Response to Office Action

CELGENE

Celgene Corporation

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 76515116
MARK SECTION (no change)
GOODS AND/OR SERVICES SECTION (1st class)(current)
INTERNATIONAL CLASS 042
DESCRIPTION
research in the fields of chemicals and pharmaceuticals; research and testing services in the fields of chemicals and pharmaceuticals; research and development of new products for others in the fields of chemicals and pharmaceuticals; providing clinical laboratory testing services, namely pharmacogenetic tests, predictive medical tests, personalized medical tests, gene sequencing-based tests and genotyping based on the assessment, development and application of genomic discoveries in the pharmaceutical, informatics and clinical diagnostic industries; providing medical and pharmaceutical information services in all media; scientific research services; design for others in the field of DNA-based assays, DNA sequencing protocols, immunoassay and methods for drug discovery; scientific research, namely, development of pharmaceuticals or diagnostic methods; agrochemical product development for others; educational classes and programs in the field of thalidomide and safety issues pertaining to thalidomide, and distribution of written materials therewith; scientific research services
FILING BASIS Section 1(a)
        FIRST USE ANYWHERE DATE 09/29/1998
        FIRST USE IN COMMERCE DATE 09/29/1998
GOODS AND/OR SERVICES SECTION (1st class)(proposed)
INTERNATIONAL CLASS 042
DESCRIPTION
research in the fields of chemicals and pharmaceuticals; product safety testing in the fields of chemicals and pharmaceuticals; research and dev4elopment of new products for others in the fields of chemicals and pharmaceuticals; providing clinical laboratory testing services, namely pharmacogenetic tests, predictive medical tests, personalized medical tests, gene sequencing-based tests and genotyping base don the assessment, development and application of genomic discoveries in the pharmaceutical, informatics and clinical diagnostic industries; providing medical and pharmaceutical research information; scientific research services; design for others in the field of DNA-based assays, DNA sequencing protocols, immunoassay and methods for drug discovery; scientific research, namely, development of pharmaceuticals or diagnostic methods for others; agrochemical product development for others
FILING BASIS Section 1(a)
        FIRST USE ANYWHERE DATE 12/31/1986
        FIRST USE IN COMMERCE DATE 12/31/1986
GOODS AND/OR SERVICES SECTION (2nd class)(current)
INTERNATIONAL CLASS 001
DESCRIPTION
biochemical catalysts for use in medical research; biological preparations for medical purposes, namely for use in the research of immunological, inflammatory and neurological disorders; catalysts for use in the manufacture of pharmaceuticals; chemical preparations, namely, chemical reagents for scientific purposes; enzyme preparations for industrial purposes; enzymes for industrial purposes; proteins for industrial and human consumption, namely animal proteins, genetic testing reagents for scientific laboratory use, namely, DNA probes; chemical preparations used to protect crops in the agricultural and horticultural field
FILING BASIS Section 1(a)
        FIRST USE ANYWHERE DATE 06/28/2001
        FIRST USE IN COMMERCE DATE 06/28/2001
GOODS AND/OR SERVICES SECTION (2nd class)(proposed)
INTERNATIONAL CLASS 001
DESCRIPTION
biochemical catalysts for use in medical research; biological preparations for medical purposes, namely for use in the research of immunological, inflammatory and neurological disorders; catalysts for use in the manufacture of pharmaceuticals; chemical preparations, namely, chemical reagents for scientific purposes; enzyme preparations for industrial purposes; enzymes for industrial purposes; proteins for industrial and human consumption, namely animal proteins, genetic testing reagents for scientific laboratory use, namely, DNA probes; chemical preparations used to protect crops in the agricultural and horticultural field
FILING BASIS Section 1(a)
        FIRST USE ANYWHERE DATE 12/31/1986
        FIRST USE IN COMMERCE DATE 12/31/1986
GOODS AND/OR SERVICES SECTION (3rd class)(current)
INTERNATIONAL CLASS 005
DESCRIPTION
biological preparations for medical purposes, namely for use in the treatment of immunological, inflammatory and neurological disorders; pharmaceuticals, genomic and biological agents for use in the fields of immunological, inflammatory and neurological disorders for the identification, analysis, prevention, detection, diagnosis, prognosis and treatment; biological preparations for use in medicinal tests, inoculations, and treatment of diseases, namely, immunological, inflammatory and neurological disorders and cancer; culture media, namely, tissue culture media and bacteriogical culture media for medical use; medicinal and biological preparations for pharmaceutical, clinical or medical laboratory use, namely, preparations for the inhibition of gene expression working at DNA, transcription, RNA or translation processes, and modulation of immune system
FILING BASIS Section 1(a)
        FIRST USE ANYWHERE DATE 09/29/1998
        FIRST USE IN COMMERCE DATE 09/29/1998
GOODS AND/OR SERVICES SECTION (3rd class)(proposed)
INTERNATIONAL CLASS 005
DESCRIPTION
biological preparations for medical purposes, namely for use in the treatment of immunological, inflammatory and neurological disorders; pharmaceuticals, genomic and biological agents for use in the fields of immunological, inflammatory and neurological disorders for the identification, analysis, prevention, detection, diagnosis, prognosis and treatment; biological preparations for use in medicinal tests, inoculations, and treatment of diseases, namely, immunological, inflammatory and neurological disorders and cancer; culture media, namely, tissue culture media and bacteriogical culture media for medical use; medicinal and biological preparations for pharmaceutical, clinical or medical laboratory use, namely, preparations for the inhibition of gene expression working at DNA, transcription, RNA or translation processes, and modulation of immune system
FILING BASIS Section 1(a)
        FIRST USE ANYWHERE DATE 12/31/1986
        FIRST USE IN COMMERCE DATE 12/31/1986
GOODS AND/OR SERVICES SECTION (4th class)(current)
INTERNATIONAL CLASS 040
DESCRIPTION
manufacturing pharmaceutical products for others; custom synthesis of DNA to the order and specification of others; custom manufacturing services, namely, manufacturing agrochemicals to the specification of others
FILING BASIS Section 1(a)
        FIRST USE ANYWHERE DATE 09/29/1998
        FIRST USE IN COMMERCE DATE 09/29/1998
GOODS AND/OR SERVICES SECTION (4th class)(proposed)
INTERNATIONAL CLASS 040
DESCRIPTION
manufacturing pharmaceutical products for others; custom synthesis of DNA to the order and specification of others; custom manufacturing services, namely, manufacturing agrochemicals to the specification of others
FILING BASIS Section 1(a)
        FIRST USE ANYWHERE DATE 12/31/1986
        FIRST USE IN COMMERCE DATE 12/31/1986
GOODS AND/OR SERVICES SECTION (5th class)(class added)
INTERNATIONAL CLASS 041
DESCRIPTION
educational classes and programs in the field of thalidomide and safety issues pertaining to thalidomide, and distribution of written materials therewith
FILING BASIS Section 1(a)
        FIRST USE ANYWHERE DATE 12/31/1986
        FIRST USE IN COMMERCE DATE 12/31/1986
PAYMENT SECTION
NUMBER OF CLASSES 1
SUBTOTAL AMOUNT 335
TOTAL AMOUNT 335
SIGNATURE SECTION
SIGNATURE /Camille M. Miller/
SIGNATORY NAME Camille M. Miller
SIGNATORY POSITION Attorney
SIGNATORY DATE 12/19/2003
SIGNATURE /Camille M. Miller/
SIGNATORY NAME Camille M. Miller
SIGNATORY POSITION Attorney
SIGNATORY DATE 12/19/2003
FILING INFORMATION SECTION
SUBMIT DATE Fri Dec 19 16:15:46 EST 2003
TEAS STAMP USPTO/OA-XXXXXXXXXXX-2003
1219161546698104-76515116
-200d2ce1eb012b5a8eaf4f8d
ec2a337ab53DA225-20031219
161414452464



