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. 88604250 BOFORE(Standard Characters, see http://uspto.report/TM/88604250/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 005 for Pharmaceutical preparations, substances and compositions; Biological and biochemical drug and Cultures for medical use; Pharmaceutical active substances; Pharmaceutical components and Ingredients
Original Filing Basis:
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[ Benelux application number 1400975 filed 08/21/2019]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Benelux registration number 1400975 registered 08/22/2019 with a renewal date of __________ and an expiration date of 08/21/2029 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Pharmaceutical preparations, substances and compositions; Pharmaceutical preparations, substances and compositions, namely, medical diagnostic reagents in the nature of antibody-drug conjugates, immuno-oncology compounds in the nature of medicinal preparations for the treatment of infectious diseases and for use in oncology, and compounds for auto-immune diseases, namely, pharmaceutical preparations for the treatment of immune system related diseases and disorders; Biological and biochemical drug and Cultures for medical use; Biological and biochemical drug and cultures for medical use, namely, biological preparations for the treatment of cancer, cultures of microorganisms for medical use, and biological tissue cultures for medical purposes; Pharmaceutical active substances; Pharmaceutical active substances, namely, drug delivery agents in the form of capsules that provide controlled release of the active ingredients for a wide variety of pharmaceuticals; Pharmaceutical components and Ingredients; Pharmaceutical components and ingredients, namely, drug delivery agents in the form of powders that provide controlled release of the active ingredients for a wide variety of pharmaceuticalsClass 005 for Pharmaceutical preparations, substances and compositions, namely, medical diagnostic reagents in the nature of antibody-drug conjugates, immuno-oncology compounds in the nature of medicinal preparations for the treatment of infectious diseases and for use in oncology, and compounds for auto-immune diseases, namely, pharmaceutical preparations for the treatment of immune system related diseases and disorders; Biological and biochemical drug and cultures for medical use, namely, biological preparations for the treatment of cancer, cultures of microorganisms for medical use, and biological tissue cultures for medical purposes; Pharmaceutical active substances, namely, drug delivery agents in the form of capsules that provide controlled release of the active ingredients for a wide variety of pharmaceuticals; Pharmaceutical components and ingredients, namely, drug delivery agents in the form of powders that provide controlled release of the active ingredients for a wide variety of pharmaceuticals
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 [ Benelux application number 1400975 filed 08/21/2019]. 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.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Benelux registration number 1400975 registered 08/22/2019 with a renewal date of __________ and an expiration date of 08/21/2029 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 010 for Surgical and medical devices, apparatus and instruments; Orthopedic articles; Injection apparatus for medical purposes
Original Filing Basis:
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[ Benelux application number 1400975 filed 08/21/2019]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Benelux registration number 1400975 registered 08/22/2019 with a renewal date of __________ and an expiration date of 08/21/2029 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Surgical and medical devices, apparatus and instruments; Surgical and medical devices, apparatus and instruments, namely, surgical instruments and apparatus, surgical devices and instruments, surgical apparatus and instruments, medical instruments for cutting tissue, and medical instrument for performing biopsies, medical fluid injectors, injection devices for pharmaceuticals, syringes for medical purposes, disposable syringes for medical purposes; Orthopedic articles; Orthopedic articles, orthopedic walkers, orthopedic supports, orthopedic braces and orthopedic cushions; Injection apparatus for medical purposes; injection apparatus for medical purposes, namely, injection needles and injection instruments with needlesClass 010 for Surgical and medical devices, apparatus and instruments, namely, surgical instruments and apparatus, surgical devices and instruments, surgical apparatus and instruments, medical instruments for cutting tissue, and medical instrument for performing biopsies, medical fluid injectors, injection devices for pharmaceuticals, syringes for medical purposes, disposable syringes for medical purposes; Orthopedic articles, orthopedic walkers, orthopedic supports, orthopedic braces and orthopedic cushions; injection apparatus for medical purposes, namely, injection needles and injection instruments with needles
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 [ Benelux application number 1400975 filed 08/21/2019]. 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.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Benelux registration number 1400975 registered 08/22/2019 with a renewal date of __________ and an expiration date of 08/21/2029 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Office functions relating to the registration of pharmaceutical preparations and components and Pharmaceutical drugs; Office functions relating to obtaining pharmaceutical registrations and compiling pharmaceutical registration files; Business mediation in the purchase, sale and licensing of pharmaceutical registrations and pharmaceutical registration files
Original Filing Basis:
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[ Benelux application number 1400975 filed 08/21/2019]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Benelux registration number 1400975 registered 08/22/2019 with a renewal date of __________ and an expiration date of 08/21/2029 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Office functions relating to the registration of pharmaceutical preparations and components and Pharmaceutical drugs; Providing office functions relating to the registration of pharmaceutical preparations and components and pharmaceutical drugs; Office functions relating to obtaining pharmaceutical registrations and compiling pharmaceutical registration files; Providing office functions relating to obtaining pharmaceutical registrations and compiling pharmaceutical registration files; Business mediation in the purchase, sale and licensing of pharmaceutical registrations and pharmaceutical registration files; Mediation of trade business for third parties, namely, business mediation in the purchase, sale and licensing of pharmaceutical registrations and pharmaceutical registration filesClass 035 for Providing office functions relating to the registration of pharmaceutical preparations and components and pharmaceutical drugs; Providing office functions relating to obtaining pharmaceutical registrations and compiling pharmaceutical registration files; Mediation of trade business for third parties, namely, business mediation in the purchase, sale and licensing of pharmaceutical registrations and pharmaceutical registration files
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 [ Benelux application number 1400975 filed 08/21/2019]. 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.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Benelux registration number 1400975 registered 08/22/2019 with a renewal date of __________ and an expiration date of 08/21/2029 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Scientific and technological services and research relating thereto; Scientific and technological services relating to obtaining pharmaceutical registrations and compiling pharmaceutical registration files; Pharmaceutical research services and Consultancy in this field; Biomedical research services and Consultancy in this field; Medical research and Consultancy in this field; Chemistry and biology laboratories; Laboratory (Scientific) services; Development of pharmaceutical products and Ingredients; Information relating to medical and scientific research in the field of pharmaceutical preparations; Providing information on the results of clinical trials for pharmaceutical preparations; Quality control of products for the purpose of certification; Laboratory research and laboratory analysis; Research and design for the pharmaceutical industry; Research and development for others; Drug discovery; Testing in the context of quality control; Conducting clinical trials for pharmaceutical preparations; Conducting quality control of pharmaceutical preparations; providing information and Data relating to pharmaceutical, biopharmaceutical and Medical research and developments
