Response to Office Action

PTO- 1957

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

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.

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PTO- 1957

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

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.

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 90097787 CURVE(Standard Characters, see http://uspto.report/TM/90097787/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Computer programs, computer software and associated instruction manuals sold as a unit for use in the fields of dental practice management and dental office management, namely, for use in managing dental practices, managing dental offices, patient scheduling, patient appointment management, patient contact, patient management, patient care management, patient benefits management, patient treatment planning, patient clinical charting, patient reporting, preparing patient notices, personnel scheduling, personnel management, personnel reporting, personnel compensation management, personnel records management, accounting management, finance management, tracking financial data, financial reporting, preparing financial reports, patient billing, third party billing, tracking accounts receivable, managing revenues, expenses, costs, profitability, budgets, equipment, supplies and purchases, claims management, claims processing, insurance processing, tracking insurance payments, tracking patient payments, collections, performance analysis, performance reporting, comparison analysis, comparison reporting, entering, displaying, printing, tracking, analyzing, organizing, retrieving, transacting, modifying, managing, backing up, storing, security protecting and reporting data and information with respect to dental practices, dental offices, patients, personnel, patient files, patient records, personnel records, dental exams, images, graphics, charts, dental treatment, dental services, dental recare, demographics, finances, insurance and claims, providing online training and assistance regarding management of dental practices and dental offices, providing online patient education and training, and providing educational patient videos and images
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: Computer programs, computer software and associated instruction manuals sold as a unit for use in the fields of dental practice management and dental office management, namely, for use in managing dental practices, managing dental offices, patient scheduling, patient appointment management, patient contact, patient management, patient care management, patient benefits management, patient treatment planning, patient clinical charting, patient reporting, preparing patient notices, personnel scheduling, personnel management, personnel reporting, personnel compensation management, personnel records management, accounting management, finance management, tracking financial data, financial reporting, preparing financial reports, patient billing, third party billing, tracking accounts receivable, managing revenues, expenses, costs, profitability, budgets, equipment, supplies and purchases, claims management, claims processing, insurance processing, tracking insurance payments, tracking patient payments, collections, performance analysis, performance reporting, comparison analysis, comparison reporting, entering, displaying, printing, tracking, analyzing, organizing, retrieving, transacting, modifying, managing, backing up, storing, security protecting and reporting data and information with respect to dental practices, dental offices, patients, personnel, patient files, patient records, personnel records, dental exams, images, graphics, charts, dental treatment, dental services, dental recare, demographics, finances, insurance and claims, providing online training and assistance regarding management of dental practices and dental offices, providing online patient education and training, and providing educational patient videos and images; Downloadable computer programs, computer software and associated instruction manuals sold as a unit for use in the fields of dental practice management and dental office management, namely, for use in managing dental practices, managing dental offices, patient scheduling, patient appointment management, patient contact, patient management, patient care management, patient benefits management, patient treatment planning, patient clinical charting, patient reporting, preparing patient notices, personnel scheduling, personnel management, personnel reporting, personnel compensation management, personnel records management, accounting management, finance management, tracking financial data, financial reporting, preparing financial reports, patient billing, third party billing, tracking accounts receivable, managing revenues, expenses, costs, profitability, budgets, equipment, supplies and purchases, claims management, claims processing, insurance processing, tracking insurance payments, tracking patient payments, collections, performance analysis, performance reporting, comparison analysis, comparison reporting, entering, displaying, printing, tracking, analyzing, organizing, retrieving, transacting, modifying, managing, backing up, storing, security protecting and reporting data and information with respect to dental practices, dental offices, patients, personnel, patient files, patient records, personnel records, dental exams, images, graphics, charts, dental treatment, dental services, dental recare, demographics, finances, insurance and claims, providing online training and assistance regarding management of dental practices and dental offices, providing online patient education and training, and providing educational patient videos and imagesClass 009 for