Response to Office Action

COBAS

ROCHE DIAGNOSTICS OPERATIONS, INC.

Response to Office Action

PTO Form 1966 (Rev 9/2002)
OMB Control #0651-0050 (Exp. 04/30/2006)

Response to Office Action


The table below presents the data as entered.

Input Field
Entered
SERIAL NUMBER 76512726
MARK SECTION (no change)
GOODS AND/OR SERVICES SECTION (1st class)(class deleted)
INTERNATIONAL CLASS 001
DESCRIPTION
Chemical, biochemical and biological products and reagents for use in industry and science as well as in agriculture, horticulture and forestry
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (2nd class)(current)
INTERNATIONAL CLASS 005
DESCRIPTION
Chemical, biochemical and biological products and reagents for medical and veterinary use
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (2nd class)(proposed)
INTERNATIONAL CLASS 005
DESCRIPTION Diagnostic reagents for clinical or medical laboratory use
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (3rd class)(current)
INTERNATIONAL CLASS 009
DESCRIPTION
Scientific instruments and apparatus for use in research, science, industry, agriculture, horticulture and forestry, namely, laboratory instruments for PCR analysis, dispensers for taking up, treatment, dosage and distribution of receptacles, capillary tubes, cartridges, control solutions, pipettes, buffers and reagents; disposable articles for laboratory instruments, namely, receptacles, capillary tubes, cartridges, pipettes and container; computer software and computer hardware for use with laboratory instruments
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (3rd class)(proposed)
INTERNATIONAL CLASS 009
DESCRIPTION
Scientific instruments and apparatus for research purposes, namely, laboratory instruments for polymerase chain reaction, also known as PCR, analysis; dispensers for taking up, treatment, dosage and distribution of receptacles, capillary tubes, cartridges, control solutions, pipettes, buffers and reagents; disposable articles for laboratory instruments, namely, receptacles, capillary tubes, cartridges, pipettes and containers; computer software and computer hardware for use with laboratory instruments, namely, for use in data analysis and database management
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (4th class)(class deleted)
INTERNATIONAL CLASS 010
DESCRIPTION
Medical and veterinary apparatus for diagnostic purposes, namely, apparatus for PCR analysis
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (5th class)(current)
INTERNATIONAL CLASS 016
DESCRIPTION Printed matter
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (5th class)(proposed)
INTERNATIONAL CLASS 016
DESCRIPTION
Printed matter, namely, instructional manuals, pamphlets and brochures for use with diagnostic reagents, scientific instruments and apparatus and laboratory apparatus for research purposes; diagnostic reagents, medical and veterinary apparatus for diagnostic purposes, namely, instruments for polymerase chain reaction, also known as PCR, analysis; dispensers for taking up, treatment, dosage and distribution of receptacles, capillary tubes, cartridges, control solutions, pipettes, buffers and reagents; disposable articles for laboratory instruments, namely, receptacles, capillary tubes, cartridges, pipettes and containers
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (6th class)(current)
INTERNATIONAL CLASS 042
DESCRIPTION
Consulting services for others relating to the establishment of a PCR laboratory
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (6th class)(proposed)
INTERNATIONAL CLASS 042
DESCRIPTION
Technical scientific consulting services for others relating to the establishment of a laboratory for the performance of polymerase chain reaction, also known as PCR, analysis
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (7th class)(class added)
INTERNATIONAL CLASS 035
DESCRIPTION
Business consulting services for others relating to the establishment of a laboratory for the performance of polymerase chain reaction, also known as PCR, analysis
FILING BASIS Section 1(b)
SIGNATURE SECTION
SIGNATURE /dmy/
SIGNATORY NAME D. Michael Young
SIGNATORY POSITION Attorney for Applicant
SIGNATORY DATE 01/07/2004
SIGNATURE /dmy/
SIGNATORY NAME D. Michael Young
SIGNATORY POSITION Attorney for Applicant
SIGNATORY DATE 01/07/2004
FILING INFORMATION SECTION
SUBMIT DATE Fri Jan 09 14:30:09 EST 2004
TEAS STAMP USPTO/OA-XXXXXXXXXXX-2004
0109143009336062-76512726
-200c29992df723652595a55d
e193fb4ed-N-N-20040109142
904571270



