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. 88452719 BIG ENOUGH TO MATTER SMALL ENOUGH TO CARE(Standard Characters, see http://uspto.report/TM/88452719/mark.png) has been amended as follows:

EVIDENCE
Evidence in the nature of Arguments and Exhibits A and B. has been attached.
Original PDF file:
evi_662821829-20200218150054165951_._BIG_ENOUGH_-_Response_to_Office_Action.pdf
Converted PDF file(s) ( 6 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Original PDF file:
evi_662821829-20200218150054165951_._Exhibits_A-B_-_Hikma_Office_Action_Response.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 005 for Pharmaceutical, medicinal, sanitary and veterinary preparations and substances; chemical substances for use in human or veterinary medicine; chemicals and chemical preparations for medical purposes; substances used for medical and/or pharmaceutical purposes; dietetic substances for medical purposes
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: Pharmaceutical, medicinal, sanitary and veterinary preparations and substances; Pharmaceutical, medicinal, veterinary preparations and substances, namely systemic anti-infectives, pharmaceutical and medicinal substances for the prevention, curing, and treatment of viral, metabolic, alimentary, endocrine, musculoskeletal, cardiovascular, cardiopulmonary, genitourinary, sexual dysfunction, oncological, hepatological, ophthalmic, respiratory, neurological, gastrointestinal, hormonal, dermatological, parasitic, psychiatric, and immune system related diseases and disorders; chemical substances for use in human or veterinary medicine; pharmaceutical and medicinal substances for the prevention, curing, and treatment of allergies, inflammation, pain, infectious diseases, blood diseases and disorders, nervous system diseases and disorders, malignant neoplastic diseases and disorders, and immunomodulating agent diseases and disorders; chemicals and chemical preparations for medical purposes; sanitary preparations and substances, namely, sanitary sterilizing preparations; substances used for medical and/or pharmaceutical purposes; chemical substances for use in human or veterinary medicine, namely, chemical preparations and reagents for medical purposes namely the treatment of viral, metabolic, alimentary, endocrine, musculoskeletal, cardiovascular, cardiopulmonary, genitourinary, sexual dysfunction, oncological, hepatological, ophthalmic, respiratory, neurological, gastrointestinal, hormonal, dermatological, parasitic, psychiatric, and immune system related diseases and disorders, allergies, inflammation, pain, infectious diseases, blood diseases and disorders, nervous system diseases and disorders, malignant neoplastic diseases and disorders, and immunomodulating agent diseases and disorders; dietetic substances for medical purposes; substances used for medical and/or pharmaceutical purposes, namely, pharmaceutical preparations for the treatment of viral, metabolic, alimentary, endocrine, musculoskeletal, cardiovascular, cardiopulmonary, genitourinary, sexual dysfunction, oncological, hepatological, ophthalmic, respiratory, neurological, gastrointestinal, hormonal, dermatological, parasitic, psychiatric, and immune system related diseases and disorders, allergies, inflammation, pain, infectious diseases, blood diseases and disorders, nervous system diseases and disorders, malignant neoplastic diseases and disorders, and immunomodulating agent diseases and disorders; dietetic substances for medical purposes, namely, dietetic foods adapted for medical purposes.Class 005 for Pharmaceutical, medicinal, veterinary preparations and substances, namely systemic anti-infectives, pharmaceutical and medicinal substances for the prevention, curing, and treatment of viral, metabolic, alimentary, endocrine, musculoskeletal, cardiovascular, cardiopulmonary, genitourinary, sexual dysfunction, oncological, hepatological, ophthalmic, respiratory, neurological, gastrointestinal, hormonal, dermatological, parasitic, psychiatric, and immune system related diseases and disorders; pharmaceutical and medicinal substances for the prevention, curing, and treatment of allergies, inflammation, pain, infectious diseases, blood diseases and disorders, nervous system diseases and disorders, malignant neoplastic diseases and disorders, and immunomodulating agent diseases and disorders; sanitary preparations and substances, namely, sanitary sterilizing preparations; chemical substances for use in human or veterinary medicine, namely, chemical preparations and reagents for medical purposes namely the treatment of viral, metabolic, alimentary, endocrine, musculoskeletal, cardiovascular, cardiopulmonary, genitourinary, sexual dysfunction, oncological, hepatological, ophthalmic, respiratory, neurological, gastrointestinal, hormonal, dermatological, parasitic, psychiatric, and immune system related diseases and disorders, allergies, inflammation, pain, infectious diseases, blood diseases and disorders, nervous system diseases and disorders, malignant neoplastic diseases and disorders, and immunomodulating agent diseases and disorders; substances used for medical and/or pharmaceutical purposes, namely, pharmaceutical preparations for the treatment of viral, metabolic, alimentary, endocrine, musculoskeletal, cardiovascular, cardiopulmonary, genitourinary, sexual dysfunction, oncological, hepatological, ophthalmic, respiratory, neurological, gastrointestinal, hormonal, dermatological, parasitic, psychiatric, and immune system related diseases and disorders, allergies, inflammation, pain, infectious diseases, blood diseases and disorders, nervous system diseases and disorders, malignant neoplastic diseases and disorders, and immunomodulating agent diseases and disorders; dietetic substances for medical purposes, namely, dietetic foods adapted for medical purposes.
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:
Current: Class 010 for Medical apparatus and instruments; medical apparatus and instruments containing pharmaceutical, medicinal or sanitary preparations or substances; medical apparatus and instruments containing chemical substances for use in human or veterinary medicine