Downloadable computer programs, computer software and associated instruction manuals sold as a unit for use in the fields of dental practice management and dental office management, namely, for use in managing dental practices, managing dental offices, patient scheduling, patient appointment management, patient contact, patient management, patient care management, patient benefits management, patient treatment planning, patient clinical charting, patient reporting, preparing patient notices, personnel scheduling, personnel management, personnel reporting, personnel compensation management, personnel records management, accounting management, finance management, tracking financial data, financial reporting, preparing financial reports, patient billing, third party billing, tracking accounts receivable, managing revenues, expenses, costs, profitability, budgets, equipment, supplies and purchases, claims management, claims processing, insurance processing, tracking insurance payments, tracking patient payments, collections, performance analysis, performance reporting, comparison analysis, comparison reporting, entering, displaying, printing, tracking, analyzing, organizing, retrieving, transacting, modifying, managing, backing up, storing, security protecting and reporting data and information with respect to dental practices, dental offices, patients, personnel, patient files, patient records, personnel records, dental exams, images, graphics, charts, dental treatment, dental services, dental recare, demographics, finances, insurance and claims, providing online training and assistance regarding management of dental practices and dental offices, providing online patient education and training, and providing educational patient videos and images
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 Software as a service services, namely, hosting software for use by others, and application service provider services, featuring software and electronic instruction manuals provided online via a global computer network for use in the fields of dental practice management and dental office management, namely, for use in managing dental practices, managing dental offices, patient scheduling, patient appointment management, patient contact, patient management, patient care management, patient benefits management, patient treatment planning, patient clinical charting, patient reporting, preparing patient notices, personnel scheduling, personnel management, personnel reporting, personnel compensation management, personnel records management, accounting management, finance management, tracking financial data, financial reporting, preparing financial reports, patient billing, third party billing, tracking accounts receivable, managing revenues, expenses, costs, profitability, budgets, equipment, supplies and purchases, claims management, claims processing, insurance processing, tracking insurance payments, tracking patient payments, collections, performance analysis, performance reporting, comparison analysis, comparison reporting, entering, displaying, printing, tracking, analyzing, organizing, retrieving, transacting, modifying, managing, backing up, storing, security protecting and reporting data and information with respect to dental practices, dental offices, patients, personnel, patient files, patient records, personnel records, dental exams, images, graphics, charts, dental treatment, dental services, dental recare, demographics, finances, insurance and claims, providing online training and assistance regarding management of dental practices and dental offices, providing online patient education and training, and providing educational patient videos and images; computer software programming services, computer software development services, computer software set up services, computer software data transfer services, computer software modification services, computer software upgrade services, computer software technical support services, computer software maintenance services, and computer software consulting services, all in the fields of dental practice management and dental office management, namely, managing dental practices, managing dental offices, patient scheduling, patient appointment management, patient contact, patient management, patient care management, patient benefits management, patient treatment planning, patient clinical charting, patient reporting, preparing patient notices, personnel scheduling, personnel management, personnel reporting, personnel compensation management, personnel records management, accounting management, finance management, tracking financial data, financial reporting, preparing financial reports, patient billing, third party billing, tracking accounts receivable, managing revenues, expenses, costs, profitability, budgets, equipment, supplies and purchases, claims management, claims management, claim processing, insurance processing, tracking insurance payments, tracking patient payments, collections, performance analysis, performance reporting, comparison analysis, comparison reporting, entering, displaying, printing, tracking, analyzing, organizing, retrieving, transacting, modifying, managing, backing up, storing, security protecting and reporting data and information with respect to dental practices, dental offices, patients, personnel, patient files, patient records, personnel records, dental exams, images, graphics, charts, dental treatment, dental services, dental recare, demographics, finances, insurance and claims, providing online training and assistance regarding management of dental practices and dental offices, providing online patient education and training, and providing educational patient videos and images
