Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 76463480 ALCEDO has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 001 for Chemicals used in industry and science, agriculture, horticulture and forestry, namely, proteins, peptides, nucleic acids and polynucleotides; proteins and recombinant proteins for scientific research use, antibodies for scientific research use; DNA probes for scientific research use; oligonucleotides for scientific research use; antibodies for scientific research use; DNA probes for scientific research use; oligonucleotides for scientific research use; antisense constructs for scientific research use; arrays of nucleic acids or proteins on a carrier material for scientific research use; single nucleotide polymorphism kits, also called SNP kits, comprising at least oneoligonucleotide or a polynucleotide; expression profiling kits comprised of an antibody, a protein, a peptide, a nucleic acid, a polynucleotide or a probe for scientific research use, in particular by use of PCR, immunohistochemistry or arrays; kits comprised of an antibody, a protein, a peptide, a nucleic acid, a polynucleotide or a probe for indication of specific therapy for scientific research use, in particular FISH,arrays, PCR and iminunohistochemistry; kits comprised of an antibody, a protein, a peptide, a nucleic acid, a polynucleotide or a probe for detection of predisposition for particular diseases for research purposes, in particular by using PCR, MALDITOF and oligo hybridization; cartilage cells for scientific research use, in particular implantable cartilage cells; fat cells for scientific research use, in particular implantable fat cells;adult and fetal stem cells for scientific research use; kits comprised of an antibody, a protein, a peptide, a nucleic acid, a polynucleotide or a probe for purification and/or separation of nucleic acids; kits for purification or separation of nucleic acids for scientific research use
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [ Germany registration number 30221121 registered 04/26/2002 with a renewal date of __________ and an expiration date of 04/30/2012 ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.

Proposed: Class 001 for 183 Chemicals used in industry and science, agriculture, horticulture and forestry, namely proteins, peptides, nucleic acids and polynucleotides; proteins and recombinant proteins for scientific research use, antibodies for scientific research use; DNA probes for scientific research use; oligonucleotides for scientific research use; antibodies for scientific research use; DNA probes for scientific research use; oligonucleotides for scientific research use; antisense constructs for scientific research use; arrays of nucleic acids or proteins on a carrier material for scientific research use; single nucleotide polymorphism kits, also called SNP kits comprising at least one oligonucleotide or a polynucleotide for scientific research use; expression profiling kits comprised of an antibody, a protein, a peptide, a nucleic acid, a polynucleotide or a probe for scientific research use, in particular by use of PCR, immunohistochemistry or arrays; kits comprised of an antibody, a protein, a peptide, a nucleic acid, a polynucleotide or a probe for indication of specific therapy approaches for scientific research use, in particular FISH, arrays, PCR and iminunohistochemistry; kits comprised of an antibody, a protein, a peptide, a nucleic acid, a polynucleotide or a probe for detection of predisposition for particular diseases for research purposes, in particular by using PCR, MALDITOF and oligo hybridization; cartilage cells for scientific research use, in particular implantable cartilage cells; fat cells for scientific research use, in particular implantable fat cells; adult and fetal stem cells for scientific research use; kits comprised of an antibody, a protein, a peptide, a nucleic acid, a polynucleotide or a probe for purification and/or separation of nucleic acids for scientific research use; kits for purification or separation of nucleic acids for scientific research use
Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and will submit a copy of [ Germany registration number 30221121 registered 04/26/2002 with a renewal date of __________ and an expiration date of 04/30/2012 ], and translation thereof, if appropriate, before the application may proceed to registration. 15 U.S.C. Section 1126(e), as amended.