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: Medical apparatus and instruments; Medical apparatus and instruments, namely, apparatus for the prevention, curing, and treatment of viral, metabolic, alimentary, endocrine, musculoskeletal, cardiovascular, cardiopulmonary, genitourinary, sexual dysfunction, oncological, hepatological, ophthalmic, respiratory, neurological, gastrointestinal, hormonal, dermatological, parasitic, psychiatric, and immune system related diseases and disorders, pharmaceutical and medicinal substances for the prevention, curing, and treatment of allergies, inflammation, pain, infectious diseases, blood diseases and disorders, nervous system diseases and disorders, malignant neoplastic diseases and disorders, and immunomodulating agent diseases and disorders; medical apparatus and instruments containing pharmaceutical, medicinal or sanitary preparations or substances; medical apparatus and instruments containing pharmaceutical, medicinal or sanitary preparations or substances, namely, medical apparatus for preparing and storing pharmaceutical or medicinal preparations and delivering pharmaceutical or medicinal preparations onto or into the human body; medical apparatus and instruments containing chemical substances for use in human or veterinary medicine; medical apparatus and instruments containing chemical substances for use in human medicine, namely, medical apparatus for preparing and storing chemical substances and delivering chemical substances onto or into the human body.Class 010 for Medical apparatus and instruments, namely, apparatus for the prevention, curing, and treatment of viral, metabolic, alimentary, endocrine, musculoskeletal, cardiovascular, cardiopulmonary, genitourinary, sexual dysfunction, oncological, hepatological, ophthalmic, respiratory, neurological, gastrointestinal, hormonal, dermatological, parasitic, psychiatric, and immune system related diseases and disorders, pharmaceutical and medicinal substances for the prevention, curing, and treatment of allergies, inflammation, pain, infectious diseases, blood diseases and disorders, nervous system diseases and disorders, malignant neoplastic diseases and disorders, and immunomodulating agent diseases and disorders ; medical apparatus and instruments containing pharmaceutical, medicinal or sanitary preparations or substances, namely, medical apparatus for preparing and storing pharmaceutical or medicinal preparations and delivering pharmaceutical or medicinal preparations onto or into the human body; medical apparatus and instruments containing chemical substances for use in human medicine, namely, medical apparatus for preparing and storing chemical substances and delivering chemical substances onto or into the human body.
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:
Current: Class 016 for Paper, cardboard, articles of paper or cardboard; printed matter; stationery; instructional and teaching materials; publications; packaging materials
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: Paper, cardboard, articles of paper or cardboard; Paper; printed matter; cardboard; articles of paper or cardboard, namely, periodicals and books relating to pharmaceuticals and medicines, pharmaceutical and medicinal research and development, pharmaceutical, medicinal, sanitary and veterinary preparations and substances, chemical substances for use in human or veterinary medicine, medical apparatus and instruments, development; instructional and teaching materials; boxes of cardboard or paper; publications; printed matter, namely, newspapers; packaging materials; stationery; printed instructional and teaching materials in the field of medicine; printed publications, namely newsletters, journals, books in the field of pharmaceuticals and pharmaceuticals research and development; packaging materials made of cardboard, foil, plastics and paper; printed matter, namely, printed books, booklets, journals, magazines, newspapers, periodicals, pamphlets, brochures, manuals, leaflets, informational flyers, informational sheets and newsletters, instructional worksheets all in the fields of medicine, medical technology, pharmaceuticals, and healthcare; printed instructional and teaching materials, namely, printed books, booklets, journals, magazines, newspapers, periodicals, pamphlets, brochures, manuals, leaflets, informational flyers, informational sheets and newsletters, instructional worksheets all in the fields of medicine, medical technology, pharmaceuticals, and healthcare.Class 016 for Paper; cardboard; articles of paper or cardboard, namely, periodicals and books relating to pharmaceuticals and medicines, pharmaceutical and medicinal research and development, pharmaceutical, medicinal, sanitary and veterinary preparations and substances, chemical substances for use in human or veterinary medicine, medical apparatus and instruments, development; boxes of cardboard or paper; printed matter, namely, newspapers; stationery; printed instructional and teaching materials in the field of medicine; printed publications, namely newsletters, journals, books in the field of pharmaceuticals and pharmaceuticals research and development; packaging materials made of cardboard, foil, plastics and paper; printed matter, namely, printed books, booklets, journals, magazines, newspapers, periodicals, pamphlets, brochures, manuals, leaflets, informational flyers, informational sheets and newsletters, instructional worksheets all in the fields of medicine, medical technology, pharmaceuticals, and healthcare; printed instructional and teaching materials, namely, printed books, booklets, journals, magazines, newspapers, periodicals, pamphlets, brochures, manuals, leaflets, informational flyers, informational sheets and newsletters, instructional worksheets all in the fields of medicine, medical technology, pharmaceuticals, and healthcare.
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:
Current: Class 035 for Advertising; business management; business administration; office functions; marketing and promotional services; public relations services; product demonstrations and product display services; organisation of trade show and trade exhibition services; distribution of advertising, marketing and promotional material; retail and wholesale services in relation to pharmaceutical, medicinal, sanitary and veterinary preparations and substances, chemical substances for use in human or veterinary medicine, medical apparatus and instruments; business consultancy and advisory services; business analysis, research and information services; advice, consultancy and information for all the aforesaid services
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: Advertising; business management; business administration; office functions; providing office functions; marketing and promotional services; marketing and promotional services, namely, promoting and marketing the goods and services of others by distributing advertising material, coupons and discount offers via printed materials and electronic means; public relations services; product demonstrations and product display services; product demonstrations and product display services namely, product promotion, marketing and merchandising for others in the nature of inventory display, conference presentations and displays; organisation of trade show and trade exhibition services; organisation of trade shows and trade exhibitions for business purposes; distribution of advertising, marketing and promotional material; retail and wholesale services in relation to pharmaceutical, medicinal, sanitary and veterinary preparations and substances, chemical substances for use in human or veterinary medicine, medical apparatus and instruments; retail and wholesale store services featuring pharmaceutical, medicinal, sanitary and veterinary preparations and substances, chemical substances for use in human or veterinary medicine, medical apparatus and instruments; business consultancy and advisory services; business analysis, research and information services; advice, consultancy and information for all the aforesaid services; advice and consultancy related to the aforesaid services.Class 035 for Advertising; business management; business administration; providing office functions; marketing and promotional services, namely, promoting and marketing the goods and services of others by distributing advertising material, coupons and discount offers via printed materials and electronic means; public relations services; product demonstrations and product display services namely, product promotion, marketing and merchandising for others in the nature of inventory display, conference presentations and displays ; organisation of trade shows and trade exhibitions for business purposes; distribution of advertising, marketing and promotional material; retail and wholesale store services featuring pharmaceutical, medicinal, sanitary and veterinary preparations and substances, chemical substances for use in human or veterinary medicine, medical apparatus and instruments; business consultancy and advisory services; business analysis, research and information services; advice and consultancy related to the aforesaid services.
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:
Current: Class 040 for Manufacture of pharmaceutical, medicinal, sanitary and veterinary preparations and substances; manufacture of chemical substances for use in human or veterinary medicine; manufacture of medical apparatus and instruments; manufacture of medical apparatus and instruments containing pharmaceutical, medicinal or sanitary preparations or substances; manufacture of medical apparatus and instruments containing substances for human or veterinary use; advice, consultancy and information for all the aforesaid services
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: Manufacture of pharmaceutical, medicinal, sanitary and veterinary preparations and substances; Custom manufacture of pharmaceutical, medicinal, sanitary and veterinary preparations and substances; manufacture of chemical substances for use in human or veterinary medicine; Custom manufacture of chemical substances for use in human or veterinary medicine; manufacture of medical apparatus and instruments; Custom manufacture of medical apparatus and instruments; manufacture of medical apparatus and instruments containing pharmaceutical, medicinal or sanitary preparations or substances; Custom manufacture of medical apparatus and instruments containing pharmaceutical, medicinal or sanitary preparations or substances; manufacture of medical apparatus and instruments containing substances for human or veterinary use; Custom manufacture of medical apparatus and instruments containing substances for human or veterinary use; advice, consultancy and information for all the aforesaid services; advice and consultancy related to the aforesaid services.Class 040 for Custom manufacture of pharmaceutical, medicinal, sanitary and veterinary preparations and substances; Custom manufacture of chemical substances for use in human or veterinary medicine; Custom manufacture of medical apparatus and instruments; Custom manufacture of medical apparatus and instruments containing pharmaceutical, medicinal or sanitary preparations or substances; Custom manufacture of medical apparatus and instruments containing substances for human or veterinary use; advice and consultancy related to the aforesaid services.
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:
Current: Class 041 for Education services; training services; education and training services relating to pharmaceutical, medicinal or sanitary preparations or substances for human or veterinary use; publication services; publication services relating to pharmaceutical, medicinal or sanitary preparations or substances for human or veterinary use; organisation and arrangement of lectures, seminars and symposiums; publication of electronic books, magazines, journals and web blogs; advice, consultancy and information for all the aforesaid services
