TEAS Request Reconsideration after FOA

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 1960 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/30/2020)

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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 1960 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/30/2020)

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 88627813 AMAZON CARE (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8862781 3/large) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Downloadable computer software for collecting, organizing, obtaining, and managing patient information, facilitating and handling communications between patients and providers, and providing advice, diagnosis, treatment and referrals in the fields of medicine, medical care, healthcare, telehealth, telemedicine, remote care, and virtual health care services; downloadable mobile application software for collecting, organizing, obtaining, and managing patient information, facilitating and handling communications between patients and providers, and providing advice, diagnosis, treatment and referrals in the medical and healthcare fields; downloadable computer software for messaging and chat in the medical and healthcare fields; downloadable mobile application software for locating doctors, physician's assistants, nurses, nutritionists, healthcare professionals and healthcare service providers; downloadable computer software for scheduling medical and healthcare services; downloadable software in the nature of a mobile application for dispatching doctors, medical specialists, nurses, nutritionists, healthcare professionals and healthcare service providers to consumers; downloadable software for providing medical diagnosis, consultation, treatment recommendations, and medical care services and information; downloadable mobile application for enabling remote diagnosis and consultation with physicians
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: Downloadable computer software for collecting, organizing, obtaining, and managing patient information, facilitating and handling communications between patients and providers, and providing advice, diagnosis, treatment and referrals in the fields of medicine, medical care, healthcare, telehealth, telemedicine, remote care, and virtual health care services; downloadable mobile application software for collecting, organizing, obtaining, and managing patient information, facilitating and handling communications between patients and providers, and providing advice, diagnosis, treatment and referrals in the medical and healthcare fields; downloadable computer software for messaging and chat in the medical and healthcare fields; downloadable mobile application software for locating doctors, physician's assistants, nurses, nutritionists, healthcare professionals and healthcare service providers; downloadable computer software for scheduling medical and healthcare services; downloadable software in the nature of a mobile application for dispatching doctors, medical specialists, nurses, nutritionists, healthcare professionals and healthcare service providers to consumers; downloadable software for providing medical diagnosis, consultation, treatment recommendations, and medical care services and information; downloadable software for providing medical diagnosis, consultation, treatment recommendations, and medical care information; downloadable mobile application for enabling remote diagnosis and consultation with physiciansClass 009 for Downloadable computer software for collecting, organizing, obtaining, and managing patient information, facilitating and handling communications between patients and providers, and providing advice, diagnosis, treatment and referrals in the fields of medicine, medical care, healthcare, telehealth, telemedicine, remote care, and virtual health care services; downloadable mobile application software for collecting, organizing, obtaining, and managing patient information, facilitating and handling communications between patients and providers, and providing advice, diagnosis, treatment and referrals in the medical and healthcare fields; downloadable computer software for messaging and chat in the medical and healthcare fields; downloadable mobile application software for locating doctors, physician's assistants, nurses, nutritionists, healthcare professionals and healthcare service providers; downloadable computer software for scheduling medical and healthcare services; downloadable software in the nature of a mobile application for dispatching doctors, medical specialists, nurses, nutritionists, healthcare professionals and healthcare service providers to consumers; downloadable software for providing medical diagnosis, consultation, treatment recommendations, and medical care information; downloadable mobile application for enabling remote diagnosis and consultation with physicians
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 038 for Telecommunications services, namely, transmission of voice, audio, data, graphics, and video between patients and healthcare providers via global and local computer networks in the fields of telehealth, telemedicine, remote care, and virtual health care services; providing users with real-time and on-demand access to health care professionals via computer, telephone, and other electronic means via telecommunication networks
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: Telecommunications services, namely, transmission of voice, audio, data, graphics, and video between patients and healthcare providers via global and local computer networks in the fields of telehealth, telemedicine, remote care, and virtual health care services; providing users with real-time and on-demand access to health care professionals via computer, telephone, and other electronic means via telecommunication networksClass 038 for Telecommunications services, namely, transmission of voice, audio, data, graphics, and video between patients and healthcare providers via global and local computer networks in the fields of telehealth, telemedicine, remote care, and virtual health care services
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following:

