class 9 is indefinite and must be clarified or limited. Applicant amends the identification of Class 9
as follows: Downloadable and non-downloadable computer software, namely, workforce management software for tracking, recording, analyzing and managing the activities of employees, contingent workers
and other staff; Downloadable and non-downloadable computer software, namely, workforce management software for tracking, recording, analyzing and managing human resources data, employee time and
attendance, employee staffing and scheduling, employee payroll and compensation information, employee performance reviews, employee benefits information, employee succession planning, employee
credentials, employee competencies, personal information about employees, employee productivity, employee workflow, employee educational, learning and development requirements and information,
recruiting activities and workforce planning In view of the foregoing remarks, Applicant respectfully submits that its applied-for mark is entitled to registration and requests that is be promptly
allowed for publication. If the Examining Attorney requires any changes to the application that could be made by Examiner's Amendment, Applicant respectfully requests that she telephone the
undersigned attorney at: (801) 533-9800. The Commissioner for Trademarks is authorized to charge any additional fees associated with this response to Deposit Account No. 23-3178.
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for computer software, namely, workforce management software for tracking, recording, analyzing and managing the activities of employees, contingent workers and other staff;
computer software, namely, workforce management software for tracking, recording, analyzing and managing human resources data, employee time and attendance, employee staffing and scheduling, employee
payroll and compensation information, employee performance reviews, employee benefits information, employee succession planning, employee credentials, employee competencies, personal information
about employees, employee productivity, employee workflow, employee educational, learning and development requirements and information, recruiting activities and workforce planning
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: computer software, namely, workforce management software for tracking, recording, analyzing and managing the activities of employees,
contingent workers and other staff;
Downloadable and non-downloadable computer software, namely, workforce management software for tracking, recording, analyzing
and managing the activities of employees, contingent workers and other staff;
computer software, namely, workforce management software for tracking, recording,
analyzing and managing human resources data, employee time and attendance, employee staffing and scheduling, employee payroll and compensation information, employee performance reviews, employee
benefits information, employee succession planning, employee credentials, employee competencies, personal information about employees, employee productivity, employee workflow, employee educational,
learning and development requirements and information, recruiting activities and workforce planning;
downloadable and non-downloadable computer software,
namely, workforce management software for tracking, recording, analyzing and managing human resources data, employee time and attendance, employee staffing and scheduling, employee payroll and
compensation information, employee performance reviews, employee benefits information, employee succession planning, employee credentials, employee competencies, personal information about employees,
employee productivity, employee workflow, employee educational, learning and development requirements and information, recruiting activities and workforce planningClass 009 for Downloadable and
non-downloadable computer software, namely, workforce management software for tracking, recording, analyzing and managing the activities of employees, contingent workers and other staff; downloadable
and non-downloadable computer software, namely, workforce management software for tracking, recording, analyzing and managing human resources data, employee time and attendance, employee staffing and
scheduling, employee payroll and compensation information, employee performance reviews, employee benefits information, employee succession planning, employee credentials, employee competencies,
personal information about employees, employee productivity, employee workflow, employee educational, learning and development requirements and information, recruiting activities and workforce
planning
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: John C. Stringham. John C. Stringham of WORKMAN NYDEGGER, is located at
SUITE 1000
60 EAST SOUTH TEMPLE
SALT LAKE CITY, Utah 84111
US
The docket/reference number is 15704.2.2.
The phone number is 801-533-9800.
The fax number is 801-328-1707.
The email address is jstringham@wnlaw.com
The applicants proposed attorney information: John C. Stringham. Other appointed attorneys are Thomas R. Vuksinick, Jonathan W. Richards, John M. Guynn, Dana L. Tangren, Robyn L. Phillips, David R.
Todd, David B. Dellenbach, Adrian J. Lee, Fraser D. Roy, Carl T. Reed, Peter F. Malen, Jens C. Jenkins, Michael J. Frodsham, J. LaVar Oldham, Matthew A. Barlow, Chad E. Nydegger, Shane K. Jensen,
Matthew D. Todd, Tom M. Bonacci, Dustin Howell, Timothy D. Nichols, Kirk C. Coombs, David P. Johnson, Justin J. Cassell, W. Brad Barger, James W. McConkie, Roger J. McConkie, Charles A. Meeker,
Stirling D. Fillmore, Logan B. Christenson, Gerrit C. Winkel, J. Paul Norton, Brittany Frandsen, Levi S. Brown, Joseph M. Evans, Angela L. Silvers, Peter Shiozawa, Lynne Wang, Hannah Follender,
Rachel Perry of WORKMAN NYDEGGER. John C. Stringham of Workman Nydegger, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at
60 East South Temple, Suite 1000
Salt Lake City, Utah 84111
United States
The docket/reference number is 15704.2.2.
The phone number is 801-533-9800.
The fax number is 801-328-1707.
The email address is jstringham@wnlaw.com
John C. Stringham 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: John C. Stringham. John C. Stringham of WORKMAN NYDEGGER, is located at
SUITE 1000
60 EAST SOUTH TEMPLE
SALT LAKE CITY, Utah 84111
US
The docket/reference number is 15704.2.2.
The phone number is 801-533-9800.
The fax number is 801-328-1707.
The email address is jstringham@wnlaw.com; docketing@wnlaw.com
The applicants proposed correspondence information: John C. Stringham. John C. Stringham of Workman Nydegger, is located at
60 East South Temple, Suite 1000
Salt Lake City, Utah 84111
United States
The docket/reference number is 15704.2.2.
The phone number is 801-533-9800.
The fax number is 801-328-1707.
The email address is jstringham@wnlaw.com; docketing@wnlaw.com
SIGNATURE(S)
Response Signature
Signature: /John C. Stringham/ Date: 02/04/2020
Signatory's Name: John C. Stringham
Signatory's Position: Attorney for Applicant, Utah Bar Member
Signatory's Phone Number: 8015339800
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: John C. Stringham
WORKMAN NYDEGGER
SUITE 1000
60 EAST SOUTH TEMPLE
SALT LAKE CITY, Utah 84111
Mailing Address: John C. Stringham
Workman Nydegger
60 East South Temple, Suite 1000
Salt Lake City, Utah 84111
Serial Number: 88312606
Internet Transmission Date: Tue Feb 04 17:36:46 EST 2020
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2020020417364612
1010-88312606-70078d8a7040a38e34c6fbdd74
e3795881a55256806deeb9b4c6067aa9d86e3-N/
A-N/A-20200203163146675231