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: Education services; Education services, namely, providing seminars, conferences and training classes in the fields of medicine, medical technology, pharmaceuticals, and healthcare and in the use and preparation of pharmaceutical, medicinal or sanitary preparations or substances for human or veterinary use; training services; training services, namely, training in pharmaceutical, medicinal or sanitary preparations or substances and the use and operation of medical apparatus; education and training services relating to pharmaceutical, medicinal or sanitary preparations or substances for human or veterinary use; education and training services, namely, providing seminars, conferences and training classes in the fields of medicine, medical technology, pharmaceuticals, and healthcare and in the use and preparation of pharmaceutical, medicinal or sanitary preparations or substances for human or veterinary use; publication services; publication services, namely, publication of textbooks; publication services relating to pharmaceutical, medicinal or sanitary preparations or substances for human or veterinary use; publication services, namely, publication of printed matter in the fields of medicine, medical technology, pharmaceuticals, and healthcare and in the use and preparation of pharmaceutical, medicinal or sanitary preparations or substances for human or veterinary use; organisation and arrangement of lectures, seminars and symposiums; organisation and arrangement of lectures, seminars and symposiums for educational purposes; publication of electronic books, magazines, journals and web blogs; advice, consultancy and information for all the aforesaid services; Non-downloadable electronic publications in the nature of articles, papers, books, booklets, journals, magazines, newsletters, periodicals, pamphlets, brochures, manuals, leaflets, informational flyers, informational sheets and newsletters, instructional worksheets, product descriptions, all in the fields of medicine, medical technology, pharmaceuticals, and healthcare; advice and consultancy related to the aforesaid services.Class 041 for Education services, namely, providing seminars, conferences and training classes in the fields of medicine, medical technology, pharmaceuticals, and healthcare and in the use and preparation of pharmaceutical, medicinal or sanitary preparations or substances for human or veterinary use; training services, namely, training in pharmaceutical, medicinal or sanitary preparations or substances and the use and operation of medical apparatus; education and training services, namely, providing seminars, conferences and training classes in the fields of medicine, medical technology, pharmaceuticals, and healthcare and in the use and preparation of pharmaceutical, medicinal or sanitary preparations or substances for human or veterinary use; publication services, namely, publication of textbooks; publication services, namely, publication of printed matter in the fields of medicine, medical technology, pharmaceuticals, and healthcare and in the use and preparation of pharmaceutical, medicinal or sanitary preparations or substances for human or veterinary use; organisation and arrangement of lectures, seminars and symposiums for educational purposes; publication of electronic books, magazines, journals and web blogs; Non-downloadable electronic publications in the nature of articles, papers, books, booklets, journals, magazines, newsletters, periodicals, pamphlets, brochures, manuals, leaflets, informational flyers, informational sheets and newsletters, instructional worksheets, product descriptions, all in the fields of medicine, medical technology, pharmaceuticals, and healthcare; advice and consultancy related to the aforesaid services.
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:
Current: Class 042 for Scientific and technological services; scientific and technological research and development services; industrial analysis and research services; design and development of computer hardware and computer software; design and development of computer hardware and computer software to assist in in the determination and development of pharmaceuticals and medicines; science and technology services, including medical and pharmacological research services; engineering services; testing, authentication and quality control services; quality control of preparations and goods for medical, veterinary and nutritional purposes; chemical analysis and research; design and testing of new products; diagnostic testing and analysis; design and monitoring of clinical research and studies for the pharmaceutical and veterinary industries; virological research; biological and biochemical research; genetic testing and genetic fingerprinting; laboratory analysis and research; technical advisory services relating to healthcare; advice, consultancy and information for all the aforesaid services
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: Scientific and technological services; Scientific and technological services in the fields of medicine, medical technology, pharmaceuticals, and healthcare , diagnostic services for others in the fields of medicine, medical technology, pharmaceuticals, and healthcare and research related thereto; scientific and technological research and development services; scientific research and development services; industrial analysis and research services; technological research in the fields of medicine, medical technology, pharmaceuticals, and healthcare; technological development services, namely, development of new technology for others in the fields of medicine, medical technology, pharmaceuticals, and healthcare; design and development of computer hardware and computer software; science and technology services, including medical and pharmacological research services; design and development of computer hardware and computer software to assist in in the determination and development of pharmaceuticals and medicines; science and technology services, namely, medical and pharmaceutical research services; testing, authentication and quality control services; engineering services; product safety testing, authentication of materials