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 11/30/2023)

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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 11/30/2023)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88867306 AMP(Standard Characters, see http://uspto.report/TM/88867306/mark.png) has been amended as follows:

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

Please see the actual arguments attached in the Evidence Section.

EVIDENCE
Evidence has been attached: Response to Office Action with Exhibtis A & B attached thereto.
Original PDF file:
evi_206801175-20201229182 120899006_._Response_with _Exhibits_A___B_attached.pdf
Converted PDF file(s) ( 51 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8Evidence-9Evidence-10Evidence-11Evidence-12Evidence-13Evidence-14Evidence-15Evidence-16Evidence-17Evidence-18Evidence-19Evidence-20Evidence-21Evidence-22Evidence-23Evidence-24Evidence-25Evidence-26Evidence-27Evidence-28Evidence-29Evidence-30Evidence-31Evidence-32Evidence-33Evidence-34Evidence-35Evidence-36Evidence-37Evidence-38Evidence-39Evidence-40Evidence-41Evidence-42Evidence-43Evidence-44Evidence-45Evidence-46Evidence-47Evidence-48Evidence-49Evidence-50Evidence-51

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Medical software; medical software for record sharing, collaboration, diagnosis, and patient monitoring, and related goods and services
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.


Proposed:

Tracked Text Description: Medical software; Downloadable medical software for controlling and managing patient medical information, and for planning and scheduling medical office and treatment center visits at various locations for effective managed patient medical care; medical software for record sharing, collaboration, diagnosis, and patient monitoring, and related goods and services; downloadable medical software for sharing web-based medical records, collaborating on those shared records for medical diagnosis purposes, and for virtual patient progress monitoringClass 009 for Downloadable medical software for controlling and managing patient medical information, and for planning and scheduling medical office and treatment center visits at various locations for effective managed patient medical care; downloadable medical software for sharing web-based medical records, collaborating on those shared records for medical diagnosis purposes, and for virtual patient progress monitoring
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 Software for medical diagnosis and related services; medical software as a service (saas) featuring software for analyzing medical data and providing and/or assisting in the diagnosis of medical conditions and diseases
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: Software for medical diagnosis and related services; Providing on-line, non-downloadable medical software for sharing web-based medical records, collaborating on those shared records for medical diagnosis purposes, and for virtual patient progress monitoring; medical software as a service (saas) featuring software for analyzing medical data and providing and/or assisting in the diagnosis of medical conditions and diseases; software as a service (SAAS) services featuring medical software for displaying and analyzing medical data for the diagnosis of patient medical conditions and diseasesClass 042 for Providing on-line, non-downloadable medical software for sharing web-based medical records, collaborating on those shared records for medical diagnosis purposes, and for virtual patient progress monitoring; software as a service (SAAS) services featuring medical software for displaying and analyzing medical data for the diagnosis of patient medical conditions and diseases
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):
      BASSAM N. IBRAHIM
      PRIMARY EMAIL FOR CORRESPONDENCE: bassam.ibrahim@bipc.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): kathy.bazil@bipc.com

The docket/reference number is 0068623-1660.
Correspondence Information (proposed):
      Bassam N. Ibrahim
      PRIMARY EMAIL FOR CORRESPONDENCE: bassam.ibrahim@bipc.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): kathy.bazil@bipc.com

The docket/reference number is 0068623-1660.

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: /Bassam N Ibrahim/ /s/     Date: 12/29/2020
Signatory's Name: Bassam N. Ibrahim
Signatory's Position: Attorney for Applicant, Virginia Bar Member

Signatory's Phone Number: 703-836-6620

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:    BASSAM N. IBRAHIM
   BUCHANAN INGERSOLL & ROONEY
   SUITE 500
   1737 KING STREET
   ALEXANDRIA, Virginia 22314-2727
Mailing Address:    Bassam N. Ibrahim
   BUCHANAN INGERSOLL & ROONEY
   SUITE 500
   1737 KING STREET
   ALEXANDRIA, Virginia 22314-2727
        
Serial Number: 88867306
Internet Transmission Date: Tue Dec 29 18:33:26 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.X-20201229183326269
548-88867306-7505ffd2340f3e13578e113cdd9
fd365b655a60496a3186d63d2bc2b77b865fb6-N
/A-N/A-20201229182120899006