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 005 for Pharmaceutical and veterinary products, namely, slimming, appetite suppressants, pharmaceuticals for acidosis therapeutics, analeptic antihypoxaemics; analgesics and antirheumatic drugs, pharmaceuticals functioning antihelminitics, antiallergics, antianemia drugs, antiarrhythmics, antibiotics and antiinfectives, antidementics,nootropics, antidiabetics, antidotes for the treatment of poisoning, antiemetics and antivertiginosics, antiepileptics, antihemorrhagics, antifibrinolyrics, hemostatics, antihypertonics, antihypoglycemics, antihypotonics, anticoagulants, antimycotics, pharmaceuticals functioning as antiparasitics, antiphlogistics, antitussives, expectorants for use in atherosclerosis, belneotherapeutics and pharmaceuticals for thermal therapy, pharmaceuticals functioning as beta receptor blocking agents, pharmaceuticals for calcium channel blocking and inhibiting of the renin angiotensin-system, pharmaceuticals functioning as broncholytics, antiasthmetics, cholagoguegics and for use in biliary tract therapeutics; pharmaceuticals functioning as cholinergics, corticoids, dermatics; all purpose disinfectants and antiseptics; pharmaceuticals functioning as dietetic agents and in alimentary therapeutics; pharmaceutical preparations functioning as diuretics, as agents for favoring blood flow, as withdrawal agents, as fibrinolytics, to treat gout, the flu and catarrhal fever; pharmaceuticals for the treatment of gynecological illnesses, namely, menstrual cramps, hemorrhoids,hepatitis; pharmaceuticals functioning as hypnotics and sedatives; pharmaceuticals to treat cardiac ailments; pharmaceuticals for use in caries and parodontosis; dental preparations, namely, dental abrasives; laxatives, pharmaceuticals functioning as antilipaemics, local anesthetics, neural therapeutics, gastro-intestinal preparations, pharmaceuticals to treat migraines; pharmaceutical preparations for use in mouth and pharyngeal therapeutics; pharmaceuticals for use as muscle relaxants; pharmaceuticals for the treatment of addiction to narcotics; pharmaceuticals for use in neuropathology; ophthalmic pharmaceuticals for treating blindness, conjunctivitis, cataract, glaucoma, retinal detachment, styc chalazion, dacryoadenitis, corneal clouding, keratitis, gasserian ganglionitis, vitreous opacity, amaurosis, retinopathy, central retinal artery occlusion, retinoblastoma, melanoma, optic neuritis, optic nerve atrophy; pharmaceuticals for use in osteoporosis and calcium metabolism modification; pharmaceuticals for the treatment of Parkinson's Disease and disturbances of the extrapyramidal system; pharmaceuticals for psychotropic, rhinologic and sinostic purposes; pharmaceuticals functioning as roborants and tonics; pharmaceuticals for use in thyroidal therapeutics; pharmaceuticals functioning as spasmolytics and inhibitors of thrombocyte aggregation; pharmaceuticals for the treatment of tuberculosis; pharmaceuticals functioning as altemants, urologics and venous agents; vitamins; pharmaceuticals for use as cytostatics and antineoplastic agents; veterinary preparations for the use in the treatment of distemper, macular degeneration, cancer, infertility, arthritis, dermatitis, infections, sepsis, cardiovascular diseases, artherioscierosis, diabetes and obesity in pets, livestock, wild animals, breeding animals and zoo animals; dietetic substances adapted for medical use, namely, food for elderly people who require medically restricted diets; medical plasters; materials for dressings, namely, wound, burn and surgical dressings; all-purpose disinfectants; preparations for destroying vermin; fungicides for domestic or agricultural use; herbicides for domestic or agricultural use; wound medicines; wound ointment; wound spray; wound tincture; wound fleece; fleece against restenosis, in particular after vascular surgery; medicaments against artheriosclerosis; medicaments against restenosis; medicaments for tissue regeneration and tissue replacement; medicaments for cartilage regeneration; pharmaceutical and veterinary preparations for diabetes treatment; pharmaceutical and veterinary preparations for diabetes prophylaxis; implantable cartilage cells; implantable fat cells; adult and fetal stem cells for medical or diagnostic use; medicaments against obesity; pharmaceutical and veterinary preparations for pets, livestock, wild animals, breeding animals and zoo animals against tumors; gene therapeutic preparations against tumors; pharmaceutical and veterinary preparations for use in pets, livestock, wild animals, breeding animals and zoo animals against endometriosis; pharmaceutical and veterinary preparations pets, livestock, wild animals, breeding animals and zoo animals for tissue modeling for medical or diagnostic use; recombinant proteins for medical or diagnostic use; antibodies for medical or diagnostic use; DNA probes for medical diagnostic use; target oligonucleotides for medical or diagnostic use; antisense constructs; small molecules for medical or diagnostic use; anticalines for medical or diagnostic use; aptamers for medical or diagnostic use; spiegelmers for medical or diagnostic use; ribozymes for medical or diagnostic use; RNAi for medical or diagnostic use; specific oligonucleotides for medical or diagnostic use; DNA probes for medical or