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. 76515116 is amended as follows:    
        
Classification and Listing of Goods/Services
Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 042 for research in the fields of chemicals and pharmaceuticals; research and testing services in the fields of chemicals and pharmaceuticals; research and development of new products for others in the fields of chemicals and pharmaceuticals; providing clinical laboratory testing services, namely pharmacogenetic tests, predictive medical tests, personalized medical tests, gene sequencing-based tests and genotyping based on the assessment, development and application of genomic discoveries in the pharmaceutical, informatics and clinical diagnostic industries; providing medical and pharmaceutical information services in all media; scientific research services; design for others in the field of DNA-based assays, DNA sequencing protocols, immunoassay and methods for drug discovery; scientific research, namely, development of pharmaceuticals or diagnostic methods; agrochemical product development for others; educational classes and programs in the field of thalidomide and safety issues pertaining to thalidomide, and distribution of written materials therewith; scientific research services
Original Filing Basis: 1(a).
Proposed: Class 042 for research in the fields of chemicals and pharmaceuticals; product safety testing in the fields of chemicals and pharmaceuticals; research and dev4elopment of new products for others in the fields of chemicals and pharmaceuticals; providing clinical laboratory testing services, namely pharmacogenetic tests, predictive medical tests, personalized medical tests, gene sequencing-based tests and genotyping base don the assessment, development and application of genomic discoveries in the pharmaceutical, informatics and clinical diagnostic industries; providing medical and pharmaceutical research information; scientific research services; design for others in the field of DNA-based assays, DNA sequencing protocols, immunoassay and methods for drug discovery; scientific research, namely, development of pharmaceuticals or diagnostic methods for others; agrochemical product development for others
Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, or the applicant's predecessor in interest used the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 12/31/1986 and first used in commerce at least as early as 12/31/1986, and is now in use in such commerce.
        
Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 001 for biochemical catalysts for use in medical research; biological preparations for medical purposes, namely for use in the research of immunological, inflammatory and neurological disorders; catalysts for use in the manufacture of pharmaceuticals; chemical preparations, namely, chemical reagents for scientific purposes; enzyme preparations for industrial purposes; enzymes for industrial purposes; proteins for industrial and human consumption, namely animal proteins, genetic testing reagents for scientific laboratory use, namely, DNA probes; chemical preparations used to protect crops in the agricultural and horticultural field
Original Filing Basis: 1(a).
Proposed: Class 001 for biochemical catalysts for use in medical research; biological preparations for medical purposes, namely for use in the research of immunological, inflammatory and neurological disorders; catalysts for use in the manufacture of pharmaceuticals; chemical preparations, namely, chemical reagents for scientific purposes; enzyme preparations for industrial purposes; enzymes for industrial purposes; proteins for industrial and human consumption, namely animal proteins, genetic testing reagents for scientific laboratory use, namely, DNA probes; chemical preparations used to protect crops in the agricultural and horticultural field
Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, or the applicant's predecessor in interest used the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 12/31/1986 and first used in commerce at least as early as 12/31/1986, and is now in use in such commerce.
        
Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 005 for biological preparations for medical purposes, namely for use in the treatment of immunological, inflammatory and neurological disorders; pharmaceuticals, genomic and biological agents for use in the fields of immunological, inflammatory and neurological disorders for the identification, analysis, prevention, detection, diagnosis, prognosis and treatment; biological preparations for use in medicinal tests, inoculations, and treatment of diseases, namely, immunological, inflammatory and neurological disorders and cancer; culture media, namely, tissue culture media and bacteriogical culture media for medical use; medicinal and biological preparations for pharmaceutical, clinical or medical laboratory use, namely, preparations for the inhibition of gene expression working at DNA, transcription, RNA or translation processes, and modulation of immune system
Original Filing Basis: 1(a).
Proposed: Class 005 for biological preparations for medical purposes, namely for use in the treatment of immunological, inflammatory and neurological disorders; pharmaceuticals, genomic and biological agents for use in the fields of immunological, inflammatory and neurological disorders for the identification, analysis, prevention, detection, diagnosis, prognosis and treatment; biological preparations for use in medicinal tests, inoculations, and treatment of diseases, namely, immunological, inflammatory and neurological disorders and cancer; culture media, namely, tissue culture media and bacteriogical culture media for medical use; medicinal and biological preparations for pharmaceutical, clinical or medical laboratory use, namely, preparations for the inhibition of gene expression working at DNA, transcription, RNA or translation processes, and modulation of immune system
Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, or the applicant's predecessor in interest used the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 12/31/1986 and first used in commerce at least as early as 12/31/1986, and is now in use in such commerce.
        
Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 040 for manufacturing pharmaceutical products for others; custom synthesis of DNA to the order and specification of others; custom manufacturing services, namely, manufacturing agrochemicals to the specification of others
Original Filing Basis: 1(a).
Proposed: Class 040 for manufacturing pharmaceutical products for others; custom synthesis of DNA to the order and specification of others; custom manufacturing services, namely, manufacturing agrochemicals to the specification of others
Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, or the applicant's predecessor in interest used the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 12/31/1986 and first used in commerce at least as early as 12/31/1986, and is now in use in such commerce.
        
        
Applicant hereby adds the following class of goods/services to the application:
New:
Class 041 for educational classes and programs in the field of thalidomide and safety issues pertaining to thalidomide, and distribution of written materials therewith
        
Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, or the applicant's predecessor in interest used the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used on 12/31/1986 and first used in commerce on 12/31/1986, and is now in use in such commerce.
        
Fees
Additional fee(s) in the amount of $335 is being submitted.
        
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: /Camille M. Miller/      Date: 12/19/2003
Signatory's Name: Camille M. Miller
Signatory's Position: Attorney
        
Response Signature
        
Signature: /Camille M. Miller/     Date: 12/19/2003
Signatory's Name: Camille M. Miller
Signatory's Position: Attorney
        
        
        
RAM Sale Number: 225
RAM Accounting Date: 12/22/2003
        
Serial Number: 76515116
Internet Transmission Date: Fri Dec 19 16:15:46 EST 2003
TEAS Stamp: USPTO/OA-XXXXXXXXXXX-2003121916154669810
4-76515116-200d2ce1eb012b5a8eaf4f8dec2a3
37ab53DA225-20031219161414452464



Response to Office Action [inode/x-empty]