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 December 17, 2019. Reconsideration of this Application is respectfully requested in view of the following remarks.

REMARKS

In the Office Action, the Examiner refused to accept Applicant’s claim of acquired distinctiveness in part because Applicant had not yet filed an amendment to allege use for the 4MEDICA BIG DATA MPI mark. Applicant notes that it subsequently filed its amendment to allege use on May 14, 2020, and the amendment to allege use was accepted by the Examiner on June 6, 2020. As stated therein, Applicant’s mark 4MEDICA BIG DATA MPI has been in use in commerce since at least as early as March 11, 2013. Applicant confirms that its claim of acquired distinctiveness for the BIG DATA MPI portion of the mark is based on Applicant’s substantially exclusive and continuous use of the 4MEDICA BIG DATA MPI mark in connection with the services identified in the Application for at least the five years immediately before the date Applicant made the 2(f) claim.

Additionally, the Examiner advised that Applicant’s prima facie showing based on an allegation of five years’ use is insufficient to show acquired distinctiveness in part because the phrase BIG DATA MPI is “highly descriptive of a function of Applicant’s services.” The Examiner asked that Applicant provide additional evidence of acquired distinctiveness. In response, Applicant hereby submits the Affidavit of Gregg Church, President of Applicant. The Affidavit and its attached evidence demonstrate that the relevant public understands the primary significance of the phrase BIG DATA MPI as identifying the source of Applicant’s services. Therefore, Applicant respectfully requests that its 2(f) claim in part be accepted.

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.

EVIDENCE
Evidence has been attached: Declaration of G. Church and exhibits thereto
Original PDF file:
evi_2062051178-2020061422 5513647211_._Affidavit_by _Gregg_Church.pdf
Converted PDF file(s) ( 2 pages) Evidence-1Evidence-2
Original PDF file:
evi_2062051178-2020061422 5513647211_._Exhibit_A_to _Affidavit.pdf
Converted PDF file(s) ( 18 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8Evidence-9Evidence-10Evidence-11Evidence-12Evidence-13Evidence-14Evidence-15Evidence-16Evidence-17Evidence-18
Original PDF file:
evi_2062051178-2020061422 5513647211_._Exhibit_B_to _Affidavit.pdf
Converted PDF file(s) ( 8 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8
Original PDF file:
evi_2062051178-2020061422 5513647211_._Exhibit_C_to _Affidavit.pdf
Converted PDF file(s) ( 5 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5
Original PDF file:
evi_2062051178-2020061422 5513647211_._Exhibit_D_to _Affidavit.pdf
Converted PDF file(s) ( 4 pages) Evidence-1Evidence-2Evidence-3Evidence-4
Original PDF file:
evi_2062051178-2020061422 5513647211_._Exhibit_E_to _Affidavit.pdf
Converted PDF file(s) ( 3 pages) Evidence-1Evidence-2Evidence-3
Correspondence Information (current):
      Gina Durham
      PRIMARY EMAIL FOR CORRESPONDENCE: ch.tm@dlapiper.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): sheila.brown@dlapiper.com

The docket/reference number is 425437-4.
Correspondence Information (proposed):
      Gina Durham
      PRIMARY EMAIL FOR CORRESPONDENCE: ch.tm@dlapiper.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): sheila.brown@dlapiper.com; nicole.chaudhari@dlapiper.com

The docket/reference number is 425437-4.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /Nicole Chaudhari/     Date: 06/14/2020
Signatory's Name: Chaudhari, Nicole
Signatory's Position: Attorney of record

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: Sun Jun 14 23:04:24 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.X-2020061423042420
7559-88336715-71050d2cdf345ae76b128dcccb
e1be62cf97745643968eb9099926bbb897de3-N/
A-N/A-20200614225513647211