diagnostic use; single nucleotide polymorphism kits, also called SNP kits, comprised of proteins,peptides, nucleic acids or oligonucleotides for medical diagnostic use; expression profiling kits comprised of proteins, peptides, nucleic acids or oligonucleotides for medical diagnostic use, in particular by use of PCR immunohistochemistry or arrays; kits comprised of proteins, peptides, nucleic acids or oligonucleotides for medical diagnostic use for indication of specific therapy approaches, in particular FISH arrays, PCR and immunohistrochemistry; kits comprised of proteins, peptides, nucleic acids, or oligonucleotides for medical diagnostic use for detection of predisposition of particular diseases, in particular by using PCR, MALDITOF, and oligo hybridization; kits comprised of proteins, peptides, nucleic acids or oligonucleotides for medical diagnostic use for purification and/or separation of nucleic acids
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [__________ registration number __________ registered __________ with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.

Proposed: Class 005 for 183 Pharmaceutical and veterinary products, namely slimming, appetite suppressants, pharmaceuticals for acidosis therapeutics, analeptic antihypoxaemics; analgesics and antirheumatic drugs, pharmaceuticals functioning antihelminitics, antiallergics, antianemia drugs, antiarrhythmics, antibiotics and antiinfectives, antidementics, nootropics, antidiabetics, antidotes for the treatment of poisoning, antiemetics and antivertiginosics, antiepileptics, antihemorrhagics, antifibrinolyrics, hemostatics, antihypertonics, antihypoglycemics, antihypotonics, anticoagulants, antimycotics, pharmaceuticals functioning as antiparasitics, antiphlogistics, antitussives, expectorants for use in atherosclerosis, belneotherapeutics and pharmaceuticals for thermal therapy, pharmaceuticals functioning as beta receptor blocking agents, pharmaceuticals for calcium channel blocking and inhibiting of the renin angiotensin-system, pharmaceuticals functioning as broncholytics, antiasthmetics, cholagoguegics and for use in biliary tract therapeutics; pharmaceuticals functioning as cholinergics, corticoids, dermatics; all purpose disinfectants and antiseptics; pharmaceuticals functioning as dietetic agents and in alimentary therapeutics; pharmaceutical preparations functioning as diuretics, as agents for favoring blood flow, as withdrawal agents, as fibrinolytics, to treat gout, the flu and catarrhal fever; pharmaceuticals for the treatment of gynecological illnesses, namely, menstrual cramps, hemorrhoids, hepatitis; pharmaceuticals functioning as hypnotics and sedatives; pharmaceuticals to treat cardiac ailments; pharmaceuticals for use in caries and parodontosis; dental preparations, namely, dental abrasives; laxatives, pharmaceuticals functioning as antilipaemics, local anesthetics, neural therapeutics, gastro-intestinal preparations, pharmaceuticals to treat migraines; pharmaceutical preparations for use in mouth and pharyngeal therapeutics; pharmaceuticals for use as muscle relaxants; pharmaceuticals for the treatment of addiction to narcotics; pharmaceuticals for use in neuropathology; ophthalmic pharmaceuticals for treating blindness, conjunctivitis, cataract, glaucoma, retinal detachment, stye chalazion, dacryoadenitis, corneal clouding, keratitis, gasserian ganglionitis, vitreous opacity, amaurosis, retinopathy, central retinal artery occlusion, retinoblastoma, melanoma, optic neuritis, optic nerve atrophy; pharmaceuticals for use in osteoporosis and calcium metabolism modification; pharmaceuticals for the treatment of Parkinson's Disease and disturbances of the extrapyramidal system; pharmaceuticals for psychotropic, rhinologic and sinostic purposes; pharmaceuticals functioning as roborants and tonics; pharmaceuticals for use in thyroidal therapeutics; pharmaceuticals functioning as spasmolytics and inhibitors of thrombocyte aggregation; pharmaceuticals for the treatment of tuberculosis; pharmaceuticals functioning as alternants, urologics and venous agents; vitamins; pharmaceuticals for use as cytostatics and antineoplastic agents; veterinary preparations for the use in the treatment of distemper, macular degeneration, cancer, infertility, arthritis, dermatitis, infections, sepsis, cardiovascular diseases, artheriosclerosis, diabetis and obesity in pets, livestock, wild animals, breeding animals and zoo animals; dietetic substances adapted for medical use, namely food for elderly people who require medically restricted diets; medical plasters; materials for dressings, namely wound, burn and surgical dressings; all-purpose disinfectants; preparations for destroying vermin; fungicides for domestic or agricultural use; herbicides for domestic or agricultural use; wound medicines; wound ointment; wound spray; wound tincture; wound fleece; fleece against