Response to Office Action

SCD

Medidata Solutions, Inc.

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)

Response to Office Action


The table below presents the data as entered.

Input Field
Entered
SERIAL NUMBER 88348889
LAW OFFICE ASSIGNED LAW OFFICE 107
MARK SECTION
MARK http://uspto.report/TM/88348889/mark.png
LITERAL ELEMENT SCD
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.
GOODS AND/OR SERVICES SECTION (current)
INTERNATIONAL CLASS 042
DESCRIPTION
Providing medical and scientific research information in the field of clinical trials; providing information in the field of medical clinical trials; Providing an on-line searchable database in the fields of medical clinical trials and medical research; Medical research; Research and development and consultation related thereto in the field of clinical trials; compiling data for research and analytical purposes in the field of clinical trials, medical science and medical consultancy; Cloud computing featuring software for managing, gathering, organizing, and sharing data, information and images in the fields of medical clinical trials and medical research, for the collection of information and data in medical clinical trials and medical research, for evaluating and measuring the performance and results of medical clinical trials and medical research, for medical clinical trial and medical research user and learning management, and for medical clinical trial and medical research operational reporting and analytics; software as a service (SaaS) solutions featuring software for managing, gathering, organizing, and sharing data, information and images in the fields of medical clinical trials and medical research, for the collection of information and data in medical clinical trials and medical research, for evaluating and measuring the performance and results of medical clinical trials and medical research, for medical clinical trial and medical research user and learning management, and for medical clinical trial and medical research operational reporting and analytics
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (proposed)
INTERNATIONAL CLASS 042
TRACKED TEXT DESCRIPTION
Providing medical and scientific research information in the field of clinical trials; providing information in the field of medical clinical trials; providing medical and scientific research information in the field of medical clinical trials; Providing an on-line searchable database in the fields of medical clinical trials and medical research; Medical research; Research and development and consultation related thereto in the field of clinical trials; compiling data for research and analytical purposes in the field of clinical trials, medical science and medical consultancy; compiling data for medical and scientific research and analytical purposes in the field of clinical trials, medical science and medical consultancy; Cloud computing featuring software for managing, gathering, organizing, and sharing data, information and images in the fields of medical clinical trials and medical research, for the collection of information and data in medical clinical trials and medical research, for evaluating and measuring the performance and results of medical clinical trials and medical research, for medical clinical trial and medical research user and learning management, and for medical clinical trial and medical research operational reporting and analytics; software as a service (SaaS) solutions featuring software for managing, gathering, organizing, and sharing data, information and images in the fields of medical clinical trials and medical research, for the collection of information and data in medical clinical trials and medical research, for evaluating and measuring the performance and results of medical clinical trials and medical research, for medical clinical trial and medical research user and learning management, and for medical clinical trial and medical research operational reporting and analytics; software as a service (SaaS) services featuring software for managing, gathering, organizing, and sharing data, information and images in the fields of medical clinical trials and medical research, for the collection of information and data in medical clinical trials and medical research, for evaluating and measuring the performance and results of medical clinical trials and medical research, for medical clinical trial and medical research user and learning management, and for medical clinical trial and medical research operational reporting and analytics
FINAL DESCRIPTION
Providing medical and scientific research information in the field of clinical trials; providing medical and scientific research information in the field of medical clinical trials; Providing an on-line searchable database in the fields of medical clinical trials and medical research; Medical research; Research and development and consultation related thereto in the field of clinical trials; compiling data for medical and scientific research and analytical purposes in the field of clinical trials, medical science and medical consultancy; Cloud computing featuring software for managing, gathering, organizing, and sharing data, information and images in the fields of medical clinical trials and medical research, for the collection of information and data in medical clinical trials and medical research, for evaluating and measuring the performance and results of medical clinical trials and medical research, for medical clinical trial and medical research user and learning management, and for medical clinical trial and medical research operational reporting and analytics; software as a service (SaaS) services featuring software for managing, gathering, organizing, and sharing data, information and images in the fields of medical clinical trials and medical research, for the collection of information and data in medical clinical trials and medical research, for evaluating and measuring the performance and results of medical clinical trials and medical research, for medical clinical trial and medical research user and learning management, and for medical clinical trial and medical research operational reporting and analytics
FILING BASIS Section 1(b)
ATTORNEY SECTION (current)
NAME Jordan A LaVine
ATTORNEY BAR MEMBERSHIP NUMBER NOT SPECIFIED
YEAR OF ADMISSION NOT SPECIFIED
U.S. STATE/ COMMONWEALTH/ TERRITORY NOT SPECIFIED
FIRM NAME FLASTER GREENBERG P.C.
INTERNAL ADDRESS SUITE 1050
STREET 1835 MARKET STREET
CITY PHILADELPHIA
STATE Pennsylvania
POSTAL CODE 19103
COUNTRY US
PHONE 215-279-9389
EMAIL jordan.lavine@flastergreenberg.com
AUTHORIZED TO COMMUNICATE VIA EMAIL Yes
ATTORNEY SECTION (proposed)
NAME Jordan A LaVine
ATTORNEY BAR MEMBERSHIP NUMBER XXX
YEAR OF ADMISSION XXXX
U.S. STATE/ COMMONWEALTH/ TERRITORY XX
FIRM NAME FLASTER GREENBERG P.C.
INTERNAL ADDRESS SUITE 1050
STREET 1835 MARKET STREET
CITY PHILADELPHIA
STATE Pennsylvania
POSTAL CODE 19103
COUNTRY United States
PHONE 215-279-9389
EMAIL jordan.lavine@flastergreenberg.com
AUTHORIZED TO COMMUNICATE VIA EMAIL Yes
CORRESPONDENCE SECTION (current)
NAME JORDAN A LAVINE
FIRM NAME FLASTER GREENBERG P.C.
INTERNAL ADDRESS SUITE 1050
STREET 1835 MARKET STREET
CITY PHILADELPHIA
STATE Pennsylvania
POSTAL CODE 19103
COUNTRY US
PHONE 215-279-9389
EMAIL jordan.lavine@flastergreenberg.com
AUTHORIZED TO COMMUNICATE VIA EMAIL Yes
CORRESPONDENCE SECTION (proposed)
NAME Jordan A LaVine
FIRM NAME FLASTER GREENBERG P.C.
INTERNAL ADDRESS SUITE 1050
STREET 1835 MARKET STREET
CITY PHILADELPHIA
STATE Pennsylvania
POSTAL CODE 19103
COUNTRY United States
PHONE 215-279-9389
EMAIL jordan.lavine@flastergreenberg.com
AUTHORIZED TO COMMUNICATE VIA EMAIL Yes
SIGNATURE SECTION
RESPONSE SIGNATURE /jordan lavine/
SIGNATORY'S NAME Jordan LaVine
SIGNATORY'S POSITION Attorney of record, PA/NY/NJ bar member
DATE SIGNED 12/09/2019
AUTHORIZED SIGNATORY YES
FILING INFORMATION SECTION
SUBMIT DATE Mon Dec 09 17:16:59 EST 2019
TEAS STAMP USPTO/ROA-XX.XX.XXX.XXX-2
0191209171659845659-88348
889-700d92e46557f845db9e3
1b34e819d3453e5329b34be73
162e31f65bfc863cba99a-N/A
-N/A-20191209171541949778