Current:
Class 042 for Providing non-downloadable software for collecting, organizing, obtaining, and managing patient information, facilitating and handling communications between patients and providers, and providing advice, diagnosis, treatment and referrals in the fields of medicine, medical care, healthcare, telehealth, telemedicine, remote care, and virtual health care services; providing temporary use of non-downloadable software for providing medical referrals; software as a service (SAAS) services featuring software for collecting, organizing, obtaining, and managing patient information, facilitating and handling communications between patients and providers, and providing advice, diagnosis, treatment and referrals in the fields of medicine, medical care, healthcare, telehealth, telemedicine, remote care, and virtual health care services; software as a service (SAAS) services featuring software for scheduling medical and healthcare services; software as a service (SAAS) services featuring software for providing medical diagnosis, consultation, treatment recommendations, and medical care services and information; providing temporary use of on-line non-downloadable software for remote medical consultation in the field of telemedicine; providing temporary use of on-line non-downloadable software for remote diagnosis and consultation with doctors, medical specialists, nurses, nutritionists and healthcare professionals; providing temporary use of non-downloadable software for streaming medical and healthcare services to others; platform as a service (PAAS) featuring computer software platforms for online collecting, organizing, obtaining, and managing patient information, facilitating and handling communications between patients and providers, and providing advice, diagnosis, treatment and referrals in the medical and healthcare fields
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: Providing non-downloadable software for collecting, organizing, obtaining, and managing patient information, facilitating and handling communications between patients and providers, and providing advice, diagnosis, treatment and referrals in the fields of medicine, medical care, healthcare, telehealth, telemedicine, remote care, and virtual health care services; providing temporary use of non-downloadable software for providing medical referrals; software as a service (SAAS) services featuring software for collecting, organizing, obtaining, and managing patient information, facilitating and handling communications between patients and providers, and providing advice, diagnosis, treatment and referrals in the fields of medicine, medical care, healthcare, telehealth, telemedicine, remote care, and virtual health care services; software as a service (SAAS) services featuring software for scheduling medical and healthcare services; software as a service (SAAS) services featuring software for providing medical diagnosis, consultation, treatment recommendations, and medical care services and information; software as a service (SAAS) services featuring software for providing medical diagnosis, consultation, treatment recommendations, and medical care information; providing temporary use of on-line non-downloadable software for remote medical consultation in the field of telemedicine; providing temporary use of on-line non-downloadable software for remote diagnosis and consultation with doctors, medical specialists, nurses, nutritionists and healthcare professionals; providing temporary use of non-downloadable software for streaming medical and healthcare services to others; platform as a service (PAAS) featuring computer software platforms for online collecting, organizing, obtaining, and managing patient information, facilitating and handling communications between patients and providers, and providing advice, diagnosis, treatment and referrals in the medical and healthcare fieldsClass 042 for Providing non-downloadable software for collecting, organizing, obtaining, and managing patient information, facilitating and handling communications between patients and providers, and providing advice, diagnosis, treatment and referrals in the fields of medicine, medical care, healthcare, telehealth, telemedicine, remote care, and virtual health care services; providing temporary use of non-downloadable software for providing medical referrals; software as a service (SAAS) services featuring software for collecting, organizing, obtaining, and managing patient information, facilitating and handling communications between patients and providers, and providing advice, diagnosis, treatment and referrals in the fields of medicine, medical care, healthcare, telehealth, telemedicine, remote care, and virtual health care services; software as a service (SAAS) services featuring software for scheduling medical and healthcare services; software as a service (SAAS) services featuring software for providing medical diagnosis, consultation, treatment recommendations, and medical care information; providing temporary use of on-line non-downloadable software for remote medical consultation in the field of telemedicine; providing temporary use of on-line non-downloadable software for remote diagnosis and consultation with doctors, medical specialists, nurses, nutritionists and healthcare professionals; providing temporary use of non-downloadable software for streaming medical and healthcare services to others; platform as a service (PAAS) featuring computer software platforms for online collecting, organizing, obtaining, and managing patient information, facilitating and handling communications between patients and providers, and providing advice, diagnosis, treatment and referrals in the medical and healthcare fields
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 Telemedicine services; medical, telehealth, remote care and virtual health care services, namely, providing medical services and consultation over the telephone and via the Internet through the use of personal computers, smartphones, tablets, and mobile wireless devices via video, email, or a global computer network; providing telehealth in the nature of telemedicine, remote health care, and virtual health care services by providing real-time access to medical professionals; providing medical services, telehealth services in the nature of telemedicine services, remote health care services, and virtual health care services via a web site and mobile app featuring health and medical information; providing telemedicine and virtual health care services for the diagnosis, consultation, and treatment of cardiovascular, cardiopulmonary, dermatological, endocrine, gastrointestinal, hematological, hepatological, metabolic, musculoskeletal, neurological, ophthalmic, otolaryngological, reproductive, and respiratory conditions; providing medical diagnosis services; medical and health care services, namely, providing