restenosis, in particular after vascular surgery; medicaments against artheriosclerosis; medicaments against restenosis; medicaments for tissue regeneration and tissue replacement; medicaments for cartilage regeneration; pharmaceutical and veterinary preparations for diabetes treatment; pharmaceutical and veterinary preparations for diabetes prophylaxis; implantable cartilage cells; implantable fat cells; adult and fetal stem cells for medical diagnostic or therapeutic use; medicaments against obesity; pharmaceutical and veterinary preparations for pets, livestock, wild animals, breeding animals and zoo animals against tumors; gene therapeutic preparations against tumors; pharmaceutical and veterinary preparations for use in pets, livestock, wild animals, breeding animals and zoo animals against endometriosis; pharmaceutical and veterinary preparations pets, livestock, wild animals, breeding animals and zoo animals for tissue modeling for medical diagnostic or therapeutic use; recombinant proteins for medical diagnostic or therapeutic use; antibodies for medical diagnostic or therapeutic use; DNA probes for medical diagnostic use; target oligonucleotides for medical diagnostic or therapeutic use; antisense constructs; small molecules for medical diagnostic or therapeutic use; anticalines for medical diagnostic or therapeutic use; aptamers for medical diagnostic or therapeutic use; spiegelmers for medical diagnostic or therapeutic use; ribozymes for medical diagnostic or therapeutic use; RNAi for medical diagnostic or therapeutic use; specific oligonucleotides for medical diagnostic or therapeutic use; DNA probes for medical diagnostic or therapeutic use; single nucleotide polymorphism kits known as SNP kits comprised of proteins, peptides, nucleic acids or oligonucleotides for medical diagnostic use; expression profiling kits comprised of proteins, peptides, nucleic acids or oligonucleotides for medical diagnostic use, in particular by use of PCR immunohistochemistry or arrays; kits comprised of proteins, peptides, nucleic acids or oligonucleotides for medical diagnostic use for indication of specific therapy approaches, in particular FISH arrays, PCR and immunohistrochemistry; kits comprised of proteins, peptides, nucleic acids, or oligonucleotides for medical diagnostic use for detection of predisposition for particular diseases, in particular by using PCR, MALDITOF, and oligo hybridization; kits comprised of proteins, peptides, nucleic acids or oligonucleotides for medical diagnostic use for purification and/or separation of nucleic acids
Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and will submit a copy of [__________ registration number __________ registered __________ with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate, before the application may proceed to registration. 15 U.S.C. Section 1126(e), as amended.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Scientific and technological services, namely, designing laboratory protocols, manufacturing protocols and clinical trial protocols; , industrial analysis and research services, namely in the field of biology, biotechnology, biochemistry, genetics, chemistry, medicine, veterinary medicine and pharmacy; design and development of computer hardware and software; scientific research in the nature of construction of viral vectors, namely, for medication; expression profile analysis, namely, by PGR, immunohistochemistry or array hybridization; mapping of genes, in particular, chromosomes and gene libraries; hybridizations of gene libraries; single nucleotidepolymorphism analysis, also called SNP analysis, performing FISH, arrays, PCR analysis, immunohistochemistry analysis; scientific research in the nature of detection of predisposition for developing particular diseases, in particular, by using PCR or oligo hybridization; designing computer programs for others for scientific andtechnological services and research; designing computer programs, namely, computer programs for industrial analysis and research activities; providing a data base on the subject of genetics, biology, pharmacy, biotechnology, medicine, veterinary medicine, biochemistry and chemistry by collecting, storing and offering of software, data, images, audio and video; providing non-downloadable software on the subject of chemical, pharmaceutical, biotechnological, biological, medical and veterinary research services, namely, legal or consulting services relating to exploitation concepts for biotechnological inventions and biotechnological know-how; scientific research the nature of design and realization of animal experiments and design and realization of therapy studies, and analysis for specific therapy approaches
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [__________ registration number __________ registered __________ with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.

