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. 88342355 THAT'S THE BENEFIT OF BLUE(Standard Characters, see http://uspto.report/TM/88342355/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 035 for Marketing of medical, dental, vision and long term care insurance, prescription drug benefit plans and medicare benefit plans; marketing of life, disability, and accidental death and dismemberment insurance plans; health care management and coordination of services, namely, creating, providing, managing and maintaining the business administration of health care provider networks; providing public policy information in the fields of healthcare, and wellness; promoting public awareness of the importance of making good healthcare choices and safe prescription use; public advocacy to promote awareness and education regarding making good healthcare choices and safe prescription use
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: Marketing of medical, dental, vision and long term care insurance, prescription drug benefit plans and medicare benefit plans; marketing of life, disability, and accidental death and dismemberment insurance plans; health care management and coordination of services, namely, creating, providing, managing and maintaining the business administration of health care provider networks; providing public policy information in the fields of healthcare, and wellness; promoting public awareness of the importance of making good healthcare choices and safe prescription use; public advocacy to promote awareness and education regarding making good healthcare choices and safe prescription use; promoting public awareness regarding making good healthcare choices and safe prescription use by means of public advocacyClass 035 for Marketing of medical, dental, vision and long term care insurance, prescription drug benefit plans and medicare benefit plans; marketing of life, disability, and accidental death and dismemberment insurance plans; health care management and coordination of services, namely, creating, providing, managing and maintaining the business administration of health care provider networks; providing public policy information in the fields of healthcare, and wellness; promoting public awareness of the importance of making good healthcare choices and safe prescription use; promoting public awareness regarding making good healthcare choices and safe prescription use by means of public advocacy
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 036 for Insurance and related insurance services, namely, the sale, administration and underwriting of medical, dental, vision, and long term care insurance, prescription drug benefit plans, and medicare benefit plans; pharmacy benefit management services; insurance and related insurance services, namely, the sale, administration and underwriting of life, disability and accidental death and dismemberment insurance plans; providing information regarding insurance and related insurance services, namely, the sale, marketing, administration and underwriting of medical, dental, vision, and long term care insurance, prescription drug benefit plans, medicare benefit 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: Insurance and related insurance services, namely, the sale, administration and underwriting of medical, dental, vision, and long term care insurance, prescription drug benefit plans, and medicare benefit plans; Insurance and related insurance services, namely, the brokerage, administration and underwriting of medical, dental, vision, and long term care insurance, prescription drug benefit plans, and medicare benefit plans; pharmacy benefit management services; insurance and related insurance services, namely, the sale, administration and underwriting of life, disability and accidental death and dismemberment insurance plans; insurance and related insurance services, namely, the brokerage, administration and underwriting of life, disability and accidental death and dismemberment insurance plans; providing information regarding insurance and related insurance services, namely, the sale, marketing, administration and underwriting of medical, dental, vision, and long term care insurance, prescription drug benefit plans, medicare benefit plans; providing information regarding insurance and related insurance services, namely, the brokerage, marketing, administration and underwriting of medical, dental, vision, and long term care insurance, prescription drug benefit plans, medicare benefit plansClass 036 for Insurance and related insurance services, namely, the brokerage, administration and underwriting of medical, dental, vision, and long term care insurance, prescription drug benefit plans, and medicare benefit plans; pharmacy benefit management services; insurance and related insurance services, namely, the brokerage, administration and underwriting of life, disability and accidental death and dismemberment insurance plans; providing information regarding insurance and related insurance services, namely, the brokerage, marketing, administration and underwriting of medical, dental, vision, and long term care insurance, prescription drug benefit plans, medicare benefit 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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Educational services, namely, providing information about comprehensive healthcare benefit programs, namely, integrated healthcare services with a network of healthcare providers including healthcare rendered through health maintenance organizations and preferred provider organizations, namely, medical, hospital, home healthcare, preventive healthcare treatment, mental therapy services; educational services in the fields of healthcare and wellness; providing a website featuring information in the fields of healthcare, wellness, and nutrition
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, namely, providing information about comprehensive healthcare benefit programs, namely, integrated healthcare services with a network of healthcare providers including healthcare rendered through health maintenance organizations and preferred provider organizations, namely, medical, hospital, home healthcare, preventive healthcare treatment, mental therapy services; Educational services in the nature of providing workshops, seminars, classes, lectures, panel discussions, town hall meetings, symposiums, and online publications in the nature of research reports in the fields of healthcare and wellness; educational services in the fields of healthcare and wellness; providing a website featuring information in the fields of healthcare, wellness, and nutritionClass 041 for Educational services in the nature of providing workshops, seminars, classes, lectures, panel discussions, town hall meetings, symposiums, and online publications in the nature of research reports in the fields of healthcare and wellness
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 Comprehensive health care benefit programs, namely, integrated healthcare services with a network of healthcare providers including health care rendered through health maintenance organizations, preferred provider organizations, and high performance networks, namely, medical, dental, hospital, surgical, emergency, home health care, rehabilitative treatment, preventive health care treatment, physical and mental therapy services; providing information in the fields of healthcare and wellness; providing information and data in the fields of healthcare, wellness, and prescription medications; providing information regarding health issues, namely, social determinants on health based on community-based data, evidence-based programs and community needs; providing information and data about social and environmental conditions affecting access to healthcare; providing disease awareness information and treatment information in the fields of substance abuse and addiction; providing a website featuring information about healthcare, wellness, addiction treatment, and prescription medications; medical information; rehabilitation patient care services; rehabilitation of drug addicted patients
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: Comprehensive health care benefit programs, namely, integrated healthcare services with a network of healthcare providers including health care rendered through health maintenance organizations, preferred provider organizations, and high performance networks, namely, medical, dental, hospital, surgical, emergency, home health care, rehabilitative treatment, preventive health care treatment, physical and mental therapy services; providing information in the fields of healthcare and wellness; providing information and data in the fields of healthcare, wellness, and prescription medications; providing information regarding health issues, namely, social determinants on health based on community-based data, evidence-based programs and community needs; providing information and data about social and environmental conditions affecting access to healthcare; providing healthcare information and data about social and environmental conditions affecting access to healthcare; providing disease awareness information and treatment information in the fields of substance abuse and addiction; providing a website featuring information about healthcare, wellness, addiction treatment, and prescription medications; medical information; rehabilitation patient care services; rehabilitation of drug addicted patients; providing educational information about healthcare comprehensive healthcare benefit programs, namely, integrated healthcare services with a network of healthcare providers including healthcare rendered through health maintenance organizations and preferred provider organizations, namely, medical, hospital, home healthcare, preventive healthcare treatment, mental therapy services; providing a website featuring information in the fields of healthcare, wellness, and nutritionClass 044 for Comprehensive health care benefit programs, namely, integrated healthcare services with a network of healthcare providers including health care rendered through health maintenance organizations, preferred provider organizations, and high performance networks, namely, medical, dental, hospital, surgical, emergency, home health care, rehabilitative treatment, preventive health care treatment, physical and mental therapy services; providing information in the fields of healthcare and wellness; providing information and data in the fields of healthcare, wellness, and prescription medications; providing information regarding health issues, namely, social determinants on health based on community-based data, evidence-based programs and community needs; providing healthcare information and data about social and environmental conditions affecting access to healthcare; providing disease awareness information and treatment information in the fields of substance abuse and addiction; providing a website featuring information about healthcare, wellness, addiction treatment, and prescription medications; medical information; rehabilitation patient care services; rehabilitation of drug addicted patients; providing educational information about healthcare comprehensive healthcare benefit programs, namely, integrated healthcare services with a network of healthcare providers including healthcare rendered through health maintenance organizations and preferred provider organizations, namely, medical, hospital, home healthcare, preventive healthcare treatment, mental therapy services; providing a website featuring information in the fields of healthcare, wellness, and nutrition
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: J. Ryan Hinshaw. J. Ryan Hinshaw of BLUE CROSS AND BLUE SHIELD ASSOCIATION, is located at