chronic care management services; physician services; medical services in the fields of primary care, internal medicine, and geriatrics; medical counseling; consulting services in the field of medical care; health care services, namely, disease management programs; medical care services, namely, primary care medical services, family medicine, and specialized medical care services in the management of complex and chronic diseases, namely, diabetes, high blood pressure, high cholesterol, thyroid disorders, heart disease, asthma, and arthritis; osteopathic medical services; providing preventative health information; counseling services in the field of disease management; medical services in the nature of chronic pain management; medical services in the fields of women's and men's health; medical services in the fields of infant, youth and adolescent health; providing in-home medical care laboratory testing and diagnostic services; preparation of prescriptions by pharmacists; prescription reminder refill services; health care services in preparation for traveling, namely, immunization services; medical services, namely, diagnosis and treatment of sports injuries; medical services, namely, diagnosis and treatment of skin disorders; chiropractic services; medical and pharmaceutical consultation; medical diagnostic testing, monitoring, and reporting services; medical analysis services for diagnostic and treatment purposes provided by medical laboratories; physical therapy and rehabilitation
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: Telemedicine services; medical, telehealth, remote care and virtual health care services, namely, providing medical services and consultation over the telephone and via the Internet through the use of personal computers, smartphones, tablets, and mobile wireless devices via video, email, or a global computer network; providing telehealth in the nature of telemedicine, remote health care, and virtual health care services by providing real-time access to medical professionals; providing medical services, telehealth services in the nature of telemedicine services, remote health care services, and virtual health care services via a web site and mobile app featuring health and medical information; providing telemedicine and virtual health care services for the diagnosis, consultation, and treatment of cardiovascular, cardiopulmonary, dermatological, endocrine, gastrointestinal, hematological, hepatological, metabolic, musculoskeletal, neurological, ophthalmic, otolaryngological, reproductive, and respiratory conditions; providing medical diagnosis services; medical and health care services, namely, providing chronic care management services; physician services; medical services in the fields of primary care, internal medicine, and geriatrics; medical counseling; consulting services in the field of medical care; health care services, namely, disease management programs; medical care services, namely, primary care medical services, family medicine, and specialized medical care services in the management of complex and chronic diseases, namely, diabetes, high blood pressure, high cholesterol, thyroid disorders, heart disease, asthma, and arthritis; osteopathic medical services; providing preventative health information; counseling services in the field of disease management; medical services in the nature of chronic pain management; medical services in the fields of women's and men's health; medical services in the fields of infant, youth and adolescent health; providing in-home medical care laboratory testing and diagnostic services; preparation of prescriptions by pharmacists; prescription reminder refill services; health care services in preparation for traveling, namely, immunization services; medical services, namely, diagnosis and treatment of sports injuries; medical services, namely, diagnosis and treatment of skin disorders; chiropractic services; medical and pharmaceutical consultation; medical diagnostic testing, monitoring, and reporting services; medical analysis services for diagnostic and treatment purposes provided by medical laboratories; physical therapy and rehabilitationClass 044 for Telemedicine services; medical, telehealth, remote care and virtual health care services, namely, providing medical services and consultation over the telephone and via the Internet through the use of personal computers, smartphones, tablets, and mobile wireless devices via video, email, or a global computer network; providing medical services, telehealth services in the nature of telemedicine services, remote health care services, and virtual health care services via a web site and mobile app featuring health and medical information; providing telemedicine and virtual health care services for the diagnosis, consultation, and treatment of cardiovascular, cardiopulmonary, dermatological, endocrine, gastrointestinal, hematological, hepatological, metabolic, musculoskeletal, neurological, ophthalmic, otolaryngological, reproductive, and respiratory conditions; providing medical diagnosis services; medical and health care services, namely, providing chronic care management services; physician services; medical services in the fields of primary care, internal medicine, and geriatrics; medical counseling; consulting services in the field of medical care; health care services, namely, disease management programs; medical care services, namely, primary care medical services, family medicine, and specialized medical care services in the management of complex and chronic diseases, namely, diabetes, high blood pressure, high cholesterol, thyroid disorders, heart disease, asthma, and arthritis; osteopathic medical services; providing preventative health information; counseling services in the field of disease management; medical services in the nature of chronic pain management; medical services in the fields of women's and men's health; medical services in the fields of infant, youth and adolescent health; providing in-home medical care laboratory testing and diagnostic services; preparation of prescriptions by pharmacists; prescription reminder refill services; health care services in preparation for traveling, namely, immunization services; medical services, namely, diagnosis and treatment of sports injuries; medical services, namely, diagnosis and treatment of skin disorders; chiropractic services; medical and pharmaceutical consultation; medical diagnostic testing, monitoring, and reporting services; medical analysis services for diagnostic and treatment purposes provided by medical laboratories; physical therapy and rehabilitation
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.
Correspondence Information (current):
      Joseph T. Kucala, Jr.
      PRIMARY EMAIL FOR CORRESPONDENCE: officeactions@norvellip.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): jkucala@norvellip.com

