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. 90265463 EMERGE(Standard Characters, see http://uspto.report/TM/90265463/mark.png) has been amended as follows:

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

i. Applicant has deleted Class 35 and respectfully requests that the Examiner withdraw the citation. ii. Applicant, by its undersigned attorney, encloses a fully executed Declaration. iii. Applicant, by its undersigned attorney, encloses a copy of its corresponding Germany registration and an English translation thereof. Contingent upon the acceptance thereof, kindly delete Applicant's 1(b) filing basis.

EVIDENCE

Original PDF file:
evi_6725083184-2021061320 3803683885_._EMERGE_DE_30 2020008593_3542.pdf
Converted PDF file(s) ( 4 pages) Evidence-1Evidence-2Evidence-3Evidence-4
Original PDF file:
evi_6725083184-2021061320 3803683885_._21-00331_Urk unde_Register_Emerge_my.pdf
Converted PDF file(s) ( 4 pages) Evidence-1Evidence-2Evidence-3Evidence-4
Original PDF file:
evi_6725083184-2021061320 3803683885_._emerge__002_.pdf
Converted PDF file(s) ( 1 page) Evidence-1

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant hereby deletes the following class of goods/services from the application.
Class 035 for Business analysis services for the biopharmaceutical drug development and production industry; Provision of information in business matters for the biopharmaceutical drug development and production industry in digital form (information to be stored and made available via a cloud-based system); Computerized provision of business information for the performance of analytical and logistical services for the biopharmaceutical drug development and production industry; Provision of real-time business information for biopharmaceutical drug development and manufacturing industry; Provision of information in business matters for the biopharmaceutical drug development and production industry by means of tools for trend detection and visualization

Applicant proposes to amend the following:

Current:
Class 042 for Platform as a Service for the biopharmaceutical drug development and manufacturing industry; Programming of software for trend detection and visualization tools for data analysis, provision of business information for biopharmaceutical drug development and manufacturing industry
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Germany application number 3020200085934 filed 04/23/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:
Class 042 for Platform as a Service for the biopharmaceutical drug development and manufacturing industry; Programming of software for trend detection and visualization tools for data analysis, provision of business information for biopharmaceutical drug development and manufacturing industry
Deleted Filing Basis: 1(b)
Webpage URL: None Provided
Webpage Date of Access: None Provided


Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Germany application number 3020200085934 filed 04/23/2020]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Germany registration number 3020200085934 registered 09/30/2020 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU1-6725083184-203803683 _._21-00331_Urkunde_Regis ter_Emerge_my.pdf
Converted PDF file(s) ( 4 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3Foreign Registration-4
Original PDF file:
FRU1-6725083184-203803683 _._EMERGE_DE_302020008593 _3542.pdf
Converted PDF file(s) ( 4 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3Foreign Registration-4

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.
Correspondence Information (current):
      WILLIAM C. WRIGHT
      PRIMARY EMAIL FOR CORRESPONDENCE: mail@ipcounselors.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED
Correspondence Information (proposed):
      William C. Wright
      PRIMARY EMAIL FOR CORRESPONDENCE: mail@ipcounselors.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

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)
Declaration Signature
Original PDF file:
HS_6725083184-203803683_. _emerge__002_.pdf
Converted PDF file(s) (1 page) Signature File1
Signatory's Name: Asya Avagyan & Vahe Movsisyan
Signatory's Position: Authorized Representatives
Signature method: Handwritten

Response Signature
Signature: /Jesse R Bader/     Date: 06/13/2021
Signatory's Name: Jesse R Bader
Signatory's Position: Attorney for Applicant

Signatory's Phone Number: 212-292-5390 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:    WILLIAM C. WRIGHT
   EPSTEIN DRANGEL LLP
   
   60 EAST 42ND STREET, SUITE 2520
   NEW YORK, New York 10165
Mailing Address:    William C. Wright
   EPSTEIN DRANGEL LLP
   60 EAST 42ND STREET, SUITE 2520
   NEW YORK, New York 10165
        
Serial Number: 90265463
Internet Transmission Date: Sun Jun 13 22:21:37 ET 2021
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2021061322213715
4545-90265463-780624d9464f5b7e48935dc82b
ec65e982f726fc36c09197dc16b5fb12a4da62d-
N/A-N/A-20210613220743659478