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. 88348889 SCD(Standard Characters, see http://uspto.report/TM/88348889/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 042 for Providing medical and scientific research information in the field of clinical trials; providing information in the field of medical clinical trials; Providing an on-line searchable database in the fields of medical clinical trials and medical research; Medical research; Research and development and consultation related thereto in the field of clinical trials; compiling data for research and analytical purposes in the field of clinical trials, medical science and medical consultancy; Cloud computing featuring software for managing, gathering, organizing, and sharing data, information and images in the fields of medical clinical trials and medical research, for the collection of information and data in medical clinical trials and medical research, for evaluating and measuring the performance and results of medical clinical trials and medical research, for medical clinical trial and medical research user and learning management, and for medical clinical trial and medical research operational reporting and analytics; software as a service (SaaS) solutions featuring software for managing, gathering, organizing, and sharing data, information and images in the fields of medical clinical trials and medical research, for the collection of information and data in medical clinical trials and medical research, for evaluating and measuring the performance and results of medical clinical trials and medical research, for medical clinical trial and medical research user and learning management, and for medical clinical trial and medical research operational reporting and analytics
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 and scientific research information in the field of clinical trials; providing information in the field of medical clinical trials; providing medical and scientific research information in the field of medical clinical trials; Providing an on-line searchable database in the fields of medical clinical trials and medical research; Medical research; Research and development and consultation related thereto in the field of clinical trials; compiling data for research and analytical purposes in the field of clinical trials, medical science and medical consultancy; compiling data for medical and scientific research and analytical purposes in the field of clinical trials, medical science and medical consultancy; Cloud computing featuring software for managing, gathering, organizing, and sharing data, information and images in the fields of medical clinical trials and medical research, for the collection of information and data in medical clinical trials and medical research, for evaluating and measuring the performance and results of medical clinical trials and medical research, for medical clinical trial and medical research user and learning management, and for medical clinical trial and medical research operational reporting and analytics; software as a service (SaaS) solutions featuring software for managing, gathering, organizing, and sharing data, information and images in the fields of medical clinical trials and medical research, for the collection of information and data in medical clinical trials and medical research, for evaluating and measuring the performance and results of medical clinical trials and medical research, for medical clinical trial and medical research user and learning management, and for medical clinical trial and medical research operational reporting and analytics; software as a service (SaaS) services featuring software for managing, gathering, organizing, and sharing data, information and images in the fields of medical clinical trials and medical research, for the collection of information and data in medical clinical trials and medical research, for evaluating and measuring the performance and results of medical clinical trials and medical research, for medical clinical trial and medical research user and learning management, and for medical clinical trial and medical research operational reporting and analyticsClass 042 for Providing medical and scientific research information in the field of clinical trials; providing medical and scientific research information in the field of medical clinical trials; Providing an on-line searchable database in the fields of medical clinical trials and medical research; Medical research; Research and development and consultation related thereto in the field of clinical trials; compiling data for medical and scientific research and analytical purposes in the field of clinical trials, medical science and medical consultancy; Cloud computing featuring software for managing, gathering, organizing, and sharing data, information and images in the fields of medical clinical trials and medical research, for the collection of information and data in medical clinical trials and medical research, for evaluating and measuring the performance and results of medical clinical trials and medical research, for medical clinical trial and medical research user and learning management, and for medical clinical trial and medical research operational reporting and analytics; software as a service (SaaS) services featuring software for managing, gathering, organizing, and sharing data, information and images in the fields of medical clinical trials and medical research, for the collection of information and data in medical clinical trials and medical research, for evaluating and measuring the performance and results of medical clinical trials and medical research, for medical clinical trial and medical research user and learning management, and for medical clinical trial and medical research operational reporting and analytics
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: Jordan A LaVine. Jordan A LaVine of FLASTER GREENBERG P.C., is located at

