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. 77000844 has been amended as follows:

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

Thank you for examining this application.  As you requested, applicant has clarified that the educational services provided by applicant are workshops, classes, seminars, boot camps, and internships in the field of infectious diseases, biotechnology and global health.  Applicant submits that there is no likelihood of confusion between applicant's use of the mark BIOQUEST for its educational services and the registered mark BIOQUEST for educational kits, for the following reasons.  

(1)  The owner of the previously registered mark BIOQUEST, NASCO, uses the mark exclusively on educational kits for investigations/activities in the field of biological sciences.  Such kits include the BioQuest Inflatable Lung Kit, the BioQuest Hands-on Invertebrate Study Kit, and BioQuest Forest Floor Study Kit (see http://www.enasco.com/Static.do?page=sci_bioquestkits).  NASCO does not provide any kits in the field of infectious diseases, biotechnology, or global health and does not provide any educational services.  Conversely, applicant is a nonprofit research institute that does not sell any educational products and uses the mark exclusively for free educational services for teachers, students, and the community.  These educational services are supported by grants and donations and include workshops, classes, seminars, boot camps, and internships in the field of infectious diseases, biotechnology and global health (see http://www.sbribioquest.org/get-started/bioquest-programs.asp).   There is not likely to be any consumer confusion between a free service to the community and products that need to purchased.

(2)  NASCO sells over 65,000 products in 14 different educational areas over the web, through mail-order catalogues, and in a few retail stores in California and Wisconsin (http://www.enasco.com/Static.do?page=about_nasco_1).   Applicant’s workshops, classes, seminars, and internships are advertised by e-mail, listserves, and by word of mouth.   There is not likely to be any consumer confusion between applicant’s mark and the registered mark because they are used in different channels of trade.

(3)  NASCO has consented to the use of the mark BioQuest for applicant’s science education program (attached as miscellaneous document).  This indicates that the owner of the previously registered mark does not consider that there is a likelihood of confusion between it’s use of the mark for educational kits and applicant’s use of the mark for educational services.

For the foregoing reasons, applicant respectfully requests allowance of its application for registration of the mark BioQuest for educational services, namely workshops classes, seminars, boot camps, and internships in the field of infectious diseases, biotechnology, and global health.

Kind regards,
 
    Karen

Karen Blöchlinger, Ph.D.
Patent Counsel
Seattle Biomedical Research Institute
307 Westlake Avenue North, Suite 500
Seattle, WA 98109-5219, U.S.A.
Phone (206) 256 7142
Fax (206) 256 7229
E-mail karen.blochlinger@sbri.org



CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Educational services
Original Filing Basis:
Filing Basis: 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, 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 08/26/2003 and first used in commerce at least as early as 03/24/2004, and is now in use in such commerce.

Proposed: Class 041 for Educational services, namely, workshops, classes, seminars, boot camps, and internships in the field of biotechnology, infectious diseases, and global health.
Filing Basis: 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, 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 08/26/2003 and first used in commerce at least as early as 05/24/2004, and is now in use in such commerce.
APPLICANT AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Seattle Biomedial Research Institute, a corporation of Washington, having an address of Suite 500 307 Westlake Ave N Seattle, Washington United States 98109-5219, whose phone number is 206 256 7200, whose fax number is 206 265 7229.
Proposed: Seattle Biomedical Research Institute, NON-PROFIT ORGANIZATION legally organized under the laws of Washington, having an address of Suite 500 307 Westlake Ave N Seattle, Washington United States 98109-5219, whose phone number is 206 256 7200 and whose fax number is 206 265 7229.

ADDITIONAL STATEMENTS
The attached document illustrates that the owner of registered mark 1844361 has consented to the use of the mark BioQuest for applicant's science education program.
Original PDF file:
M-146129249238-181847019_._letter_from_NASCO__22sep03.pdf
Converted PDF file(s) (1 page)
Micellaneous File1

SIGNATURE(S)
Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant had 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. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii). If the applicant is seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date. 37 C.F.R. Secs. 2.34(a)(1)(i). 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. §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 application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §1051(b), he/she believes applicant to be entitled to use such mark in commerce; 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/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true.

Signature: /kb1aug07/      Date: 08/01/2007
Signatory's Name: Karen Blochlinger
Signatory's Position: Patent Counsel

Response Signature
Signature: /kb1aug07/     Date: 08/01/2007
Signatory's Name: Karen Blochlinger
Signatory's Position: Patent Counsel

The signatory has confirmed that he/she is not represented by either an authorized attorney or Canadian attorney/agent, and that he/she is either (1) the applicant or (2) a person(s) with legal authority to bind the applicant; and if an authorized U.S. attorney or Canadian attorney/agent previously represented him/her in this matter, either he/she has filed a signed revocation of power of attorney with the USPTO or the USPTO has granted the request of his/her prior representative to withdraw.

        
Serial Number: 77000844
Internet Transmission Date: Wed Aug 01 19:03:35 EDT 2007
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20070801190335
037958-77000844-380064c29c80452d357bdef7
35a5792bdb-N/A-N/A-20070801181847019640