Original Filing Basis:
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[ Benelux application number 1400975 filed 08/21/2019]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Benelux registration number 1400975 registered 08/22/2019 with a renewal date of __________ and an expiration date of 08/21/2029 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Scientific and technological services and research relating thereto; Scientific and technological services and research relating thereto, namely, , scientific research, analysis and testing in the fields of antibody-drug conjugates, immuno-oncology compounds and compounds for auto-immune diseases and scientific research related thereto; Scientific and technological services relating to obtaining pharmaceutical registrations and compiling pharmaceutical registration files; Scientific and technological services relating to obtaining pharmaceutical registrations and compiling pharmaceutical registration files, namely, scientific research in the field of pharmaceuticals for pharmaceutical registration purposes; Pharmaceutical research services and consultancy in this field; Biomedical research services and consultancy in this field; Medical research and consultancy in this field; Chemistry and biology laboratories; Chemistry and biology laboratories, namely, laboratory research services relating to pharmaceuticals; Laboratory (Scientific) services; Laboratory services, namely, laboratory research services relating to pharmaceuticals; Development of pharmaceutical products and Ingredients; Information relating to medical and scientific research in the field of pharmaceutical preparations; Providing information on the results of clinical trials for pharmaceutical preparations; Quality control of products for the purpose of certification; Quality control of products for others for the purpose of certification; Laboratory research and laboratory analysis; Laboratory research services relating to pharmaceuticals and laboratory analysis services relating to pharmaceuticals; Research and design for the pharmaceutical industry; Research and design for the pharmaceutical industry, namely, pharmaceutical research and development; Research and development for others; Research and development for others in the pharmaceutical and biotechnology fields; Drug discovery; Drug discovery services; Testing in the context of quality control; Quality control for others, namely, testing in the context of quality control; Conducting clinical trials for pharmaceutical preparations; Conducting clinical trials for others for pharmaceutical preparations; Conducting quality control of pharmaceutical preparations; Quality control for others, namely, conducting quality control of pharmaceutical preparations; providing information and data relating to pharmaceutical, biopharmaceutical and medical research and developmentsClass 042 for Scientific and technological services and research relating thereto, namely, , scientific research, analysis and testing in the fields of antibody-drug conjugates, immuno-oncology compounds and compounds for auto-immune diseases and scientific research related thereto; Scientific and technological services relating to obtaining pharmaceutical registrations and compiling pharmaceutical registration files, namely, scientific research in the field of pharmaceuticals for pharmaceutical registration purposes; Pharmaceutical research services and consultancy in this field; Biomedical research services and consultancy in this field; Medical research and consultancy in this field; Chemistry and biology laboratories, namely, laboratory research services relating to pharmaceuticals; Laboratory services, namely, laboratory research services relating to pharmaceuticals; Development of pharmaceutical products and Ingredients; Information relating to medical and scientific research in the field of pharmaceutical preparations; Providing information on the results of clinical trials for pharmaceutical preparations; Quality control of products for others for the purpose of certification; Laboratory research services relating to pharmaceuticals and laboratory analysis services relating to pharmaceuticals; Research and design for the pharmaceutical industry, namely, pharmaceutical research and development; Research and development for others in the pharmaceutical and biotechnology fields; Drug discovery services; Quality control for others, namely, testing in the context of quality control; Conducting clinical trials for others for pharmaceutical preparations; Quality control for others, namely, conducting quality control of pharmaceutical preparations; providing information and data relating to pharmaceutical, biopharmaceutical and medical research and developments
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 [ Benelux application number 1400975 filed 08/21/2019]. 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.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Benelux registration number 1400975 registered 08/22/2019 with a renewal date of __________ and an expiration date of 08/21/2029 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 045 for Legal services relating to obtaining pharmaceutical registrations and compiling pharmaceutical registration files; Management of industrial property and copyright by means of license agreements (legal services); Licensing of intellectual property; Management of industrial property and copyright by issuing licenses to others (legal services); Legal extensions relating to the retention of intellectual property, for others; Legal advice in the field of intellectual property
Original Filing Basis:
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[ Benelux application number 1400975 filed 08/21/2019]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Benelux registration number 1400975 registered 08/22/2019 with a renewal date of __________ and an expiration date of 08/21/2029 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Legal services relating to obtaining pharmaceutical registrations and compiling pharmaceutical registration files; Management of industrial property and copyright by means of license agreements (legal services); legal services, namely, management of industrial property and copyright by means of license agreements; Licensing of intellectual property; Management of industrial property and copyright by issuing licenses to others (legal services); legal services, namely, management of industrial property and copyright by issuing licenses to others; Legal extensions relating to the retention of intellectual property, for others; legal services, namely, legal extensions relating to the retention of intellectual property, for others; Legal advice in the field of intellectual propertyClass 045 for Legal services relating to obtaining pharmaceutical registrations and compiling pharmaceutical registration files; legal services, namely, management of industrial property and copyright by means of license agreements; Licensing of intellectual property; legal services, namely, management of industrial property and copyright by issuing licenses to others; legal services, namely, legal extensions relating to the retention of intellectual property, for others; Legal advice in the field of intellectual property
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 [ Benelux application number 1400975 filed 08/21/2019]. 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.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Benelux registration number 1400975 registered 08/22/2019 with a renewal date of __________ and an expiration date of 08/21/2029 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

