Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 77673768 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 Chemical products for use in industry and science; enzymes; chemical products for in-vitro use in laboratories and for analysis; micro-organisms, viruses, cell cultures, plasmids and cultures of micro-organisms, nucleic acid sequences, cloning vehicles, chemical products for use in biotechnology, research and development and recombinant nucleic acid variations thereof, all for in-vivo 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)).

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 [European Community application number 8110744 filed 02/18/2009]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Chemical products for use in industry and science; Chemicals for use in industry and science; enzymes; enzymes for scientific and research purposes; chemical products for in-vitro use in laboratories and for analysis; biochemicals, namely, precursors for in vitro genetic engineering use; micro-organisms, viruses, cell cultures, plasmids and cultures of micro-organisms, nucleic acid sequences, cloning vehicles, chemical products for use in biotechnology, research and development and recombinant nucleic acid variations thereof, all for in-vivo use; polypeptides for in vitro research use, monoclonal antibodies for in vitro scientific or research use; chemicals for use in the purification of proteins for in vitro use; diagnostic reagents for in vitro use in biochemistry, clinical chemistry and microbiology; laboratory chemicals, namely, an antibody reagent used for the detection of antigens in cell and tissue analysis for in vitro diagnostic use; micro-organisms for laboratory and scientific research use, viruses for laboratory and scientific research use, cell cultures for laboratory and scientific research use, plasmids and cultures of micro-organisms for laboratory and scientific research use, nucleic acid sequences for laboratory and scientific research use, cloning vehicles in the nature of plasmids, microbes and chemical reagents for DNA cloning for laboratory and scientific research use, chemicals for laboratory, scientific and biotechnology research and development and recombinant nucleic acid variations thereof for laboratory and scientific research useClass 001 for Chemicals for use in industry and science; enzymes for scientific and research purposes; biochemicals, namely, precursors for in vitro genetic engineering use; polypeptides for in vitro research use, monoclonal antibodies for in vitro scientific or research use; chemicals for use in the purification of proteins for in vitro use; diagnostic reagents for in vitro use in biochemistry, clinical chemistry and microbiology; laboratory chemicals, namely, an antibody reagent used for the detection of antigens in cell and tissue analysis for in vitro diagnostic use; micro-organisms for laboratory and scientific research use, viruses for laboratory and scientific research use, cell cultures for laboratory and scientific research use, plasmids and cultures of micro-organisms for laboratory and scientific research use, nucleic acid sequences for laboratory and scientific research use, cloning vehicles in the nature of plasmids, microbes and chemical reagents for DNA cloning for laboratory and scientific research use, chemicals for laboratory, scientific and biotechnology research and development and recombinant nucleic acid variations thereof for laboratory and scientific research use
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 [European Community application number 8110744 filed 02/18/2009]. 15 U.S.C.Section 1126(d), as amended.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 005 for Therapeutic and prophylactic products; gene therapy products; pharmaceutical substances and preparations; small molecules, vaccines, biologics, enzymes and enzyme preparations, pharmaceuticals for the delivery of genes to cells, all for medical purposes; viral, retroviral and non-viral vectors; viral, retroviral and non-viral vector manufacturing preparations; biochemical and chemical products for use in medical science; pharmaceutical and biochemical preparations for the treatment or prevention of cancer, infectious disease, fungal diseases, disease caused by parasites, eye disease, diseases of the central and peripheral nervous systems, cardiovascular disease, diseases affecting the immune system, inflammatory diseases, inherited disease, single gene disorders, diseases of the mouth, teeth, skin, hair and ear, bone and blood diseases and reproductive system disorders; pharmaceutical and biochemical preparations for contraceptive 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 [European Community