      225 N. MICHIGAN AVE.
      CHICAGO, Illinois 60601
      US

The email address is trademarks@bcbsa.com

The applicants proposed attorney information: J. Ryan Hinshaw. Other appointed attorneys are Cynthia B. Stevens. J. Ryan Hinshaw of Blue Cross and Blue Shield Association, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      225 North Michigan Avenue
      Chicago, Illinois 60601
      United States
The docket/reference number is 10503EF.

The email address is trademarks@bcbsa.com

J. Ryan Hinshaw 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: J. RYAN HINSHAW. J. RYAN HINSHAW of BLUE CROSS AND BLUE SHIELD ASSOCIATION, is located at

      225 N. MICHIGAN AVE.
      CHICAGO, Illinois 60601
      US

The email address is trademarks@bcbsa.com; ryan.hinshaw@bcbsa.com; cynthia.stevens@bcbsa.com

The applicants proposed correspondence information: J. Ryan Hinshaw. J. Ryan Hinshaw of Blue Cross and Blue Shield Association, is located at

      225 North Michigan Avenue
      Chicago, Illinois 60601
      United States
The docket/reference number is 10503EF.

The email address is trademarks@bcbsa.com; ryan.hinshaw@bcbsa.com; cynthia.stevens@bcbsa.com

SIGNATURE(S)
Response Signature
Signature: /J. Ryan Hinshaw/     Date: 10/21/2019
Signatory's Name: J. Ryan Hinshaw
Signatory's Position: Attorney of record, Illinois 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.

Mailing Address:    J. RYAN HINSHAW
   BLUE CROSS AND BLUE SHIELD ASSOCIATION
   
   225 N. MICHIGAN AVE.
   CHICAGO, Illinois 60601
Mailing Address:    J. Ryan Hinshaw
   Blue Cross and Blue Shield Association
   225 North Michigan Avenue
   Chicago, Illinois 60601
        
Serial Number: 88342355
Internet Transmission Date: Mon Oct 21 12:44:04 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2019102112440408
3655-88342355-610d91d732b55dc374f6e34a71
57b73744d42a47da4dbdbe3ed23c52dfd72e5451
c-N/A-N/A-20191021123228424776