and processes for medical, veterinary and nutritional purposes used in the fields of medicine, medical technology, pharmaceuticals, and healthcare and quality control for others; quality control of preparations and goods for medical, veterinary and nutritional purposes; design and testing of new products; chemical analysis and research; diagnostic testing and analysis; design and testing of new products for others; design and monitoring of clinical research and studies for the pharmaceutical and veterinary industries; diagnostic testing and analysis, namely, remote diagnosis of medical diagnostic imaging, clinical and biomedical equipment for determining the need for repair; virological research; design and monitoring of clinical research and studies for the pharmaceutical and veterinary industries, namely, conducting clinical trials for others; virological scientific research; genetic testing and genetic fingerprinting; biological and biochemical research; laboratory analysis and research; genetic testing for scientific research purposes; technical advisory services relating to healthcare; genetic fingerprinting, namely, genetic mapping for scientific purposes; advice, consultancy and information for all the aforesaid services; laboratory analysis in the fields of medicine, medical technology, pharmaceuticals, and healthcare; laboratory research in the fields of medicine, medical technology, pharmaceuticals, and healthcare; technical advisory services relating to medicine, medical technology, pharmaceuticals and healthcare; advice and consultancy related to the aforesaid services.Class 042 for Scientific and technological services in the fields of medicine, medical technology, pharmaceuticals, and healthcare , diagnostic services for others in the fields of medicine, medical technology, pharmaceuticals, and healthcare and research related thereto; scientific research and development services; technological research in the fields of medicine, medical technology, pharmaceuticals, and healthcare; technological development services, namely, development of new technology for others in the fields of medicine, medical technology, pharmaceuticals, and healthcare; design and development of computer hardware and computer software; design and development of computer hardware and computer software to assist in in the determination and development of pharmaceuticals and medicines; science and technology services, namely, medical and pharmaceutical research services; engineering services; product safety testing, authentication of materials and processes for medical, veterinary and nutritional purposes used in the fields of medicine, medical technology, pharmaceuticals, and healthcare and quality control for others; quality control of preparations and goods for medical, veterinary and nutritional purposes; chemical analysis and research; design and testing of new products for others; diagnostic testing and analysis, namely, remote diagnosis of medical diagnostic imaging, clinical and biomedical equipment for determining the need for repair; design and monitoring of clinical research and studies for the pharmaceutical and veterinary industries, namely, conducting clinical trials for others; virological scientific research; biological and biochemical research; genetic testing for scientific research purposes; genetic fingerprinting, namely, genetic mapping for scientific purposes; laboratory analysis in the fields of medicine, medical technology, pharmaceuticals, and healthcare; laboratory research in the fields of medicine, medical technology, pharmaceuticals, and healthcare; technical advisory services relating to medicine, medical technology, pharmaceuticals and healthcare; advice and consultancy related to the aforesaid services.
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:
Current: Class 044 for Medical services; veterinary services; hygienic and beauty care services for human beings or animals; human healthcare services; human healthcare services in the nature of medical services, dentistry, pharmaceutical services, opticians' services, mental health services; human hygiene and beauty care services; advice, consultancy and information for all the aforesaid services
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: Medical services; veterinary services; hygienic and beauty care services for human beings or animals; human healthcare services; human healthcare services in the nature of medical services, dentistry, pharmaceutical services, opticians' services, mental health services; human healthcare services in the nature of medical services, dentistry, pharmaceutical advice, opticians' services, mental health services; human hygiene and beauty care services; advice, consultancy and information for all the aforesaid services; genetic testing for medical purposes; advice and consultancy related to the aforesaid services.Class 044 for Medical services; veterinary services; hygienic and beauty care services for human beings or animals; human healthcare services; human healthcare services in the nature of medical services, dentistry, pharmaceutical advice, opticians' services, mental health services; human hygiene and beauty care services; genetic testing for medical purposes; advice and consultancy related to the aforesaid services.
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 for Downloadable electronic publications in the nature of articles, papers, books, booklets, journals, magazines, newsletters, periodicals, pamphlets, brochures, manuals, leaflets, informational flyers, informational sheets and newsletters, instructional worksheets, product descriptions, all in the fields of medicine, medical technology, pharmaceuticals, and healthcare.
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 019 for Packaging materials made from plastics, foil, paper or cardboard.
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.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Hikma Pharmaceuticals Public Limited Company a(n) public limited company (plc), having an address of
      1 New Burlington Place
      London, W1S2HR
      United Kingdom

