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. 88491735 1 PATIENT AT A TIME(Standard Characters, see http://uspto.report/TM/88491735/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 009 for Computer hardware; computer network interface devices; computer network interface devices, namely, interface units for interfacing resistance sensors with mobile communication devices; computer programs for responding to a remote sensor for indicating the level of fullness of a container; computer network interface devices, namely, interface units for measuring the level of fullness of stoma bags and urine bags, and for transmitting the measured level to a remote location; computer hardware and software for use in ostomy and stoma care; computer hardware and software for use in body fluid collection and analysis; computer software; computer software for monitoring, tracking, accessing, collecting, analyzing, recording and reporting medical and health data; downloadable software in the nature of a mobile application for monitoring, tracking, accessing, collecting, analyzing, recording and reporting medical and health data; computer software for patient care management; downloadable software in the nature of a mobile application for patient care management
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ European Union Trademark - EUTM application number 018005622 filed 12/31/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Computer hardware; computer network interface devices; computer network interface devices, namely, interface units for interfacing resistance sensors with mobile communication devices; computer programs for responding to a remote sensor for indicating the level of fullness of a container; computer programs, recorded, for responding to a remote sensor for indicating the level of fullness of a container; computer network interface devices, namely, interface units for measuring the level of fullness of stoma bags and urine bags, and for transmitting the measured level to a remote location; computer hardware and software for use in ostomy and stoma care; computer hardware and downloadable software, namely, for patient care management for use in ostomy and stoma care; computer hardware and software for use in body fluid collection and analysis; computer hardware and downloadable software for use in body fluid collection and analysis; computer software; downloadable computer software, namely, for health data management; computer software for monitoring, tracking, accessing, collecting, analyzing, recording and reporting medical and health data; downloadable computer software for monitoring, tracking, accessing, collecting, analyzing, recording and reporting medical and health data; downloadable software in the nature of a mobile application for monitoring, tracking, accessing, collecting, analyzing, recording and reporting medical and health data; computer software for patient care management; downloadable computer software for patient care management; downloadable software in the nature of a mobile application for patient care managementClass 009 for Computer hardware; computer network interface devices; computer network interface devices, namely, interface units for interfacing resistance sensors with mobile communication devices; computer programs, recorded, for responding to a remote sensor for indicating the level of fullness of a container; computer network interface devices, namely, interface units for measuring the level of fullness of stoma bags and urine bags, and for transmitting the measured level to a remote location; computer hardware and downloadable software, namely, for patient care management for use in ostomy and stoma care; computer hardware and downloadable software for use in body fluid collection and analysis; downloadable computer software, namely, for health data management; downloadable computer software for monitoring, tracking, accessing, collecting, analyzing, recording and reporting medical and health data; downloadable software in the nature of a mobile application for monitoring, tracking, accessing, collecting, analyzing, recording and reporting medical and health data; downloadable computer software for patient care management; downloadable software in the nature of a mobile application for patient care management
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ European Union Trademark - EUTM application number 018005622 filed 12/31/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Applicant proposes to amend the following:
Current: Class 010 for Medical aids for use in stoma care, namely, stoma bags, urine bags, and sensors for stoma bags and urine bags; stoma bags; urine bags; catheter bags; drainage bags and containers for medical use; bags for use with intravenous drips; bags for use with naso gastric devices; sensors for use with all the aforesaid bags and containers to measure the level of fullness for medical purposes; medical devices, instruments and apparatus for ostomy and stoma care; medical devices, instruments and apparatus; medical specimen collection device; medical devices, instruments and apparatus for the collection and analysis of body fluids
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ European Union Trademark - EUTM application number 018005622 filed 12/31/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Medical aids for use in stoma care, namely, stoma bags, urine bags, and sensors for stoma bags and urine bags; Medical aids for use in stoma care, namely, stoma bags, urine bags, and patient monitoring sensors for stoma bags and urine bags; stoma bags; urine bags; catheter bags; catheter bags for medical use; drainage bags and containers for medical use; drainage bags and containers for concentrates and solutions in solid or liquid form for medical use; bags for use with intravenous drips; sensors for use with all the aforesaid bags and containers to measure the level of fullness for medical purposes; bags for use with naso gastric devices; medical devices, instruments and apparatus, namely, for use in treating or diagnosing ostomy and stoma conditions, for ostomy and stoma care; medical devices, instruments and apparatus, namely, for use in treating or diagnosing chronic conditions; medical devices, instruments and apparatus for ostomy and stoma care; medical specimen collection device in the nature of bags and cups for the collection of urine or feces; medical devices, instruments and apparatus; medical devices, instruments and apparatus for the collection and analysis of body fluids; medical specimen collection deviceClass 010 for Medical aids for use in stoma care, namely, stoma bags, urine bags, and patient monitoring sensors for stoma bags and urine bags; stoma bags; urine bags; catheter bags for medical use; drainage bags and containers for concentrates and solutions in solid or liquid form for medical use; sensors for use with all the aforesaid bags and containers to measure the level of fullness for medical purposes; medical devices, instruments and apparatus, namely, for use in treating or diagnosing ostomy and stoma conditions, for ostomy and stoma care; medical devices, instruments and apparatus, namely, for use in treating or diagnosing chronic conditions; medical specimen collection device in the nature of bags and cups for the collection of urine or feces; medical devices, instruments and apparatus for the collection and analysis of body fluids
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ European Union Trademark - EUTM application number 018005622 filed 12/31/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Applicant proposes to amend the following:
Current: Class 042 for Software as a service services; software as a service services featuring software for use in ostomy and stoma care; software as a service services featuring software for use in body fluid collection and analysis; software as a service services featuring software for monitoring, tracking, accessing, collecting, analyzing, recording and reporting medical and health data; software as a service services featuring software for patient care management; cloud computing services; cloud computing featuring software for use in monitoring, tracking, accessing, collecting, analyzing, recording and reporting medical and health data; cloud computing featuring software for patient care management; cloud computing featuring software for use in ostomy and stoma care; cloud computing featuring software for use in body fluid collection and analysis; advisory services for patients, hospital staff, healthcare providers, and physicians, namely, information, instructions and technical assistance for the use of software
