Response to Office Action

PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

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PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88960496 KINWELL(Standard Characters, see http://uspto.report/TM/88960496/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: Arguments
Original PDF file:
evi_7311190212-2021020219 4626230560_._88960496_129 6-T18US_Response_to_OA_Ar gument.pdf
Converted PDF file(s) ( 1 page) Evidence-1

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 035 for Providing assistance, fitness and health evaluation and consultation to business clients to help their employees make health, wellness, and nutritional changes in their daily living to increase productivity and lower health care costs
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 assistance, fitness and health evaluation and consultation to business clients to help their employees make health, wellness, and nutritional changes in their daily living to increase productivity and lower health care costs; Providing business consultation to business clients to help their employees make health, wellness, and nutritional changes in their daily living to increase productivity and lower health care costsClass 035 for Providing business consultation to business clients to help their employees make health, wellness, and nutritional changes in their daily living to increase productivity and lower health care costs
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.

Webpage URL: None Provided
Webpage Date of Access: None Provided


Applicant proposes to amend the following:

Current:
Class 042 for Providing communication technology, namely, providing search platforms and voice enabled search platforms that enable users to request and obtain information in the medical, health, hospital, dental, prescription drug, pharmaceutical, wellness, fitness, exercise, diet, nutrition, health insurance, health care plan and health saving account areas; Providing a website featuring technology that enables users to access, manage and process health, medical, hospital, pharmaceutical and prescription drug insurance applications, records, claims, benefits, accounts
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 communication technology, namely, providing search platforms and voice enabled search platforms that enable users to request and obtain information in the medical, health, hospital, dental, prescription drug, pharmaceutical, wellness, fitness, exercise, diet, nutrition, health insurance, health care plan and health saving account areas; Platform as a service (PAAS) featuring computer software platforms for providing search engines and voice enabled search engines that enable users to request and obtain information in the medical, health, hospital, dental, prescription drug, pharmaceutical, wellness, fitness, exercise, diet, nutrition, health insurance, health care plan and health saving account areas; Providing a website featuring technology that enables users to access, manage and process health, medical, hospital, pharmaceutical and prescription drug insurance applications, records, claims, benefits, accountsClass 042 for Platform as a service (PAAS) featuring computer software platforms for providing search engines and voice enabled search engines that enable users to request and obtain information in the medical, health, hospital, dental, prescription drug, pharmaceutical, wellness, fitness, exercise, diet, nutrition, health insurance, health care plan and health saving account areas; Providing a website featuring technology that enables users to access, manage and process health, medical, hospital, pharmaceutical and prescription drug insurance applications, records, claims, benefits, accounts
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.

Webpage URL: None Provided
Webpage Date of Access: None Provided


OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Premera Blue Cross a(n) non-profit corporation, legally organized under the laws of Washington, having an address of
      7001 220th Street SW, MS 316
      Mountlake Terrace, Washington 98043
      United States
      Email Address: XXXX

Proposed: Premera Blue Cross, non-profit corporation legally organized under the laws of Washington, having an address of
      7001 220th Street SW, MS 316
      Mountlake Terrace, Washington 98043
      United States
      Email Address: XXXX

The owner's/holder's current attorney information: Jerald E. Nagae, Reg. No. 29,418. Jerald E. Nagae, Reg. No. 29,418 of CHRISTENSEN O'CONNOR JOHNSON KINDNESS, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      1201 THIRD AVENUE, SUITE 3600
      SEATTLE, Washington 98101
      United States
The docket/reference number is BLUE-2-62274.
      The phone number is 206-682-8100.
      The fax number is 206-224-0779.
      The email address is Efiling@cojk.com

The owner's/holder's proposed attorney information: Jerald E. Nagae, Reg. No. 29,418. Other appointed attorneys are Frances M. Jagla; Peter W. Becker; Melissa A. Nowak; Makiko Coffland; Kyle E. Yarberry; George E. Renzoni, Ph.D.; John D. Denkenberger; Brandon C. Stallman; Laura A. Cruz; Ryan E. Dodge, Jr.; Brian W. Poor; Matthew D. Balint; Llewellyn Rhys Lawson; David P. Sheldon; Brian F. McMahon; B. Casey Fitzpatrick; Jadran Adrian Mihailovic; James Y. Go; Cory G. Claassen; Thomas S. (Stasiu) Nowak; Juan Zheng, Ph.D; and Andrew L. Laughlin. Jerald E. Nagae, Reg. No. 29,418 of Christensen O'Connor Johnson Kindness, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      1201 Third Avenue, Suite 3600
      Seattle, Washington 98101
      United States
The docket/reference number is 1296-T18US.
      The phone number is 206-682-8100.
      The fax number is 206-224-0779.
      The email address is Efiling@cojk.com

Jerald E. Nagae, Reg. No. 29,418 submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.Correspondence Information (current):
      JERALD E. NAGAE, REG. NO. 29,418
      PRIMARY EMAIL FOR CORRESPONDENCE: Efiling@cojk.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): TMfiling@cojk.com

The docket/reference number is BLUE-2-62274.
Correspondence Information (proposed):
      Jerald E. Nagae, Reg. No. 29,418
      PRIMARY EMAIL FOR CORRESPONDENCE: Efiling@cojk.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 1296-T18US.

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: /Jerald E. Nagae, Reg. No. 29,418/     Date: 02/02/2021
Signatory's Name: Jerald E. Nagae, Reg. No. 29,418
Signatory's Position: Attorney of record, Washington bar member

Signatory's Phone Number: 206-682-8100 Signature method: Sent to third party for signature

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:    JERALD E. NAGAE, REG. NO. 29,418
   CHRISTENSEN O'CONNOR JOHNSON KINDNESS
   
   1201 THIRD AVENUE, SUITE 3600
   SEATTLE, Washington 98101
Mailing Address:    Jerald E. Nagae, Reg. No. 29,418
   Christensen O'Connor Johnson Kindness
   1201 Third Avenue, Suite 3600
   Seattle, Washington 98101
        
Serial Number: 88960496
Internet Transmission Date: Wed Feb 03 12:34:31 ET 2021
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2021020312343168
6290-88960496-7605fe4b3f12cbac9f9ff3b9c8
71eb7d03282de4c1abaaaaaca80a7fb7d62f31b3
6-N/A-N/A-20210202194626230560