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. 88336715 4MEDICA BIG DATA MPI(Standard Characters, see http://uspto.report/TM/88336715/mark.png) has been amended as follows:

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

RESPONSE

            This is in response to the Office Action dated May 23, 2019, in connection with the above-identified application.  Reconsideration of this application is respectfully requested in view of the following remarks. 

           

REMARKS

 

In the Office Action, the Examining Attorney requested a disclaimer of the phrase BIG DATA MPI on the grounds that it is not inherently distinctive.  Applicant respectfully disagrees with the Examiner’s assertion.  However, in an effort to expedite prosecution of its application, Applicant hereby submits a claim of acquired distinctiveness as to the BIG DATA MPI part of the mark in accordance with Section 2(f) of the Lanham Trademark Act, 15 U.S.C. § 1052(f). 

The Applicant has used the BIG DATA MPI part of the mark in commerce in connection with the identical services specified in the application for at least the last five years.  The phrase BIG DATA MPI has become distinctive of the services through the Applicant’s exclusive and continuous use in commerce for at least the five years immediately before the date of this statement.  The Declaration of Gregory Church, President for Applicant, verifying this statement, is submitted herewith. 

CONCLUSION

In view of the foregoing, and since the Examining Attorney has found no similar registered or pending mark that would bar registration under Section 2(d) of the Trademark Act, the Applicant respectfully requests that the application be approved for publication.  An early publication date is respectfully requested. 

 

The applicant's current attorney information: Gina Durham. Gina Durham of DLA Piper LLP (US), is located at

      P.O. Box 64807
      Chicago, Illinois 60664-0807
      US
The docket/reference number is 425437-4.

The phone number is 312.368.4000.

The fax number is 312.236.7516.

The email address is ch.tm@dlapiper.com

The applicants proposed attorney information: Gina Durham. Other appointed attorneys are Keith Medansky, Hilary H. Remijas, Michael A. Geller, Nicole A. Chaudhari and Eugenia Schontag. Gina Durham of DLA Piper LLP (US), 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 64807
      Chicago, Illinois 60664-0807
      United States
The docket/reference number is 425437-4.

The phone number is 312.368.4000.

The fax number is 312.236.7516.

The email address is ch.tm@dlapiper.com

Gina Durham 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: Gina Durham. Gina Durham of DLA Piper LLP (US), is located at

      P.O. Box 64807
      Chicago, Illinois 60664-0807
      US
The docket/reference number is 425437-4.

The phone number is 312.368.4000.

The fax number is 312.236.7516.

The email address is ch.tm@dlapiper.com; nicole.chaudhari@dlapiper.com

The applicants proposed correspondence information: Gina Durham. Gina Durham of DLA Piper LLP (US), is located at

      P.O. Box 64807
      Chicago, Illinois 60664-0807
      United States
The docket/reference number is 425437-4.

The phone number is 312.368.4000.

The fax number is 312.236.7516.

The email address is ch.tm@dlapiper.com

ADDITIONAL STATEMENTS
SECTION 2(f) Claim of Acquired Distinctiveness, IN PART, based on Five or More Years' Use
BIG DATA MPI 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

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, 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 filing date of the application or AOU; 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Gregory Church/      Date: 11/25/2019
Signatory's Name: Gregory Church
Signatory's Position: President
Signatory's Phone Number: 5623101301


Response Signature
Signature: /Nicole Chaudhari/     Date: 11/25/2019
Signatory's Name: Nicole Chaudhari
Signatory's Position: Attorney of record, IL bar member

Signatory's Phone Number: 312-368-4000

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:    Gina Durham
   DLA Piper LLP (US)
   
   P.O. Box 64807
   Chicago, Illinois 60664-0807
Mailing Address:    Gina Durham
   DLA Piper LLP (US)
   P.O. Box 64807
   Chicago, Illinois 60664-0807
        
Serial Number: 88336715
Internet Transmission Date: Mon Nov 25 16:14:05 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.X.XX-201911251614057313
47-88336715-700695a96fdde155f4f4d88d6ba2
5f26b83a83431b7a2eda5f1bea626f3df83d-N/A
-N/A-20191121165725850217