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. 90027916 CSL(Standard Characters, see http://uspto.report/TM/90027916/mark.png) has been amended as follows:

EVIDENCE
Evidence has been attached: substantive response to likelihood of confusion rejection with supporting evidence
Original PDF file:
evi_10816237161-202103191 12933799016_._CSL_-_OAR_F inal.pdf
Converted PDF file(s) ( 16 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8Evidence-9Evidence-10Evidence-11Evidence-12Evidence-13Evidence-14Evidence-15Evidence-16

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 041 for Educational 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: Educational services; Educational services, namely, conducting classes, seminars, conferences, and workshops in the fields of pharmaceuticals, vaccines, biotechnology, biotherapy, immunology, rare diseases and blood conditions.Class 041 for Educational services, namely, conducting classes, seminars, conferences, and workshops in the fields of pharmaceuticals, vaccines, biotechnology, biotherapy, immunology, rare diseases and blood conditions.
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 Medical Research, Scientific Research, Research and Development 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 Research, Scientific Research, Research and Development services; Medical Research; Scientific Research; Scientific Research and Development; pharmaceutical research and development; research and development of vaccines and medicines; research and developments in the pharmaceutical and biotechnology fields; testing, inspection, research, or development of pharmaceuticals preparations for gene therapy.Class 042 for Medical Research; Scientific Research; Scientific Research and Development; pharmaceutical research and development; research and development of vaccines and medicines; research and developments in the pharmaceutical and biotechnology fields; testing, inspection, research, or development of pharmaceuticals preparations for gene therapy.
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


The owner's/holder's current attorney information: Scott D. Woldow. Scott D. Woldow of SMITH, GAMBRELL & RUSSELL, LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      SUITE 400
      1055 THOMAS JEFFERSON STREET, NW
      WASHINGTON, District of Columbia 20007
      United States
The docket/reference number is 034845.247.
      The phone number is 202-263-4300.
      The fax number is 202-263-4329.
      The email address is swoldow@sgrlaw.com

The owner's/holder's proposed attorney information: Scott D. Woldow. Other appointed attorneys are Anca M. Marcu. Scott D. Woldow of SMITH, GAMBRELL & RUSSELL, LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      SUITE 400
      1055 THOMAS JEFFERSON STREET, NW
      WASHINGTON, District of Columbia 20007
      United States
The docket/reference number is 034845.247.
      The phone number is 202-263-4300.
      The fax number is 202-263-4329.
      The email address is swoldow@sgrlaw.com

Scott D. Woldow 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):
      SCOTT D. WOLDOW
      PRIMARY EMAIL FOR CORRESPONDENCE: swoldow@sgrlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): docketing@sgrlaw.com

The docket/reference number is 034845.247.
Correspondence Information (proposed):
      Scott D. Woldow
      PRIMARY EMAIL FOR CORRESPONDENCE: swoldow@sgrlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): docketing@sgrlaw.com; amarcu@sgrlaw.com

The docket/reference number is 034845.247.

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: /Anca Marcu/     Date: 03/19/2021
Signatory's Name: Anca M. Marcu
Signatory's Position: Associate Attorney, Smith, Gambrell & Russell LLP, Pennsylvania Bar Member

Signatory's Phone Number: 2022634306 Signature method: Signed directly within the form

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:    SCOTT D. WOLDOW
   SMITH, GAMBRELL & RUSSELL, LLP
   SUITE 400
   1055 THOMAS JEFFERSON STREET, NW
   WASHINGTON, District of Columbia 20007
Mailing Address:    Scott D. Woldow
   SMITH, GAMBRELL & RUSSELL, LLP
   SUITE 400
   1055 THOMAS JEFFERSON STREET, NW
   WASHINGTON, District of Columbia 20007
        
Serial Number: 90027916
Internet Transmission Date: Fri Mar 19 11:33:44 ET 2021
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-202103191133440
10592-90027916-77030724c927cc62429716fa4
c93eabdfaa2696beed71a55e0189c73ded35690b
3-N/A-N/A-20210319112933799016