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: Graphic design of advertising materials for others in the field of dental practice management; computer software programming services, computer software development services, computer software set up services, computer software data transfer services, computer software modification services, computer software upgrade services, computer software technical support services, computer software maintenance services, and computer software consulting services, all in the fields of dental practice management and dental office management, namely, managing dental practices, managing dental offices, patient scheduling, patient appointment management, patient contact, patient management, patient care management, patient benefits management, patient treatment planning, patient clinical charting, patient reporting, preparing patient notices, personnel scheduling, personnel management, personnel reporting, personnel compensation management, personnel records management, accounting management, finance management, tracking financial data, financial reporting, preparing financial reports, patient billing, third party billing, tracking accounts receivable, managing revenues, expenses, costs, profitability, budgets, equipment, supplies and purchases, claims management, claims management, claim processing, insurance processing, tracking insurance payments, tracking patient payments, collections, performance analysis, performance reporting, comparison analysis, comparison reporting, entering, displaying, printing, tracking, analyzing, organizing, retrieving, transacting, modifying, managing, backing up, storing, security protecting and reporting data and information with respect to dental practices, dental offices, patients, personnel, patient files, patient records, personnel records, dental exams, images, graphics, charts, dental treatment, dental services, dental recare, demographics, finances, insurance and claims, providing online training and assistance regarding management of dental practices and dental offices, providing online patient education and training, and providing educational patient videos and images; graphic design of online advertising materials for others in the field of dental practice management; software as a service services, namely, hosting software for use by others, and application service provider services, featuring software and electronic instruction manuals provided online via a global computer network for use in the fields of dental practice management and dental office management, namely, for use in managing dental practices, managing dental offices, patient scheduling, patient appointment management, patient contact, patient management, patient care management, patient benefits management, patient treatment planning, patient clinical charting, patient reporting, preparing patient notices, personnel scheduling, personnel management, personnel reporting, personnel compensation management, personnel records management, accounting management, finance management, tracking financial data, financial reporting, preparing financial reports, patient billing, third party billing, tracking accounts receivable, managing revenues, expenses, costs, profitability, budgets, equipment, supplies and purchases, claims management, claims processing, insurance processing, tracking insurance payments, tracking patient payments, collections, performance analysis, performance reporting, comparison analysis, comparison reporting, entering, displaying, printing, tracking, analyzing, organizing, retrieving, transacting, modifying, managing, backing up, storing, security protecting and reporting data and information with respect to dental practices, dental offices, patients, personnel, patient files, patient records, personnel records, dental exams, images, graphics, charts, dental treatment, dental services, dental recare, demographics, finances, insurance and claims, providing online training and assistance regarding management of dental practices and dental offices, providing online patient education and training, and providing educational patient videos and images; computer software programming services, computer software development services, computer software set up services, computer software data transfer services, computer software modification services, computer software upgrade services, computer software technical support services, namely, troubleshooting of computer software problems, computer software maintenance services, and computer software consulting services, all in the fields of dental practice management and dental office management, namely, managing dental practices, managing dental offices, patient scheduling, patient appointment management, patient contact, patient management, patient care management, patient benefits management, patient treatment planning, patient clinical charting, patient reporting, preparing patient notices, personnel scheduling, personnel management, personnel reporting, personnel compensation management, personnel records management, accounting management, finance management, tracking financial data, financial reporting, preparing financial reports, patient billing, third party billing, tracking accounts receivable, managing revenues, expenses, costs, profitability, budgets, equipment, supplies and purchases, claims management, claims management, claim processing, insurance processing, tracking insurance payments, tracking patient payments, collections, performance analysis, performance reporting, comparison analysis, comparison reporting, entering, displaying, printing, tracking, analyzing, organizing, retrieving, transacting, modifying, managing, backing up, storing, security protecting and reporting data and information with respect to dental practices, dental offices, patients, personnel, patient files, patient records, personnel records, dental exams, images, graphics, charts, dental