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. 88816669  (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8881666 9/large) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 005 for A house mark for pharmaceutical preparations and over the counter preparations and products
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: A house mark for pharmaceutical preparations and over the counter preparations and products; a house mark for pharmaceutical preparations and over the counter preparations for the treatment of medical conditions, diseases and disorders in the fields of cardiology, endocrinology, gynecology, immunology, infectious disease, oncology, ophthalmology, respiratory, gastroenterology, neurology, urology, dermatology, reproduction, infertility, men's health, women's health, contraception, and diabetes; a house mark for pharmaceutical preparations and over the counter preparations for the treatment of pain, inflammation, diseases and disorders of the central nervous system, bone disease and disorders; a house mark for human vaccine preparations, nasal spray preparations, and contraceptive preparationsClass 005 for a house mark for pharmaceutical preparations and over the counter preparations for the treatment of medical conditions, diseases and disorders in the fields of cardiology, endocrinology, gynecology, immunology, infectious disease, oncology, ophthalmology, respiratory, gastroenterology, neurology, urology, dermatology, reproduction, infertility, men's health, women's health, contraception, and diabetes; a house mark for pharmaceutical preparations and over the counter preparations for the treatment of pain, inflammation, diseases and disorders of the central nervous system, bone disease and disorders; a house mark for human vaccine preparations, nasal spray preparations, and contraceptive preparations
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following:

Current:
Class 010 for A house mark for surgical and medical apparatus, devices and instruments
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.


Proposed:

Tracked Text Description: A house mark for surgical and medical apparatus, devices and instruments; a house mark for surgical instruments, apparatus, and devices; medical apparatus, namely, pharmaceutical injectors, inhalers, contraceptive implants, contraception apparatus, medical fluid injectors, needles for medical useClass 010 for a house mark for surgical instruments, apparatus, and devices; medical apparatus, namely, pharmaceutical injectors, inhalers, contraceptive implants, contraception apparatus, medical fluid injectors, needles for medical use
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following:

Current:
Class 042 for Providing online, non-downloadable software for providing and managing health and healthcare information; scientific research for medical purposes
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 online, non-downloadable software for providing and managing health and healthcare information; scientific research for medical purposes; providing medical and scientific research information in the field of pharmaceuticals and clinical trialsClass 042 for Providing online, non-downloadable software for providing and managing health and healthcare information; scientific research for medical purposes; providing medical and scientific research information in the field of pharmaceuticals and clinical trials
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 Providing information in the fields of pharmaceuticals, medicines, medical devices, health, and wellness
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 information in the fields of pharmaceuticals, medicines, medical devices, health, and wellness; Providing medical information in the fields of pharmaceuticals, medicines, and medical devices, Providing information in the fields of health and wellnessClass 044 for Providing medical information in the fields of pharmaceuticals, medicines, and medical devices, Providing information in the fields of health and wellness
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):
      AMY C. VAN EEPOEL
      PRIMARY EMAIL FOR CORRESPONDENCE: amy.van.eepoel@merck.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): geralyn.monroe@merck.com; trademarkus@merck.com
Correspondence Information (proposed):
      Amy C. Van Eepoel
      PRIMARY EMAIL FOR CORRESPONDENCE: amy.van.eepoel@merck.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): geralyn.monroe@merck.com; trademarkus@merck.com

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /Amy C. Van Eepoel/     Date: 11/20/2020
Signatory's Name: Amy C. Van Eepoel
Signatory's Position: Attorney of Record, NJ Bar Member

Signatory's Phone Number: 732-594-4077

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:    AMY C. VAN EEPOEL
   MERCK & CO., INC.
   OFFICE OF GENERAL COUNSEL
   126 E. LINCOLN AVENUE
   RAHWAY, New Jersey 07065
Mailing Address:    Amy C. Van Eepoel
   MERCK & CO., INC.
   OFFICE OF GENERAL COUNSEL
   126 E. LINCOLN AVENUE
   RAHWAY, New Jersey 07065
        
Serial Number: 88816669
Internet Transmission Date: Mon Nov 23 08:06:46 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XXX-2020112308064649
8094-88816669-75038b6cf83c1c5c22eca1add8
1d3fe3aa3f178ecf02e95ef4be1390378c26-N/A
-N/A-20201120082453481339