PTO Form 1966 (Rev 9/2002)
OMB Control #0651-0050 (Exp. 04/30/2006)

Response to Office Action


To the Commissioner for Trademarks:

Application serial no. 76512726 is amended as follows:    
        
Classification and Listing of Goods/Services
Applicant hereby deletes the following class of goods/services from the application.
Class 001 for Chemical, biochemical and biological products and reagents for use in industry and science as well as in agriculture, horticulture and forestry
Applicant hereby deletes the following class of goods/services from the application.
Class 010 for Medical and veterinary apparatus for diagnostic purposes, namely, apparatus for PCR analysis
Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 005 for Chemical, biochemical and biological products and reagents for medical and veterinary use
Original Filing Basis: 1(b).
Proposed: Class 005 for Diagnostic reagents for clinical or medical laboratory use
Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 009 for Scientific instruments and apparatus for use in research, science, industry, agriculture, horticulture and forestry, namely, laboratory instruments for PCR analysis, dispensers for taking up, treatment, dosage and distribution of receptacles, capillary tubes, cartridges, control solutions, pipettes, buffers and reagents; disposable articles for laboratory instruments, namely, receptacles, capillary tubes, cartridges, pipettes and container; computer software and computer hardware for use with laboratory instruments
Original Filing Basis: 1(b).
Proposed: Class 009 for Scientific instruments and apparatus for research purposes, namely, laboratory instruments for polymerase chain reaction, also known as PCR, analysis; dispensers for taking up, treatment, dosage and distribution of receptacles, capillary tubes, cartridges, control solutions, pipettes, buffers and reagents; disposable articles for laboratory instruments, namely, receptacles, capillary tubes, cartridges, pipettes and containers; computer software and computer hardware for use with laboratory instruments, namely, for use in data analysis and database management
Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 016 for Printed matter
Original Filing Basis: 1(b).
Proposed: Class 016 for Printed matter, namely, instructional manuals, pamphlets and brochures for use with diagnostic reagents, scientific instruments and apparatus and laboratory apparatus for research purposes; diagnostic reagents, medical and veterinary apparatus for diagnostic purposes, namely, instruments for polymerase chain reaction, also known as PCR, analysis; dispensers for taking up, treatment, dosage and distribution of receptacles, capillary tubes, cartridges, control solutions, pipettes, buffers and reagents; disposable articles for laboratory instruments, namely, receptacles, capillary tubes, cartridges, pipettes and containers
Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 042 for Consulting services for others relating to the establishment of a PCR laboratory
Original Filing Basis: 1(b).
Proposed: Class 042 for Technical scientific consulting services for others relating to the establishment of a laboratory for the performance of polymerase chain reaction, also known as PCR, analysis
        
Applicant hereby adds the following class of goods/services to the application:
New:
Class 035 for Business consulting services for others relating to the establishment of a laboratory for the performance of polymerase chain reaction, also known as PCR, analysis
Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services. (15 U.S.C. Section 1051(b)).
Declaration Signature
The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this amendment/response on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, and that the mark is in use in commerce, and was in use in commerce on the application filing date, on or in connection with the goods and/or services listed in the application; or, if the application is being filed under 15 U.S.C. Section 1051(b), 1126(d) or 1126(e), he/she believes applicant to be entitled to use such mark in commerce, and that the applicant has a bona fide intention, and had a bona fide intention on the application filing date, to use the mark in commerce on or in connection with the goods and/or services listed in the application; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods and/or services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true; and that all statements made on information and belief are believed to be true as set forth within the original application and/or the submitted amendment/response.
        
Signature: /dmy/      Date: 01/07/2004
Signatory's Name: D. Michael Young
Signatory's Position: Attorney for Applicant
        
Response Signature
        
Signature: /dmy/     Date: 01/07/2004
Signatory's Name: D. Michael Young
Signatory's Position: Attorney for Applicant
        
        
        
Serial Number: 76512726
Internet Transmission Date: Fri Jan 09 14:30:09 EST 2004
TEAS Stamp: USPTO/OA-XXXXXXXXXXX-2004010914300933606
2-76512726-200c29992df723652595a55de193f
b4ed-N-N-20040109142904571270




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