treatment, dental services, dental recare, demographics, finances, insurance and claims, providing online training and assistance regarding management of dental practices and dental offices, providing online patient education and training, and providing educational patient videos and imagesClass 042 for Graphic design of advertising materials for others in the field of dental practice management; graphic design of online advertising materials for others in the field of dental practice management; software as a service services, namely, hosting software for use by others, and application service provider services, featuring software and electronic instruction manuals provided online via a global computer network for use in the fields of dental practice management and dental office management, namely, for use in managing dental practices, managing dental offices, patient scheduling, patient appointment management, patient contact, patient management, patient care management, patient benefits management, patient treatment planning, patient clinical charting, patient reporting, preparing patient notices, personnel scheduling, personnel management, personnel reporting, personnel compensation management, personnel records management, accounting management, finance management, tracking financial data, financial reporting, preparing financial reports, patient billing, third party billing, tracking accounts receivable, managing revenues, expenses, costs, profitability, budgets, equipment, supplies and purchases, claims management, claims processing, insurance processing, tracking insurance payments, tracking patient payments, collections, performance analysis, performance reporting, comparison analysis, comparison reporting, entering, displaying, printing, tracking, analyzing, organizing, retrieving, transacting, modifying, managing, backing up, storing, security protecting and reporting data and information with respect to dental practices, dental offices, patients, personnel, patient files, patient records, personnel records, dental exams, images, graphics, charts, dental treatment, dental services, dental recare, demographics, finances, insurance and claims, providing online training and assistance regarding management of dental practices and dental offices, providing online patient education and training, and providing educational patient videos and images; computer software programming services, computer software development services, computer software set up services, computer software data transfer services, computer software modification services, computer software upgrade services, computer software technical support services, namely, troubleshooting of computer software problems, computer software maintenance services, and computer software consulting services, all in the fields of dental practice management and dental office management, namely, managing dental practices, managing dental offices, patient scheduling, patient appointment management, patient contact, patient management, patient care management, patient benefits management, patient treatment planning, patient clinical charting, patient reporting, preparing patient notices, personnel scheduling, personnel management, personnel reporting, personnel compensation management, personnel records management, accounting management, finance management, tracking financial data, financial reporting, preparing financial reports, patient billing, third party billing, tracking accounts receivable, managing revenues, expenses, costs, profitability, budgets, equipment, supplies and purchases, claims management, claims management, claim processing, insurance processing, tracking insurance payments, tracking patient payments, collections, performance analysis, performance reporting, comparison analysis, comparison reporting, entering, displaying, printing, tracking, analyzing, organizing, retrieving, transacting, modifying, managing, backing up, storing, security protecting and reporting data and information with respect to dental practices, dental offices, patients, personnel, patient files, patient records, personnel records, dental exams, images, graphics, charts, dental treatment, dental services, dental recare, demographics, finances, insurance and claims, providing online training and assistance regarding management of dental practices and dental offices, providing online patient education and training, and providing educational patient videos and images
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

Correspondence Information (current):
      JEFFREY H. GREENE
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@cooley.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): landrepont@cooley.com

The docket/reference number is 333733-20000.
Correspondence Information (proposed):
      Jeffrey H. Greene
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@cooley.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): landrepont@cooley.com

The docket/reference number is 333733-20000.

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: /Brian J. Focarino/     Date: 01/04/2021
Signatory's Name: Brian J. Focarino
Signatory's Position: Attorney of Record, California bar member

Signatory's Phone Number: 617-937-2347 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:    JEFFREY H. GREENE
   COOLEY LLP
   
   1299 PENNSYLVANIA AVENUE NW, SUITE 700
   WASHINGTON, District of Columbia 20004-2400
Mailing Address:    Jeffrey H. Greene
   COOLEY LLP
   1299 PENNSYLVANIA AVENUE NW, SUITE 700
   WASHINGTON, District of Columbia 20004-2400
        
Serial Number: 90097787
Internet Transmission Date: Mon Jan 04 13:36:04 ET 2021
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20210104133604
839919-90097787-76035d6a1255da143af99471
c55db5696cd2d18ced29ac0d64473c514c97983e
f4c-N/A-N/A-20210104123647541833