application number 8110744 filed 02/18/2009]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Therapeutic and prophylactic products; Gene therapy and prophylactic products namely, gene delivery pharmaceuticals; gene therapy products; pharmaceutical substances and preparations; small molecules, vaccines, biologics, enzymes and enzyme preparations all for medical treatment purposes; small molecules, vaccines, biologics, enzymes and enzyme preparations, pharmaceuticals for the delivery of genes to cells, all for medical purposes; pharmaceuticals for medical purposes for the delivery of genes to cells; viral, retroviral and non-viral vectors; viral, retroviral and non-viral vectors, all for medical purposes in gene therapy; viral, retroviral and non-viral vector manufacturing preparations; biochemical and chemical preparations for medical treatment purposes; biochemical and chemical products for use in medical science; pharmaceutical and biochemical preparations for the treatment or prevention of cancer, infectious disease, fungal diseases, diseases caused by parasites, namely, hookworms, pinworms, roundworms, tapeworms, flukes, giardia, entameoba, cryptosporidium, toxoplasmosis, sleeping sickness, trichuriasis, isosporiasis, malaria, parasitic skin disease and leishmaniasis, eye diseases, diseases of the central and peripheral nervous systems, namely, ataxia, dementia, epilepsy, Alzheimer's, cerebral palsy, stroke, motor neuron disease, Parkinson's disease, spinal injury, avulsion injury and peripheral neuropathies, cardiovascular disease, diseases affecting the immune system, namely, cancer, Crohn's disease, AIDS, HIV, lupus, celiac disease, diabetes, Grave's disease, Guillain-Barré syndrome, Addison's disease, Hashimoto's disease, myasthenia gravis, narcolepsy, pernicious anaemia, rheumatoid arthritis, psoriasis, ulcerative colitis, immunodeficiency and inflammatory diseases, inherited diseases, namely, genetic disorders, hemophilia, cystic fibrosis and Huntingdon's, single gene disorders, bone and blood diseases and reproductive system disorders; pharmaceutical and biochemical preparations for the treatment or prevention of cancer, infectious disease, fungal diseases, disease caused by parasites, eye disease, diseases of the central and peripheral nervous systems, cardiovascular disease, diseases affecting the immune system, inflammatory diseases, inherited disease, single gene disorders, diseases of the mouth, teeth, skin, hair and ear, bone and blood diseases and reproductive system disorders; pharmaceutical and biochemical preparations for contraceptive purposesClass 005 for Gene therapy and prophylactic products namely, gene delivery pharmaceuticals; pharmaceutical substances and preparations; small molecules, vaccines, biologics, enzymes and enzyme preparations all for medical treatment purposes; pharmaceuticals for medical purposes for the delivery of genes to cells; viral, retroviral and non-viral vectors, all for medical purposes in gene therapy; biochemical and chemical preparations for medical treatment purposes; pharmaceutical and biochemical preparations for the treatment or prevention of cancer, infectious disease, fungal diseases, diseases caused by parasites, namely, hookworms, pinworms, roundworms, tapeworms, flukes, giardia, entameoba, cryptosporidium, toxoplasmosis, sleeping sickness, trichuriasis, isosporiasis, malaria, parasitic skin disease and leishmaniasis, eye diseases, diseases of the central and peripheral nervous systems, namely, ataxia, dementia, epilepsy, Alzheimer's, cerebral palsy, stroke, motor neuron disease, Parkinson's disease, spinal injury, avulsion injury and peripheral neuropathies, cardiovascular disease, diseases affecting the immune system, namely, cancer, Crohn's disease, AIDS, HIV, lupus, celiac disease, diabetes, Grave's disease, Guillain-Barré syndrome, Addison's disease, Hashimoto's disease, myasthenia gravis, narcolepsy, pernicious anaemia, rheumatoid arthritis, psoriasis, ulcerative colitis, immunodeficiency and inflammatory diseases, inherited diseases, namely, genetic disorders, hemophilia, cystic fibrosis and Huntingdon's, single gene disorders, bone and blood diseases and reproductive system disorders; pharmaceutical and biochemical preparations for contraceptive 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 [European Community application number 8110744 filed 02/18/2009]. 15 U.S.C.Section 1126(d), as amended.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 010 for Instruments and apparatus for the administration of pharmaceutical, gene therapy and/or vaccine preparations and substances, pre-filled vials; syringes and injectors for medical 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)).

