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. 88591646 TULA(Standard Characters, see http://uspto.report/TM/88591646/mark.png) has been amended as follows:

EVIDENCE
Evidence has been attached: Office Action response
Original PDF file:
evi_7611525543-2020042914 3713282951_._20200429_Res ponse_to_Trademark_Office _Action__Tula.403_.pdf
Converted PDF file(s) ( 3 pages) Evidence-1Evidence-2Evidence-3

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Computer software and hardware for use in the acquisition, capture, processing, presentation, transmission and storage of medical and physiological data; Wearable non-invasive medical monitoring device; Wearable activity trackers
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: Computer software and hardware for use in the acquisition, capture, processing, presentation, transmission and storage of medical and physiological data; Recorded computer software and hardware for use in the acquisition, capture, processing, presentation, transmission and storage of medical and physiological data sold as a unit; Wearable non-invasive medical monitoring device; Wearable non-invasive medical monitoring device in the nature of computer hardware and recorded software sold as a unit for use with medical patient monitoring equipment, for receiving, processing, transmitting, and displaying data; Wearable activity trackersClass 009 for Recorded computer software and hardware for use in the acquisition, capture, processing, presentation, transmission and storage of medical and physiological data sold as a unit; Wearable non-invasive medical monitoring device in the nature of computer hardware and recorded software sold as a unit for use with medical patient monitoring equipment, for receiving, processing, transmitting, and displaying data; Wearable activity trackers
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 device, namely, a device for measuring and monitoring glucose levels; Medical device, namely, a device for measuring and monitoring diabetes; Medical device, namely, a device for measuring and monitoring a metabolic syndrome; Medical devices, namely, medical sensors used to continuously monitor the concentration of glucose in the human body and accessories therefor, namely, receivers and sensor housings; Medical device, namely, a device for measuring and monitoring congestive heart failure; Medical device, namely, a device for measuring and monitoring hydration levels; Medical device, namely, a device for monitoring and monitoring hydration levels; Medical device, namely, a device for monitoring and monitoring chronic obstructive pulmonary disease; Medical device, namely, a device for monitoring and monitoring asthma
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 device, namely, a device for measuring and monitoring glucose levels; Medical device, namely, a device for measuring and monitoring diabetes; Medical device, namely, a device for measuring and monitoring a metabolic syndrome; Medical devices, namely, medical sensors used to continuously monitor the concentration of glucose in the human body and accessories therefor, namely, receivers and sensor housings; Medical device, namely, a device for measuring and monitoring congestive heart failure; Medical device, namely, a device for measuring and monitoring hydration levels; Medical device, namely, a device for monitoring and monitoring hydration levels; Medical device, namely, a device for monitoring and monitoring chronic obstructive pulmonary disease; Medical device, namely, a device for monitoring and monitoring asthma; Wearable non-invasive medical monitoring device in the nature of wearable monitors used to measure biometric data for medical useClass 010 for Medical device, namely, a device for measuring and monitoring glucose levels; Medical device, namely, a device for measuring and monitoring diabetes; Medical device, namely, a device for measuring and monitoring a metabolic syndrome; Medical devices, namely, medical sensors used to continuously monitor the concentration of glucose in the human body and accessories therefor, namely, receivers and sensor housings; Medical device, namely, a device for measuring and monitoring congestive heart failure; Medical device, namely, a device for measuring and monitoring hydration levels; Medical device, namely, a device for monitoring and monitoring hydration levels; Medical device, namely, a device for monitoring and monitoring chronic obstructive pulmonary disease; Medical device, namely, a device for monitoring and monitoring asthma; Wearable non-invasive medical monitoring device in the nature of wearable monitors used to measure biometric data for medical use
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following:

Current:
Class 035 for Data compiling, analyzing and processing services in the field of healthcare, and medical insurance; Database management in the field of 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.