Proposed: Class 042 for 183 Scientific and technological services, namely designing laboratory protocols, manufacturing protocols and clinical trial protocols; , industrial analysis and research services, namely in the field of biology, biotechnology, biochemistry, genetics, chemistry, medicine, veterinary medicine and pharmacy; design and development of computer hardware and software; scientific research in the nature of construction of viral vectors, namely for medication; expression profile analyses, namely by PCR, immunohistochemistry or array hybridization; mapping of genes, in particular of chromosomes and gene libraries; hybridizations of gene libraries; single nucleotide polymorphism kit known as SNP analyses; performing FISH, arrays, PCR analysis, immunohistochemistry analysis; scientific research in the nature of detection of predisposition for developing particular diseases, in particular by using PCR or oligo hybridization; designing computer programs for others for scientific and technological services and research; designing computer programs, namely computer programs for industrial analysis and research activities; providing a data base for scientific use on the subject of genetics, biology, pharmacy, biotechnology, medicine, veterinary medicine, biochemistry and chemistry by collecting, storing and offering of software, data, images, audio and video; providing non-downloadable software on the subject of chemical, pharmaceutical, biotechnological, biological, medical and veterinary research services, namely legal or consulting services relating to exploitation concepts for biotechnological inventions and biotechnological know-how; scientific research in the nature of design and realization of animal experiments and design and realization of therapy studies, and analysis for specific therapy approaches
Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and will submit a copy of [__________ registration number __________ registered __________ with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate, before the application may proceed to registration. 15 U.S.C. Section 1126(e), as amended.

ADDITIONAL STATEMENTS
Applicant thanks the Examining Attorney for her suggestions regarding amendments to the description of goods/services to place the application in condition for registration. Applicant has adopted the suggestions of the Examining Attorney and made further clarification to the description of services (i.e., reference to "for medical diagnostic or therapeutic use"). Applicant consulted the Manual of Acceptable Identifications of Goods and Services and respectfully submits that such language remains definite. Applicant respectfully requests that the amendments to the identification of goods/services be entered and that the application be approved for registration. If the Examining Attorney has any remaining questions or concerns, she is invited to contact Applicant's undersigned attorney via telephone (248-203-0825). Applicant also clarifies for the record that it has already submitted a copy of the foreign registration certificate upon which this U.S. application is based and that the 44(e) basis in connection with each class has previously been accepted.

SIGNATURE(S)
Declaration Signature
I hereby elect to bypass the submission of a signed declaration, because I believe a declaration is not required by the rules of practice. I understand that the examining attorney could still, upon later review, require a signed declaration.
Response Signature
Signature: /Michelle R. Osinski/     Date: 10/15/2008
Signatory's Name: Michelle R. Osinski
Signatory's Position: Associate Attorney

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 76463480
Internet Transmission Date: Wed Oct 15 15:21:20 EDT 2008
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-200810151521209
14666-76463480-4304650f312729cee62578059
9e39c94f-N/A-N/A-20081015150448762707