      SUITE 1050
      1835 MARKET STREET
      PHILADELPHIA, Pennsylvania 19103
      US

The phone number is 215-279-9389.

The email address is jordan.lavine@flastergreenberg.com

The applicants proposed attorney information: Jordan A LaVine. Jordan A LaVine of FLASTER GREENBERG P.C., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      SUITE 1050
      1835 MARKET STREET
      PHILADELPHIA, Pennsylvania 19103
      United States

The phone number is 215-279-9389.

The email address is jordan.lavine@flastergreenberg.com

Jordan A LaVine 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: JORDAN A LAVINE. JORDAN A LAVINE of FLASTER GREENBERG P.C., is located at

      SUITE 1050
      1835 MARKET STREET
      PHILADELPHIA, Pennsylvania 19103
      US

The phone number is 215-279-9389.

The email address is jordan.lavine@flastergreenberg.com

The applicants proposed correspondence information: Jordan A LaVine. Jordan A LaVine of FLASTER GREENBERG P.C., is located at

      SUITE 1050
      1835 MARKET STREET
      PHILADELPHIA, Pennsylvania 19103
      United States

The phone number is 215-279-9389.

The email address is jordan.lavine@flastergreenberg.com

SIGNATURE(S)
Response Signature
Signature: /jordan lavine/     Date: 12/09/2019
Signatory's Name: Jordan LaVine
Signatory's Position: Attorney of record, PA/NY/NJ 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:    JORDAN A LAVINE
   FLASTER GREENBERG P.C.
   SUITE 1050
   1835 MARKET STREET
   PHILADELPHIA, Pennsylvania 19103
Mailing Address:    Jordan A LaVine
   FLASTER GREENBERG P.C.
   SUITE 1050
   1835 MARKET STREET
   PHILADELPHIA, Pennsylvania 19103
        
Serial Number: 88348889
Internet Transmission Date: Mon Dec 09 17:16:59 EST 2019
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2019120917165984
5659-88348889-700d92e46557f845db9e31b34e
819d3453e5329b34be73162e31f65bfc863cba99
a-N/A-N/A-20191209171541949778



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