Proposed:

Tracked Text Description: Data compiling, analyzing and processing services in the field of healthcare, and medical insurance; Database management in the field of healthcare; Database management, namely, business data compiling and analyzing in the field of healthcareClass 035 for Data compiling, analyzing and processing services in the field of healthcare, and medical insurance; Database management, namely, business data compiling and analyzing in the field of 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 041 for Educational services, namely, providing coaching programs and training in the field of management and measurement of glucose levels, and the diagnosis, management and treatment of diabetes; Educational services, namely, providing coaching programs and training in connection with the acquisition, capture, processing, presentation, transmission and storage of medical and physiological data; Developing and distributing educational program materials in connection with the aforementioned 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: Educational services, namely, providing coaching programs and training in the field of management and measurement of glucose levels, and the diagnosis, management and treatment of diabetes; Educational services, namely, providing coaching programs and training in connection with the acquisition, capture, processing, presentation, transmission and storage of medical and physiological data; Developing and distributing educational program materials in connection with the aforementioned services; Developing and distributing educational program course materials in connection with the aforementioned servicesClass 041 for Educational services, namely, providing coaching programs and training in the field of management and measurement of glucose levels, and the diagnosis, management and treatment of diabetes; Educational services, namely, providing coaching programs and training in connection with the acquisition, capture, processing, presentation, transmission and storage of medical and physiological data; Developing and distributing educational program course materials in connection with the aforementioned 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 Remote monitoring of data indicative of the health or condition of an individual or group of individuals for medical conditions and treatment purposes; Medical assistance services provided via telecommunication and global computer networks for individuals with health problems through the use of wearable medical devices with automated alert and monitoring capacity; Medical services, namely, providing medical information, medical data, medical counseling, medical patient and physician support, and medical consulting services in the field of blood glucose level and diabetes monitoring and treatment systems; Medical data services in connection with the aforementioned 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: Remote monitoring of data indicative of the health or condition of an individual or group of individuals for medical conditions and treatment purposes; Medical assistance services provided via telecommunication and global computer networks for individuals with health problems through the use of wearable medical devices with automated alert and monitoring capacity; Medical services, namely, providing medical information, medical data, medical counseling, medical patient and physician support, and medical consulting services in the field of blood glucose level and diabetes monitoring and treatment systems; Medical data services in connection with the aforementioned services; Medical data services in the nature of maintaining files and records concerning the medical condition of individuals in connection with the aforementioned servicesClass 044 for Remote monitoring of data indicative of the health or condition of an individual or group of individuals for medical conditions and treatment purposes; Medical assistance services provided via telecommunication and global computer networks for individuals with health problems through the use of wearable medical devices with automated alert and monitoring capacity; Medical services, namely, providing medical information, medical data, medical counseling, medical patient and physician support, and medical consulting services in the field of blood glucose level and diabetes monitoring and treatment systems; Medical data services in the nature of maintaining files and records concerning the medical condition of individuals in connection with the aforementioned 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.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Tula Health, Inc., a corporation of Utah, having an address of
      280 North Kays Drive, Suite 200
      Kaysville, Utah 84037
      United States

Proposed: Tula Health, Inc., a corporation of Utah, having an address of
      280 North Kays Drive, Suite 200
      Kaysville, Utah 84037
      United States
      Email Address: XXXX

ADDITIONAL STATEMENTS
Miscellaneous Statement
The Office action states, "applicant must disclaim the wording 'HEALTH' because it is not inherently distinctive." (Office action, section entitled DISCLAIMER REQUIRED) However, the Applicant believes this requirement is erroneous. The applied-for mark does not include the word "Health." Rather the applied-for mark is "Tula." Because the applied-for mark does not include the word for which the Office action requires disclaimer, the requirement cannot be satisfied and is thus void. Accordingly, the Applicant respectfully requests the disclaimer requirement be withdrawn.

Correspondence Information (current):
      DEVIN MILLER
      PRIMARY EMAIL FOR CORRESPONDENCE: devin@milleripl.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): sara@milleripl.com

The docket/reference number is Tula.403.
Correspondence Information (proposed):
      Devin Miller
      PRIMARY EMAIL FOR CORRESPONDENCE: devin@milleripl.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): sara@milleripl.com

The docket/reference number is Tula.403.

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: /Devin Miller/     Date: 04/29/2020
Signatory's Name: Devin Miller
Signatory's Position: Attorney of record, Utah Bar member

Signatory's Phone Number: (801) 829-8446

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:    DEVIN MILLER
   MILLER IP LAW
   
   4030 W 5800 N
   MORGAN, Utah 84050
Mailing Address:    Devin Miller
   MILLER IP LAW
   4030 W 5800 N
   MORGAN, Utah 84050
        
Serial Number: 88591646
Internet Transmission Date: Thu Apr 30 12:12:18 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2020043012121840
8146-88591646-710982f2632176318cf6eea8ba
7157d999b383c4c43985074dc728685d65443d3c
-N/A-N/A-20200429143713282951