Proposed: Hikma Pharmaceuticals Public Limited Company, public limited company (plc) legally organized under the laws of United Kingdom, having an address of
      1 New Burlington Place
      London, W1S2HR
      United Kingdom
      Email Address: docketing@brownrudnick.com

The owner's/holder's current attorney information: Mark S. Leonardo. Mark S. Leonardo of BROWN RUDNICK LLP, is located at

      ONE FINANCIAL CENTER
      BOSTON, Massachusetts 02111
      United States
The docket/reference number is 34570/3.
      The phone number is 617-856-8145.
      The fax number is 617-289-0504.
      The email address is ip@brownrudnick.com

The owner's/holder's proposed attorney information: Mark S. Leonardo. Mark S. Leonardo of BROWN RUDNICK LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      ONE FINANCIAL CENTER
      BOSTON, Massachusetts 02111
      United States
The docket/reference number is 34570/3.
      The phone number is 617-856-8145.
      The fax number is 617-289-0504.
      The email address is ip@brownrudnick.com

Mark S. Leonardo 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.Correspondence Information (current):
      MARK S. LEONARDO
      PRIMARY EMAIL FOR CORRESPONDENCE: ip@brownrudnick.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): mleonardo@brownrudnick.com

The docket/reference number is 34570/3.
Correspondence Information (proposed):
      Mark S. Leonardo
      PRIMARY EMAIL FOR CORRESPONDENCE: ip@brownrudnick.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): mleonardo@brownrudnick.com; cftergiotis@brownrudnick.com

The docket/reference number is 34570/3.

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).

FEE(S)
Fee(s) in the amount of $550 is being submitted.

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Mark S. Leonardo/      Date: 02/19/2020
Signatory's Name: Mark S. Leonardo
Signatory's Position: Attorney of Record, MA bar member
Signatory's Phone Number: 617-856-8145


Response Signature
Signature: /Mark S. Leonardo/     Date: 02/19/2020
Signatory's Name: Mark S. Leonardo
Signatory's Position: Attorney of Record, MA bar member

Signatory's Phone Number: 617-856-8145

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:    MARK S. LEONARDO
   BROWN RUDNICK LLP
   
   ONE FINANCIAL CENTER
   BOSTON, Massachusetts 02111
Mailing Address:    Mark S. Leonardo
   BROWN RUDNICK LLP
   ONE FINANCIAL CENTER
   BOSTON, Massachusetts 02111
        
RAM Sale Number: 88452719
RAM Accounting Date: 02/19/2020
        
Serial Number: 88452719
Internet Transmission Date: Wed Feb 19 14:28:48 ET 2020
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20200219142848587
507-88452719-710eba6946cd76de3c0205111a8
b62b5efdc3b60e78bc1f1815e76ce4977fd97e2-
DA-28480245-20200219141921185694