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ European Union Trademark - EUTM application number 018005622 filed 12/31/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Software as a service services; Software as a service services featuring software for patient care data management for use in ostomy and stoma care; software as a service services featuring software for use in ostomy and stoma care; software as a service services featuring software for use in body fluid collection and analysis; software as a service services featuring software for monitoring, tracking, accessing, collecting, analyzing, recording and reporting medical and health data; software as a service services featuring software for patient care management; cloud computing services for use in medical and healthcare services; cloud computing services; cloud computing featuring software for use in monitoring, tracking, accessing, collecting, analyzing, recording and reporting medical and health data; cloud computing featuring software for patient care management; cloud computing featuring software for use in ostomy and stoma care, namely, for patient care management; cloud computing featuring software for use in ostomy and stoma care; cloud computing featuring software for use in body fluid collection and analysis; advisory services for hospital staff, healthcare providers, and physicians, namely, technical assistance for the use of software in the nature of troubleshooting of computer software problems; advisory services for patients, hospital staff, healthcare providers, and physicians, namely, information, instructions and technical assistance for the use of software; advisory services relating to medical apparatus and instruments, namely, technology research in the field of medical instrumentsClass 042 for Software as a service services featuring software for patient care data management for use in ostomy and stoma care; software as a service services featuring software for use in body fluid collection and analysis; software as a service services featuring software for monitoring, tracking, accessing, collecting, analyzing, recording and reporting medical and health data; software as a service services featuring software for patient care management; cloud computing services for use in medical and healthcare services; cloud computing featuring software for use in monitoring, tracking, accessing, collecting, analyzing, recording and reporting medical and health data; cloud computing featuring software for patient care management; cloud computing featuring software for use in ostomy and stoma care, namely, for patient care management; cloud computing featuring software for use in body fluid collection and analysis; advisory services for hospital staff, healthcare providers, and physicians, namely, technical assistance for the use of software in the nature of troubleshooting of computer software problems; advisory services relating to medical apparatus and instruments, namely, technology research in the field of medical instruments
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ European Union Trademark - EUTM application number 018005622 filed 12/31/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Applicant proposes to amend the following:
Current: Class 044 for Healthcare; medical services; providing healthcare and medical information; advisory services relating to medical apparatus and instruments, namely, providing patients, hospital staff, healthcare providers, and physicians with information, instructions, and technical assistance for the use of ostomy and stoma care devices; advisory services relating to medical apparatus and instruments, namely, providing patients, hospital staff, healthcare providers and physicians with information, instructions, and technical assistance for the use of body fluid collection and analysis devices; remote monitoring of data indicative of the health or condition of an individual or group of individuals for medical diagnosis and treatment purposes; medical testing, monitoring and reporting 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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ European Union Trademark - EUTM application number 018005622 filed 12/31/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Healthcare; medical services; providing healthcare and medical information; providing healthcare information and medical information; advisory services relating to medical apparatus and instruments, namely, providing patients, hospital staff, healthcare providers, and physicians with information, instructions, and technical assistance for the use of ostomy and stoma care devices; advisory services relating to medical apparatus and instruments, namely, providing information, advice and data on medical imaging from ostomy and stoma care devices; advisory services relating to medical apparatus and instruments, namely, providing patients, hospital staff, healthcare providers and physicians with information, instructions, and technical assistance for the use of body fluid collection and analysis devices; providing patients, hospital staff, healthcare providers and physicians with information, namely, information for the proper treatment of chronic conditions; medical advisory services for patients, hospital staff, healthcare providers, and physicians with information and instructions for ostomy and stoma treatment; medical testing, monitoring and reporting services; advisory services relating to medical apparatus and instruments, namely, providing medical advisory services for the use of body fluid collection and analysis devices; providing patients, hospital staff, healthcare providers and physicians with information, namely, providing health care information by telephone and the internet; medical advisory services for patients, hospital staff, healthcare providers, and physicians for collecting body fluid; remote monitoring of data indicative of the health or condition of an individual or group of individuals for medical diagnosis and treatment purposes; medical diagnostic testing, monitoring and reporting servicesClass 044 for Healthcare; medical services; providing healthcare information and medical information; advisory services relating to medical apparatus and instruments, namely, providing information, advice and data on medical imaging from ostomy and stoma care devices; providing patients, hospital staff, healthcare providers and physicians with information, namely, information for the proper treatment of chronic conditions; medical advisory services for patients, hospital staff, healthcare providers, and physicians with information and instructions for ostomy and stoma treatment; advisory services relating to medical apparatus and instruments, namely, providing medical advisory services for the use of body fluid collection and analysis devices; providing patients, hospital staff, healthcare providers and physicians with information, namely, providing health care information by telephone and the internet; medical advisory services for patients, hospital staff, healthcare providers, and physicians for collecting body fluid; remote monitoring of data indicative of the health or condition of an individual or group of individuals for medical diagnosis and treatment purposes; medical diagnostic testing, monitoring and reporting 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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ European Union Trademark - EUTM application number 018005622 filed 12/31/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: 11 Health and Technologies Limited a(n) limited company (ltd.), legally organized under the laws of United Kingdom, having an address of