The docket/reference number is 13468-526.
Correspondence Information (proposed):
      Joseph T. Kucala, Jr.
      PRIMARY EMAIL FOR CORRESPONDENCE: officeactions@norvellip.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): jkucala@norvellip.com; mjohnson@norvellip.com; aengwall@norvellip.com

The docket/reference number is 13468-526.

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)
Request for Reconsideration Signature
Signature: /Michael K. Johnson/     Date: 10/07/2020
Signatory's Name: Michael K. Johnson
Signatory's Position: Attorney for Applicant, Associate Norvell IP llc, Illinois Bar Member

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.

The applicant is not filing a Notice of Appeal in conjunction with this Request for Reconsideration.

Mailing Address:    Joseph T. Kucala, Jr.
   Norvell IP llc
   
   PO Box 2461
   Chicago, Illinois 60690
Mailing Address:    Joseph T. Kucala, Jr.
   Norvell IP llc
   PO Box 2461
   Chicago, Illinois 60690
        
Serial Number: 88627813
Internet Transmission Date: Wed Oct 07 13:52:56 ET 2020
TEAS Stamp: USPTO/RFR-XX.XX.XXX.XXX-2020100713525607
2469-88627813-750bbd5c5ac6952c38116c3bb5
096545f2caf19a95d7675d7839b344759ed65ef-
N/A-N/A-20201007134332772053