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. 88396039 LIBERATE LIFE(Standard Characters, see http://uspto.report/TM/88396039/mark.png) has been amended as follows:

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

Add Class 14 to the application so that the application covers Classes 9, 14, 41 and 44.  The identification of the services should read as follows (the identification for Classes 41 and 44 was deemed acceptable as written):

--Downloadable medical software application used on phones, tablets and laptops for patient security, information, stimulation, motivation and precaution for use with heart monitoring equipment, medical clocks, for use in the field of oncology, and for monitoring hemophiliacs, in International Class 9;--

 

--Clocks in the nature of a security, information, stimulation, motivation and precaution clock for medical use, in International Class 14;--

 

--Marketing; commercial information agency services; market analysis; conducting market surveys, in International Class 35--

 

 

REMARKS

As required in the Office Action, Applicant has amended the identification of the services to clarify their nature and withdrawal of the refusal is requested.  It is believed that the amended identification is sufficiently clear and definite for registration purposes.

Applicant has also added Class 14 to the application, as suggested in the Office Action.  The additional filing fee of $275 is submitted herewith to support the additional class of services.

In view of the above amendments and remarks, approval of the application for publication is respectfully requested.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant hereby deletes the following class of goods/services from the application.
Class 010 for Security, information, stimulation, motivation and precaution clock for medical use; Medical application used on phones, tablets and laptops for patient security, information, stimulation, motivation and precaution

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Marketing; commercial information services; market analysis; market surveys
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; commercial information services; commercial information agency services; market analysis; market surveys; conducting market surveysClass 035 for Marketing; commercial information agency services; market analysis; conducting market surveys
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 hereby adds the following class of goods/services to the application:
New: Class 009 (Original Class: 010 ) for Downloadable medical software application used on phones, tablets and laptops for patient security, information, stimulation, motivation and precaution for use with heart monitoring equipment, medical clocks, for use in the field of oncology, and for monitoring hemophiliacs
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 hereby adds the following class of goods/services to the application:
New: Class 014 for Clocks in the nature of a security, information, stimulation, motivation and precaution clock for medical use
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: Donna J. Bunton. Donna J. Bunton of NIXON & VANDERHYE P.C., is located at

      901 NORTH GLEBE ROAD, 11TH FLOOR
      ARLINGTON, Virginia 22203
      US
The docket/reference number is DJB/2739-173.

The phone number is 703-816-4003.

The fax number is 703-816-4100.

The email address is nixonptomail@nixonvan.com

The applicants proposed attorney information: Donna J. Bunton. Other appointed attorneys are Every attorney at law associated with NIXON & VANDERHYE P.C.. Donna J. Bunton of NIXON & VANDERHYE P.C., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      901 NORTH GLEBE ROAD, 11TH FLOOR
      ARLINGTON, Virginia 22203
      United States
The docket/reference number is DJB/2739-173.

The phone number is 703-816-4003.

The fax number is 703-816-4100.

The email address is nixonptomail@nixonvan.com

Donna J. Bunton submitted the following statement: I attest that I am an 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).
The applicant's current correspondence information: DONNA J. BUNTON. DONNA J. BUNTON of NIXON & VANDERHYE P.C., is located at

      901 NORTH GLEBE ROAD, 11TH FLOOR
      ARLINGTON, Virginia 22203
      US
The docket/reference number is DJB/2739-173.

The phone number is 703-816-4003.

The fax number is 703-816-4100.

The email address is nixonptomail@nixonvan.com; djb@nixonvan.com

The applicants proposed correspondence information: Donna J. Bunton. Donna J. Bunton of NIXON & VANDERHYE P.C., is located at

      901 NORTH GLEBE ROAD, 11TH FLOOR
      ARLINGTON, Virginia 22203
      United States
The docket/reference number is DJB/2739-173.

The phone number is 703-816-4003.

The fax number is 703-816-4100.

The email address is nixonptomail@nixonvan.com; djb@nixonvan.com

FEE(S)
Fee(s) in the amount of $275 is being submitted.

SIGNATURE(S)
Declaration Signature
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice.
Response Signature
Signature: /Donna J. Bunton/     Date: 08/06/2019
Signatory's Name: Donna J. Bunton
Signatory's Position: Attorney for Applicant (VA Bar Member)

Signatory's Phone Number: 703-816-4003

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:    DONNA J. BUNTON
   NIXON & VANDERHYE P.C.
   
   901 NORTH GLEBE ROAD, 11TH FLOOR
   ARLINGTON, Virginia 22203
Mailing Address:    Donna J. Bunton
   NIXON & VANDERHYE P.C.
   901 NORTH GLEBE ROAD, 11TH FLOOR
   ARLINGTON, Virginia 22203
        
RAM Sale Number: 88396039
RAM Accounting Date: 08/06/2019
        
Serial Number: 88396039
Internet Transmission Date: Tue Aug 06 16:17:50 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201908061617504
86896-88396039-610f8b521e022fcb77bf3dd7d
5bbbc7da782eb9dd799e2403671fb45eacab4db2
-CC-17496480-20190806160342984775