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. 88485657 HIP(Standard Characters, see http://uspto.report/TM/88485657/mark.png) has been amended as follows:

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

Please see the actual argument text attached within the Evidence section.

EVIDENCE
Evidence in the nature of Arguments, Exhibit A-Online Definition for the Term Platform, Exhibit B-Registration and Application Records for Cited Marks, Exhibit C-Definition by Acronymfinder for HIP has been attached.
Original PDF file:
evi_144121161234-20200312121419628588_._ARGUMENTS.pdf
Converted PDF file(s) ( 7 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Original PDF file:
evi_144121161234-20200312121419628588_._EXHIBIT_A-ONLINE_DEFINITION_FOR_THE_TERM_PLATFORM.pdf
Converted PDF file(s) ( 11 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Original PDF file:
evi_144121161234-20200312121419628588_._HIBIT_B-REGISTRATION_AND_APPLICATION_RECORDS_FOR_CITED_MARKS.pdf
Converted PDF file(s) ( 14 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Original PDF file:
evi_144121161234-20200312141240353954_._EXHIBIT_C-DEFINITION_BY_ACRONYMFINDER_FOR_HIP.pdf
Converted PDF file(s) ( 5 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 035 for Business management consulting services; business strategic planning services; business consulting services in the fields of management consulting specializing in strategic innovation and growth in the medical and healthcare industries; business consulting services, namely, providing assistance in development of business strategies, industry expertise and creative ideation in the medical and healthcare industries; business management consulting, strategic planning and business advisory services provided to the medical and healthcare industries; providing information in the fields of business innovation process, business management, consulting and advisory services, strategic planning and business opportunities in the medical and healthcare industries
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: Business management consulting services; business strategic planning services; business consulting services in the fields of management consulting specializing in strategic innovation and growth in the medical and healthcare industries; business consulting services, namely, providing assistance in development of business strategies, industry expertise and creative ideation in the medical and healthcare industries; business management consulting, strategic planning and business advisory services provided to the medical and healthcare industries; providing information in the fields of business innovation process, business management, consulting and advisory services, strategic planning and business opportunities in the medical and healthcare industries; providing business information in the fields of business innovation process, business management, consulting and advisory services, strategic planning and business opportunities in the medical and healthcare industriesClass 035 for Business management consulting services; business strategic planning services; business consulting services in the fields of management consulting specializing in strategic innovation and growth in the medical and healthcare industries; business consulting services, namely, providing assistance in development of business strategies, industry expertise and creative ideation in the medical and healthcare industries; business management consulting, strategic planning and business advisory services provided to the medical and healthcare industries; providing business information in the fields of business innovation process, business management, consulting and advisory services, strategic planning and business opportunities in the medical and healthcare industries
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: Health Care Service Corporation a(n) Mutual Legal Reserve Company, legally organized under the laws of Illinois, having an address of
      300 East Randolph
      Chicago, Illinois 60601
      United States

Proposed: Health Care Service Corporation, Mutual Legal Reserve Company legally organized under the laws of Illinois, having an address of
      300 East Randolph
      Chicago, Illinois 60601
      United States
      Email Address: IP_Branding_Team@bcbtx.com

The owner's/holder's current attorney information: Jennifer M. Mikulina. Jennifer M. Mikulina of MCDERMOTT WILL & EMERY LLP, is located at

      444 WEST LAKE STREET, SUITE 4000
      CHICAGO, Illinois 60606-0029
      United States
      The phone number is 312-372-2000.
      The fax number is 312-984-7700.
      The email address is ipdocketmwe@mwe.com

The owner's/holder's proposed attorney information: Jennifer M. Mikulina. Other appointed attorneys are all other attorneys. Jennifer M. Mikulina of MCDERMOTT WILL & EMERY LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      444 WEST LAKE STREET, SUITE 4000
      CHICAGO, Illinois 60606-0029
      United States
The docket/reference number is 094883-0266.
      The phone number is 312-372-2000.
      The fax number is 312-984-7700.
      The email address is ipdocketmwe@mwe.com

Jennifer M. Mikulina 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):
      JENNIFER M. MIKULINA
      PRIMARY EMAIL FOR CORRESPONDENCE: ipdocketmwe@mwe.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): jmikulina@mwe.com; zbeal@mwe.com; ipdocketchicago@mwe.com
Correspondence Information (proposed):
      Jennifer M. Mikulina
      PRIMARY EMAIL FOR CORRESPONDENCE: ipdocketmwe@mwe.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): jmikulina@mwe.com; zbeal@mwe.com; ipdocketchicago@mwe.com

The docket/reference number is 094883-0266.

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).

SIGNATURE(S)
Response Signature
Signature: /Eleanor Atkins/     Date: 03/12/2020
Signatory's Name: Eleanor Atkins
Signatory's Position: Attorney of Record, DC Bar Member

Signatory's Phone Number: 312-372-2000

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:    JENNIFER M. MIKULINA
   MCDERMOTT WILL & EMERY LLP
   
   444 WEST LAKE STREET, SUITE 4000
   CHICAGO, Illinois 60606-0029
Mailing Address:    Jennifer M. Mikulina
   MCDERMOTT WILL & EMERY LLP
   444 WEST LAKE STREET, SUITE 4000
   CHICAGO, Illinois 60606-0029
        
Serial Number: 88485657
Internet Transmission Date: Thu Mar 12 16:04:55 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20200312160455
187507-88485657-710fa174bef821f97f9031ca
4a04c729ed85d284139b236659fe1d75615695f-
N/A-N/A-20200312141240353954