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. 90286994 GSK (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/9028699 4/large) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 035 for Promotional and advertising services; provision of the aforementioned services on-line, via cable and/or the Internet; the provision of information relating to pharmaceutical, medical, healthcare and fitness products through an on-line computer network; retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; retail or wholesale services for pharmaceuticals
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ United Kingdom registration number 3463018 registered 08/08/2020 with a renewal date of 01/31/2030 and an expiration date of 01/31/2030 ], 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.


Proposed:

Tracked Text Description: Promotional and advertising services; provision of the aforementioned services on-line, via cable and/or the Internet; the provision of information relating to pharmaceutical, medical, healthcare and fitness products through an on-line computer network; the provision of consumer information relating to pharmaceutical, medical, healthcare and fitness products through an on-line computer network.; retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; retail or wholesale services for pharmaceuticalsClass 035 for Promotional and advertising services; provision of the aforementioned services on-line, via cable and/or the Internet; the provision of consumer information relating to pharmaceutical, medical, healthcare and fitness products through an on-line computer network.
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 [ United Kingdom application number __________ filed __________ ]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ United Kingdom registration number 3463018 registered 08/08/2020 with a renewal date of 01/31/2030 and an expiration date of 01/31/2030 ], 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:
FRU0-15251481-091822588_. _82970244_GSK_Logo__motio n__UK_Reg_No.3463018.pdf
Converted PDF file(s) ( 3 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3

ADDITIONAL STATEMENTS
Color Claim
The color(s) orange, yellow and white is/are claimed as a feature of the mark.

Description of mark
The mark consists of a motion mark incorporating sound. The mark consists of 3 intertwined orange and yellow plectrum-like shapes, the outer 2 orange plectrum-like shapes slowly get smaller as they merge into the center orange plectrum-like shape. As the 2 outer orange plectrum-like shapes are merging into the center orange plectrum-like shape, a white light beam rotates around the edge of center orange plectrum-like shape, dissipating when the light beam reaches the top right top of the orange plectrum-like shape, all while the stylized wording "GSK" gradually fades into view in the color white in the center of the orange plectrum-like shape. Then the image of the stylized letters "GSK" are clearly displayed in white on the single orange plectrum-like shape, which pulses to a slightly larger size orange plectrum-like shape, in conjunction with the sound of a heartbeat, and then transitions back to its prior, and normal size.
Correspondence Information (current):
      ARRIELLE S. MILLSTEIN
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@gsk.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 83129080.
Correspondence Information (proposed):
      Arrielle S. Millstein
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@gsk.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 83129080.

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

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Christopher M. Hanes/      Date: 05/13/2021
Signatory's Name: Christopher M Hanes
Signatory's Position: Attorney of Record, NC Bar
Signatory's Phone Number: 19194507041

Signature method: Sent to third party for signature

Response Signature
Signature: /Christopher M Hanes/     Date: 05/13/2021
Signatory's Name: Christopher M. Hanes
Signatory's Position: Assistant General Counsel

Signatory's Phone Number: 19194507041 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:    ARRIELLE S. MILLSTEIN
   GSK
   WJN0200
   184 LIBERTY CORNER ROAD
   WARREN, New Jersey 07059
Mailing Address:    Arrielle S. Millstein
   GSK
   WJN0200
   184 LIBERTY CORNER ROAD
   WARREN, New Jersey 07059
        
Serial Number: 90286994
Internet Transmission Date: Thu May 13 19:50:50 ET 2021
TEAS Stamp: USPTO/ROA-XXX.XX.XX.X-202105131950505366
86-90286994-780eb50b4189e40c1e7f4f65bd33
7ef345c797b8c5ef2568fac3fa7882f83aee5-N/
A-N/A-20210513150541983882