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 09/30/2020)

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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 1957 (Rev 10/2011)

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

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88780207 LIMELIGHT(Standard Characters, see http://uspto.report/TM/88780207/mark.png) has been amended as follows:

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

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

EVIDENCE
Evidence has been attached: Applicant's Arguments and Exhibits A to B referenced therein.
Original PDF file:
evi_63764866-202010271355 21250803_._Response_to_Of fice_Action_filed_10-27-2 020.PDF
Converted PDF file(s) ( 2 pages) Evidence-1Evidence-2
Original PDF file:
evi_63764866-202010271355 21250803_._Exhibits_A_to_ B_for_Response_to_Office_ Action_10-27-2020.PDF
Converted PDF file(s) ( 7 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Downloadable computer software platform for providing data-driven insights into all aspects of the perioperative process, including capabilities for surgery scheduling, asset inventory management for tracking medical devices within and outside a medical facility, compliance adherence to hospital and regulatory policies, analytics and dashboard capabilities, and billing management; computer hardware in the nature of wireless transceivers; firmware for wireless transceivers; near field communication tags for storing information about medical devices that can be transmitted to wireless transceivers and software applications
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 platform for providing data-driven insights into all aspects of the perioperative process, including capabilities for surgery scheduling, asset inventory management for tracking medical devices within and outside a medical facility, compliance adherence to hospital and regulatory policies, analytics and dashboard capabilities, and billing management; Downloadable computer software platform for providing data-driven insights into all aspects of the perioperative process, namely, capabilities for surgery scheduling, asset inventory management for tracking medical devices within and outside a medical facility, compliance adherence to hospital and regulatory policies, analytics and dashboard capabilities, and billing management; computer hardware in the nature of wireless transceivers; firmware for wireless transceivers; downloadable and recordable firmware for wireless transceivers for enabling such wireless transceivers to communicate with the aforementioned computer software platform; near field communication tags for storing information about medical devices that can be transmitted to wireless transceivers and software applicationsClass 009 for Downloadable computer software platform for providing data-driven insights into all aspects of the perioperative process, namely, capabilities for surgery scheduling, asset inventory management for tracking medical devices within and outside a medical facility, compliance adherence to hospital and regulatory policies, analytics and dashboard capabilities, and billing management; computer hardware in the nature of wireless transceivers; downloadable and recordable firmware for wireless transceivers for enabling such wireless transceivers to communicate with the aforementioned computer software platform; near field communication tags for storing information about medical devices that can be transmitted to wireless transceivers and software applications
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 temporary use of non-downloadable software for providing data-driven insights into all aspects of the perioperative process, including capabilities for surgery scheduling, asset inventory management for tracking medical devices within and outside a medical facility, compliance adherence to hospital and regulatory policies, analytics and dashboard capabilities, and billing management
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.


Proposed:

Tracked Text Description: Providing temporary use of non-downloadable software for providing data-driven insights into all aspects of the perioperative process, including capabilities for surgery scheduling, asset inventory management for tracking medical devices within and outside a medical facility, compliance adherence to hospital and regulatory policies, analytics and dashboard capabilities, and billing management; Providing temporary use of non-downloadable software for providing data-driven insights into all aspects of the perioperative process, namely, capabilities for surgery scheduling, asset inventory management for tracking medical devices within and outside a medical facility, compliance adherence to hospital and regulatory policies, analytics and dashboard capabilities, and billing managementClass 042 for Providing temporary use of non-downloadable software for providing data-driven insights into all aspects of the perioperative process, namely, capabilities for surgery scheduling, asset inventory management for tracking medical devices within and outside a medical facility, compliance adherence to hospital and regulatory policies, analytics and dashboard capabilities, and billing management
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Innovative Perioperative Technologies, LLC, a limited liability company legally organized under the laws of Connecticut, having an address of

            Unit 70G      41 Poverty Road
      Southbury, Connecticut 06488
      United States

Proposed: Innovative Perioperative Technologies, LLC, a limited liability company legally organized under the laws of Connecticut, having an address of
      Unit 70G
      41 Poverty Road
      Southbury, Connecticut 06488
      United States
      Email Address: XXXX
Correspondence Information (current):
      BASAM E. NABULSI, ESQ.
      PRIMARY EMAIL FOR CORRESPONDENCE: bnabulsi@mccarter.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): dewen@mccarter.com; bbanjac@mccarter.com; hartforddocketing@mccarter.com

The docket/reference number is 129662-00003.
Correspondence Information (proposed):
      Basam E. Nabulsi, Esq.
      PRIMARY EMAIL FOR CORRESPONDENCE: bnabulsi@mccarter.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): dewen@mccarter.com; bbanjac@mccarter.com; hartforddocketing@mccarter.com

The docket/reference number is 129662-00003.

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: /ben/     Date: 10/29/2020
Signatory's Name: Basam E. Nabulsi, Esq.
Signatory's Position: Attorney for Applicant, CT Bar Member

Signatory's Phone Number: 203-399-5920

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:    BASAM E. NABULSI, ESQ.
   MCCARTER & ENGLISH, LLP
   CITYPLACE I
   185 ASYLUM STREET
   HARTFORD, Connecticut 06103
Mailing Address:    Basam E. Nabulsi, Esq.
   MCCARTER & ENGLISH, LLP
   CITYPLACE I
   185 ASYLUM STREET
   HARTFORD, Connecticut 06103
        
Serial Number: 88780207
Internet Transmission Date: Thu Oct 29 17:32:11 ET 2020
TEAS Stamp: USPTO/ROA-XX.XX.XX.XX-202010291732118509
83-88780207-750ea68cb5e48f55a8eff69548b9
1e1c975d8a8ff79d6bd7f23d2602ff0aeae4e-N/
A-N/A-20201029172438240064