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. 76668476 has been amended as follows:

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

1. Basis: A copy of the corresponding foreign registration is submitted herewith. If, and only, if, this registration puts the application in a condition to publish and register, then the Examining Attorney is authorized to delete Section 1(b) as an additional basis. 

2.  Identification of Goods:

The amended identification of goods is identical to that approved for publication in in classes 1 and 5 in connection  with Applicant's application for ALBACHECK, Serial Number: 79020026  : here is an excerpt from TARR:

Registration Number: (NOT AVAILABLE)

Mark


(words only): ALBACHECK

Standard Character claim: No

Current Status: Final review prior to publication has been completed, application will be published for opposition.

Date of Status: 2007-08-06

Filing Date: 2005-09-05

The Information will be/was published in the Official Gazette on 2007-09-11

Transformed into a National Application: No

Registration Date: (DATE NOT AVAILABLE)

Register: Principal

Law Office Assigned: LAW OFFICE 105

Attorney Assigned:
BROWN TINA Employee Location

Current Location: 650 -Publication And Issue Section

Date In Location: 2007-08-06

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LAST APPLICANT(S)/OWNER(S) OF RECORD

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1. The Common Services Agency, a Statutory Body acting on behalf of the Scottish Health Service on behalf of the Scottish National Blood Transfusion Service

Address:
The Common Services Agency, a Statutory Body acting on behalf of the Scottish Health Service on behalf of the Scottish National Blood Transfusion Service
Gyle Square 1 South Gyle Crescent
Edinburgh EH12 9EB
United Kingdom
Legal Entity Type: United Kingdom Statutory Body
State or Country Where Organized: United Kingdom

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GOODS AND/OR SERVICES

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International Class: 001
Class Status: Active
Diagnostic preparations and chemical reagents for non-medical purposes, namely diagnostic preparations in kit form for scientific, industrial or research use; diagnostic reagents and diagnostic reagents derived from blood for analytical, scientific, and industrial and research use; diagnostic assay preparations for scientific, industrial and research purposes
Basis: 66(a)
First Use Date: (DATE NOT AVAILABLE)
First Use in Commerce Date: (DATE NOT AVAILABLE)

International Class: 005
Class Status: Active
Chemical reagents for clinical laboratory purposes, namely, diagnostic reagents derived from blood or in vitro culture; diagnostic reagents for medical laboratory use; chemical reagents for clinical laboratory diagnosis and analysis; diagnostic assay preparations and substances for clinical laboratory use; diagnostic reagents for testing blood and body samples in clinical laboratories; diagnostic reagents for laboratory control of in vitro diagnostic tests
Basis: 66(a)
First Use Date: (DATE NOT AVAILABLE)
First Use in Commerce Date: (DATE NOT AVAILABLE)

International Class: 042
Class Status: Active
Medical research and advisory services; in vitro diagnostic services; clinical chemistry services, namely, clinical research in the field of chemistry; immunology and virology laboratory services, namely, laboratory research in the fields of immunology and virology
Basis: 66(a)
First Use Date: (DATE NOT AVAILABLE)
First Use in Commerce Date: (DATE NOT AVAILABLE)

International Class: 044
Class Status: Active
Medical clinical diagnostic services; medical in vitro diagnostic services; blood bank services; haematology and services, namely, medical services in the field of haematology; Medical testing in the field of haematology; homeostasis services, namely, medical services in the field of homeostasis; medical testing in the field of homeostasis
Basis: 66(a)


CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 001 for Diagnostic preparations in kit form; diagnostic products in kit form for test use; but not including the aforesaid goods in the form of reagent strip chemical test paper for determining constituents in and parameters of pool and spa water, diagnostic reagents and diagnostic reagents derived from blood for analytical, scientific and industrial use; diagnostic assay preparations for scientific, industrial and research purposes
Original Filing Basis:
Filing Basis: 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 as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [ __________ application number __________ filed 10/25/2006]. 15 U.S.C.Section 1126(d), as amended.

Proposed: Class 001 for Diagnostic preparations and chemical reagents for non-medical purposes, namely diagnostic preparations in kit form for scientific, industrial or research use; diagnostic reagents and diagnostic reagents derived from blood for analytical, scientific, and industrial and research use; diagnostic assay preparations for scientific, industrial and research purposes
Filing Basis: 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 as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [ __________ application number __________ filed 10/25/2006]. 15 U.S.C.Section 1126(d), as amended.

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 [ United Kingdom registration number 2436678 registered 10/25/2006 with a renewal date of __________ and an expiration date of 10/26/2016 ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.
Original PDF file:
FRU0-21614181254-160002356_._ALBAQCHEKREG.JPEG.pdf
Converted PDF file(s) (1 page)
Foreign Registration-1

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 005 for Diagnostic reagents derived from blood or in vitro culture; diagnostic reagents for medical use; chemical reagents for medical diagnosis and analysis; diagnostic assay preparations and substances for clinical and medical use; diagnostic reagents for testing blood and body samples; diagnostic reagents for control of in vitro diagnostic test; pharmaceutical and medicinal preparations, substances and vaccines for human use
Original Filing Basis:
Filing Basis: 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 as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Based on Foreign Application: 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 a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

Proposed: Class 005 for Chemical reagents for clinical laboratory purposes, namely, diagnostic reagents derived from blood or in vitro culture; diagnostic reagents for medical laboratory use; chemical reagents for clinical laboratory diagnosis and analysis; diagnostic assay preparations and substances for clinical laboratory use; diagnostic reagents for testing blood and body samples in clinical laboratories; diagnostic reagents for laboratory control of in vitro diagnostic tests
Filing Basis: 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 as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Based on Foreign Application: 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 a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

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.

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: /Janet F. Satterthwaite/     Date: 08/30/2007
Signatory's Name: Janet F. Satterthwaite
Signatory's Position: Attorney of record

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: 76668476
Internet Transmission Date: Thu Aug 30 16:12:26 EDT 2007
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XXX-200708301612262
86452-76668476-380a8ecdb6cf7313425a157ea
49140b89d-N/A-N/A-20070830160002356642