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. 88365312 PRIVIGEN (Stylized and/or with Design, see http://uspto.report/TM/88365312/mark.png) has been amended as follows:

MARK
Applicant proposes to amend the mark as follows:
Current: PRIVIGEN (Stylized and/or with Design, see http://uspto.report/TM/88365312/mark.png)
Proposed: PRIVIGEN (Stylized and/or with Design, see mark)
The color(s) green, white and black is/are claimed as a feature of the mark.
The mark consists of the stylized wording "PRIVIGEN" in black below a miscellaneous oblong design in green and white. All other instances of the color white in the mark represent background and/or transparent areas only and are not features of the mark.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Administration of a program to provide financial assistance, and/or free product to financially needy populations; Providing information regarding medical billing support services, namely, medical records coding services for others in the nature of assignment of diagnostic and procedural codes for purposes of reimbursement from insurance; Business administration of patient reimbursement programs
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: Administration of a program to provide financial assistance, and/or free product to financially needy populations; Administration of a program for financially needy populations for enabling participants to obtain financial assistance in the nature of discounts on goods and/or free product samples; Providing information regarding medical billing support services, namely, medical records coding services for others in the nature of assignment of diagnostic and procedural codes for purposes of reimbursement from insurance; Business administration of patient reimbursement programs; Business administration of patient reimbursement programs.Class 035 for Administration of a program for financially needy populations for enabling participants to obtain financial assistance in the nature of discounts on goods and/or free product samples; Providing information regarding medical billing support services, namely, medical records coding services for others in the nature of assignment of diagnostic and procedural codes for purposes of reimbursement from insurance; Business administration of patient reimbursement programs.
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, nurse supports services, providing information for patients about the stages of diseases, illnesses and conditions
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, nurse supports services, providing information for patients about the stages of diseases, illnesses and conditions; Educational services, namely, conducting programs and training courses for nurses in the field of blood diseases, illnesses and conditions, as well as, awareness and consequences of immunodeficiency and neurological disorders, the risk of hemolysis occurring in certain patients receiving immunoglobulin infusion therapy and the identification and treatment with intravenous immunoglobulin therapy of patients in whom hemolysis may develop; Educational services, namely, providing online instruction in the field of blood diseases, illnesses and conditions via an online website; Educational services, namely, providing on-line classes, seminars, conferences and workshops in the field of blood conditions, illnesses, and diseases and distribution of training materials in connection therewith; Educational services, namely, developing, arranging, and conducting educational conferences and programs and providing courses of instruction in the field of blood diseases, illnesses and conditions; providing information for patients in the field of education about the stages of diseases, illnesses and medical conditions.Class 041 for Educational services, namely, conducting programs and training courses for nurses in the field of blood diseases, illnesses and conditions, as well as, awareness and consequences of immunodeficiency and neurological disorders, the risk of hemolysis occurring in certain patients receiving immunoglobulin infusion therapy and the identification and treatment with intravenous immunoglobulin therapy of patients in whom hemolysis may develop; Educational services, namely, providing online instruction in the field of blood diseases, illnesses and conditions via an online website; Educational services, namely, providing on-line classes, seminars, conferences and workshops in the field of blood conditions, illnesses, and diseases and distribution of training materials in connection therewith; Educational services, namely, developing, arranging, and conducting educational conferences and programs and providing courses of instruction in the field of blood diseases, illnesses and conditions; providing information for patients in the field of education about the stages of diseases, illnesses and medical conditions.
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 Providing medical information regarding immunoglobulin, immunodeficiency and neurological disorders, and treatment of same using immunoglobulin; medical consultation directed toward provision of letters of medical necessity or appeal of denied insurance claims; Providing medical information regarding dosing and infusion information for immunoglobulin, immunodeficiency and neurological disorders
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 information regarding immunoglobulin, immunodeficiency and neurological disorders, and treatment of same using immunoglobulin; medical consultation directed toward provision of letters of medical necessity or appeal of denied insurance claims; medical consultations provided to patients requiring letters of medical necessity and patients requiring medical letters for the purpose of appealing denied insurance claims; providing medical information regarding dosing and infusion information for immunoglobulin, immunodeficiency and neurological disorders; providing medical information to patients about the stages of diseases, illnesses and medical conditions.Class 044 for Providing medical information regarding immunoglobulin, immunodeficiency and neurological disorders, and treatment of same using immunoglobulin; medical consultations provided to patients requiring letters of medical necessity and patients requiring medical letters for the purpose of appealing denied insurance claims; providing medical information regarding dosing and infusion information for immunoglobulin, immunodeficiency and neurological disorders; providing medical information to patients about the stages of diseases, illnesses and medical conditions.
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: Scott D. Woldow. Scott D. Woldow of SMITH, GAMBRELL & RUSSELL, LLP, is located at

      SUITE 400, 1055 THOMAS JEFFERSON ST. NW
      WASHINGTON, District of Columbia 20007
      US
The docket/reference number is 034845..

The phone number is 202-263-4300.

The fax number is 202-263-4329.

The email address is swoldow@sgrlaw.com

The applicants proposed attorney information: Scott D. Woldow. Scott D. Woldow of SMITH, GAMBRELL & RUSSELL, LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      SUITE 400, 1055 THOMAS JEFFERSON ST. NW
      WASHINGTON, District of Columbia 20007
      United States
The docket/reference number is 034845.176.

The phone number is 202-263-4300.

The fax number is 202-263-4329.

The email address is swoldow@sgrlaw.com

Scott D. Woldow 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: SCOTT D. WOLDOW. SCOTT D. WOLDOW of SMITH, GAMBRELL & RUSSELL, LLP, is located at

      SUITE 400, 1055 THOMAS JEFFERSON ST. NW
      WASHINGTON, District of Columbia 20007
      US
The docket/reference number is 034845..

The phone number is 202-263-4300.

The fax number is 202-263-4329.

The email address is swoldow@sgrlaw.com; docketing@sgrlaw.com

The applicants proposed correspondence information: Scott D. Woldow. Scott D. Woldow of SMITH, GAMBRELL & RUSSELL, LLP, is located at

      SUITE 400, 1055 THOMAS JEFFERSON ST. NW
      WASHINGTON, District of Columbia 20007
      United States
The docket/reference number is 034845.176.

The phone number is 202-263-4300.

The fax number is 202-263-4329.

The email address is swoldow@sgrlaw.com; docketing@sgrlaw.com

ADDITIONAL STATEMENTS
Miscellaneous Statement
Applicant adopts the Examiner's suggested descriptions with minor modifications.


SIGNATURE(S)
Response Signature
Signature: /SW/     Date: 12/05/2019
Signatory's Name: Scott D. Woldow
Signatory's Position: Attorney of Record, DC bar member

Signatory's Phone Number: 202-263-4300

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:    SCOTT D. WOLDOW
   SMITH, GAMBRELL & RUSSELL, LLP
   
   SUITE 400, 1055 THOMAS JEFFERSON ST. NW
   WASHINGTON, District of Columbia 20007
Mailing Address:    Scott D. Woldow
   SMITH, GAMBRELL & RUSSELL, LLP
   SUITE 400, 1055 THOMAS JEFFERSON ST. NW
   WASHINGTON, District of Columbia 20007
        
Serial Number: 88365312
Internet Transmission Date: Thu Dec 05 14:53:05 EST 2019
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2019120514530574
2659-88365312-7006761a4bcc5c592968b6ed35
f61513a95e6d6898c5ffa064aa6b45990b759d-N
/A-N/A-20191205142019058721