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:
Tracked Text Description: Instruments and apparatus for the administration of pharmaceutical, gene therapy and/or vaccine preparations and substances, pre-filled vials; Instruments and apparatus for the administration of pharmaceutical, gene therapy and/or vaccine preparations and substances, namely, pre-filled vials, syringes and injectors for medical purposes; syringes and injectors for medical purposesClass 010 for Instruments and apparatus for the administration of pharmaceutical, gene therapy and/or vaccine preparations and substances, namely, pre-filled vials, syringes and injectors for medical 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)).

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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Scientific, pharmaceutical and medical research and development; genetic engineering services, biotechnology services, advisory services relating to gene therapy products and clinical trials, conducting clinical trials
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:
Tracked Text Description: Scientific, pharmaceutical and medical research and development; genetic engineering services, biotechnology services, advisory services relating to gene therapy products and clinical trials, conducting clinical trials; genetic engineering services, biotechnology services, namely, research development for new products in the field of biotechnology, advisory services relating to gene therapy products and clinical trials, conducting clinical trialsClass 042 for Scientific, pharmaceutical and medical research and development; genetic engineering services, biotechnology services, namely, research development for new products in the field of biotechnology, advisory services relating to gene therapy products and clinical trials, conducting clinical trials
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 044 for Medical services; advisory services relating to vaccination regimes; advisory services relating to the treatment, relief and/or prevention of cancer, infectious diseases, fungal diseases, disease caused by parasites, eye disease, diseases of the central and peripheral nervous systems, cardiovascular disease, diseases affecting the immune system, inflammatory diseases, inherited disease, single gene disorders, diseases of the mouth, teeth, skin, hair and ear, bone and blood diseases, reproductive system disorders, and pharmaceutical and biochemical preparations for contraceptive purposes, in humans and animals
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:
Tracked Text Description: Medical services; advisory services relating to vaccination regimes; advisory services relating to the treatment, relief and/or prevention of cancer, infectious diseases, fungal diseases, disease caused by parasites, eye disease, diseases of the central and peripheral nervous systems, cardiovascular disease, diseases affecting the immune system, inflammatory diseases, inherited disease, single gene disorders, diseases of the mouth, teeth, skin, hair and ear, bone and blood diseases, reproductive system disorders, and pharmaceutical and biochemical preparations for contraceptive purposes, in humans and animals; advisory services relating to the treatment, relief and/or prevention of cancer, infectious diseases, fungal diseases, diseases caused by parasites, namely, hookworms, pinworms, roundworms, tapeworms, flukes, giardia, entameoba, cryptosporidium, toxoplasmosis, sleeping sickness, trichuriasis, isosporiasis, malaria, parasitic skin disease and leishmaniasis, eye diseases, diseases of the central and peripheral nervous systems, namely, ataxia, dementia, epilepsy, Alzheimer's, cerebral palsy, stroke, motor neuron disease, Parkinson's disease, spinal injury, avulsion injury and peripheral neuropathies, cardiovascular disease, diseases affecting the immune system, namely, cancer, Crohn's disease, AIDS, HIV, lupus, celiac disease, diabetes, Grave's disease, Guillain-Barré syndrome, Addison's disease, Hashimoto's disease, myasthenia gravis, narcolepsy, pernicious anaemia, rheumatoid arthritis, psoriasis, ulcerative colitis, immunodeficiency and inflammatory diseases; inherited diseases, namely, genetic disorders; hemophilia, cystic fibrosis and Huntingdon's, single gene disorders; bone and blood diseases and reproductive system disorders and contraceptivesClass 044 for Medical services; advisory services relating to vaccination regimes; advisory services relating to the treatment, relief and/or prevention of cancer, infectious diseases, fungal diseases, diseases caused by parasites, namely, hookworms, pinworms, roundworms, tapeworms, flukes, giardia, entameoba, cryptosporidium, toxoplasmosis, sleeping sickness, trichuriasis, isosporiasis, malaria, parasitic skin disease and leishmaniasis, eye diseases, diseases of the central and peripheral nervous systems, namely, ataxia, dementia, epilepsy, Alzheimer's, cerebral palsy, stroke, motor neuron disease, Parkinson's disease, spinal injury, avulsion injury and peripheral neuropathies, cardiovascular disease, diseases affecting the immune system, namely, cancer, Crohn's disease, AIDS, HIV, lupus, celiac disease, diabetes, Grave's disease, Guillain-Barré syndrome, Addison's disease, Hashimoto's disease, myasthenia gravis, narcolepsy, pernicious anaemia, rheumatoid arthritis, psoriasis, ulcerative colitis, immunodeficiency and inflammatory diseases; inherited diseases, namely, genetic disorders; hemophilia, cystic fibrosis and Huntingdon's, single gene disorders; bone and blood diseases and reproductive system disorders and contraceptives
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.

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use OXFORD apart from the mark as shown.

The lengthy amendments to the descriptions of goods and services in this application, for the most part, echo the amendments Applicant's related company has filed today in a separate Response for companion application OCQUILA, SN 77673792, which was filed originally for the same recitation as in SN 77673768. Since there is an ownership relationship between the Applicants for these two applications, in the interest of consistency, it is respectfully requested that the Examiners for each application collaborate together on the recitation/identification issue to ensure that an inconsistent result is avoided when the responses are reviewed. Separately, the Examining Attorney has inquired into the dual bases for filing for this application. Applicant presently wishes to maintain both. CTM application AN 8110744 has not yet issued to registration, although it has been published. Accordingly, Applicant wishes to continue to maintain the dual filing bases for this application until either the CTM application issues to registration (in which case Applicant will delete the Sec. 1(b) claim and proceed under Sec. 44(e) alone and proffer a photocopy of the certificate of registration), Applicant commences use in commerce with the USA or circumstances dictate that Applicant should proceed under Sec. 1(b). Applicant requests that this application be suspended pending eventual registration of CTM application AN 8110744.

SIGNATURE(S)
Response Signature
Signature: /Nancy Dwyer Chapman/     Date: 11/09/2009
Signatory's Name: Nancy Dwyer Chapman
Signatory's Position: Attorney for Applicant, New York State Bar member

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: 77673768
Internet Transmission Date: Mon Nov 09 17:14:55 EST 2009
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2009110917145500
6855-77673768-460c2c6b06f42fb4049b65fcef
81c597c28-N/A-N/A-20091109155306278088