The applicant's current correspondence information: E. ANTHONY FIGG. E. ANTHONY FIGG of ROTHWELL, FIGG, ERNST & MANBECK, PC, is located at

      SUITE 800
      607 14TH STREET NW
      WASHINGTON, District of Columbia 20005
      US
The docket/reference number is 3599-158.

The fax number is 202-783-6031.

The email address is PTO-TM-Email@rfem.com

The applicants proposed correspondence information: E. ANTHONY FIGG. E. ANTHONY FIGG of ROTHWELL, FIGG, ERNST & MANBECK, PC, is located at

      SUITE 800
      607 14TH STREET NW
      WASHINGTON, District of Columbia 20005
      United States
The docket/reference number is 4581-158.

The phone number is 202-783-6040.

The fax number is 202-783-6031.

The email address is PTO-TM-Email@rfem.com

ADDITIONAL STATEMENTS
Significance of wording, letter(s), or numeral(s)
BOFORE appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as used in connection with the goods/services/collective membership organization listed in the application, or any geographical significance. The word(s) BOFORE has no meaning in a foreign language.


Miscellaneous Statement
In addition, in response to the examining attorney's inquiry, BOFORE has no meaning in the context of Applicant's goods and services


SIGNATURE(S)
Response Signature
Signature: /Leo M. Loughlin/     Date: 01/15/2020
Signatory's Name: Leo M. Loughlin
Signatory's Position: Attorney of record, DC bar member

Signatory's Phone Number: 2027836040

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:    E. ANTHONY FIGG
   ROTHWELL, FIGG, ERNST & MANBECK, PC
   SUITE 800
   607 14TH STREET NW
   WASHINGTON, District of Columbia 20005
Mailing Address:    E. ANTHONY FIGG
   ROTHWELL, FIGG, ERNST & MANBECK, PC
   SUITE 800
   607 14TH STREET NW
   WASHINGTON, District of Columbia 20005
        
Serial Number: 88604250
Internet Transmission Date: Wed Jan 15 17:02:17 EST 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2020011517021746
6645-88604250-700a0f3e7ba594b5a71ee70e1d
aa9e5d702ae8326fabd1adc25a18b8b6dad4af6-
N/A-N/A-20200115113640505686