TEAS Response to Suspension Inquiry

PTO Form 1822 (Rev 11/2007)

OMB No. 0651-0050 (Exp. 4/30/2009)

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PTO Form 1822 (Rev 11/2007)

OMB No. 0651-0050 (Exp. 4/30/2009)

Response to Suspension Inquiry or Letter of Suspension

To the Commissioner for Trademarks:

Application serial no. 77673768 has been amended as follows:

FOREIGN REGISTRATION
The applicant herein submits a digitized image of a copy, a certification, or a certified copy of a registration in the applicant's country of origin showing that the mark has been registered in that country, and that the registration is in full force and effect. If the foreign registration is not in English, an English translation thereof is being submitted. The applicant hereby requests removal of this application from suspension for further action by the examining attorney.

The applicant requests that the examining attorney delete the Section 1(b) basis for the goods and/or services that the foreign registration submitted herewith covers, IF the Section 44(e) basis is accepted for those goods and/or services.

Filing Basis: Section 44(e), Based on Foreign Registration: A copy of European Community registration number 008110744 registered 12/11/2009, with a renewal date of __________ and an expiration date of 02/18/2019, and translation thereof (if appropriate), is attached in accordance with 15 U.S.C. Section 1126(e), as amended.
Original PDF file:
FR_6461118138-143317504_._OXFORD_BIOMEDICA_CTM_RN_008110744_regn_certificate__14058.pdf
Converted PDF file(s) (10 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5
Foreign Registration-6
Foreign Registration-7
Foreign Registration-8
Foreign Registration-9
Foreign Registration-10
Comment(s)/Remark(s):

Amendment of description of goods and services in International Classes 1, 5, 10, 42 and 44:

In response to the Notice of Suspension issued December 11, 2009, whose amendment requirements were reiterated in the Suspension Inquiry Official Action issued June 14, 2010, Applicant requests amendment of the wording in Classes 1, 5, 10, 42 and 44 as follows:

 

Class 1:

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, namely, in vitro and in vivo use

 

Class 5:

Gene therapy and prophylactic products namely, gene delivery pharmaceuticals; 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; 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; pre-filled vials for medical purposes

 

Class 10:

Instruments and apparatus for the administration of pharmaceutical, gene therapy and/or vaccine preparations and substances, namely, medical syringes and injectors for medical purposes

 

Class 42:

Scientific, pharmaceutical and medical research and development; genetic engineering services, biotechnology services, namely, research and development for new products in the field of biotechnology, advisory services relating to gene therapy products and clinical trials, conducting clinical trials

 

Class 44:

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

 

Applicant's attorneys want the record to reflect that Examining Attorney T. Singh provided valuable assistance in the crafting of these amendments.  Should there be any further minor revisions required, Applicant's attorneys request that the Examiner contact Applicant's attorneys by telephone on the issue to expedite resolution.

The foreign registration that is the basis of the U.S. application under Section 44(e) of the Trademark Act (15 U.S.C. Section 1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Response Suspension Inquiry Signature
Signature: /Nancy Dwyer Chapman/     Date: 12/09/2010
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: Thu Dec 09 15:01:47 EST 2010
TEAS Stamp: USPTO/RSI-XX.XX.XXX.XXX-2010120915014745
1215-77673768-470f2deb98677f578568877de8
ae9be4c9-N/A-N/A-20101209143317504739