            Kinetic Business Centre      Theobald Street, Borehamwood
      Hertfordshire, WD64PJ
      United Kingdom

Proposed: 11 Health and Technologies Limited, limited company (ltd.) legally organized under the laws of United Kingdom, having an address of
      Kinetic Business Centre
      Theobald Street, Borehamwood
      Hertfordshire, WD64PJ
      United Kingdom
      Email Address: oliver.braunwalder@11health.com
Correspondence Information (current):
      Deborah A. Gubernick
      PRIMARY EMAIL FOR CORRESPONDENCE: dgubernick@swlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): ipdocket@swlaw.com
Correspondence Information (proposed):
      Deborah A. Gubernick
      PRIMARY EMAIL FOR CORRESPONDENCE: dgubernick@swlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): ipdocket@swlaw.com; aezzell@swlaw.com

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).

ADDITIONAL STATEMENTS
Miscellaneous Statement
The Examiner has cited a likelihood of confusion based on a prior registrations and prior pending applications. Applicant requests suspension of this application because providing responses to the 2(d) refusal before determinations have been made on the cited pending marks could prejudice Applicant. Applicant must have more information regarding each of the marks and their outcomes before being required to formulate arguments in support of the subject Application. Therefore, kindly suspend Application Serial Number 88491735. All other issues will be addressed when the suspension is lifted. Any questions regarding the foregoing should be addressed to Applicant's attorney of record.


SIGNATURE(S)
Response Signature
Signature: /dag/     Date: 03/25/2020
Signatory's Name: Deborah A. Gubernick
Signatory's Position: Attorney of Record, California Bar Member

Signatory's Phone Number: 714-427-7000

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:    Deborah A. Gubernick
   Snell & Wilmer, LLP
   
   600 Anton Boulevard, Suite 1400
   Costa Mesa, California 92626
Mailing Address:    Deborah A. Gubernick
   Snell & Wilmer, LLP
   600 Anton Boulevard, Suite 1400
   Costa Mesa, California 92626
        
Serial Number: 88491735
Internet Transmission Date: Wed Mar 25 15:53:40 ET 2020
TEAS Stamp: USPTO/ROA-XXXX:XXXX:XXXX:XXXX:XXXX:XXXX:
XXX:XXXX-20200325155340918454-88491735-7
10bb55593a7b494483b5c75c157249df09709a84
6125de5890b34c974c36becb-N/A-N/A-2020032
5150705528919