Response to Office Action

PTO Form 1957 (Rev 9/2005)

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

---

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. 77799315 has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 005 for Assay devices; syringe applicators for sample processing; calibrators; multiplexing antigens; multiplexing antibodies; diagnostics; microarrays; proteomic substances and biotechnology

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Robotic platforms; hand held analyzers; diagnostic/prognostic bio-chips for medical analysis; calibration instruments; proteomic apparatus, instruments and equipment
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 [Canada application number 1437887 filed 05/12/2009]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Robotic platforms; Calibrators, namely, calibration instruments used to calibrate the amount of reagent affixed to an assay device used for determining the amount of analyte in a biological sample; hand held analyzers; assay devices used for determining the amount of analyte in a biological sample; diagnostic/prognostic bio-chips for medical analysis; proteomics apparatus, instruments and equipment, namely, assay containment platforms and robotic elevating work platforms; calibration instruments; proteomic apparatus, instruments and equipmentClass 009 for Calibrators, namely, calibration instruments used to calibrate the amount of reagent affixed to an assay device used for determining the amount of analyte in a biological sample; assay devices used for determining the amount of analyte in a biological sample; proteomics apparatus, instruments and equipment, namely, assay containment platforms and robotic elevating work platforms
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 [Canada application number 1437887 filed 05/12/2009]. 15 U.S.C.Section 1126(d), as amended.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Consulting services in the field of proteomics
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: Consulting services in the field of proteomics; Scientific research in the field of microarrays and proteomicsClass 042 for Scientific research in the field of microarrays and proteomics
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 [Canada application number 1437887 filed 05/12/2009]. 15 U.S.C.Section 1126(d), as amended.

Applicant hereby adds the following class of goods/services to the application:
New: Class 001 (Original Class: 005 ) for Biochemicals, namely, multiplexing antigen and multiplexing antibodies for in vitro scientific or research use; proteomic substances, namely, protein arrays and nucleotide arrays for scientific and medical research
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 [Canada application number 1437887 filed 05/12/2009]. 15 U.S.C.Section 1126(d), as amended.

Applicant hereby adds the following class of goods/services to the application:
New: Class 044 for Medical diagnostic services, namely, medical diagnostic testing, monitoring, and reporting services
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 [Canada application number 1437887 filed 05/12/2009]. 15 U.S.C.Section 1126(d), as amended.

CORRESPONDENCE ADDRESS CHANGE
Applicant proposes to amend the following:
Current:
MICHAEL J. LEONARD
PEPPER HAMILTON LLP
3000 EIGHTEENTH AND ARCH STS
3000 TWO LOGAN SQ
PHILADELPHIA, PA 19103

Proposed:
Michael J. Leonard of Panitch Schwarze Belisario & Nadel LLP, having an address of
One Commerce Square 2005 Market Street, Suite 2200 Philadelphia, Pennsylvania 19103-7013
United States
mleonard@panitchlaw.com
215.965.1390
215.965.1331



ADDITIONAL STATEMENTS
The Examining Attorney is advised that the Applicant wishes to maintain both the Section 44 basis and Section 1(b) basis of the application until such time that it is specifically indicated otherwise.


I hereby elect to by-pass any fee edit for an added class(es), because I believe the original fee payment was sufficient. I understand that the examining attorney could still, upon later review, require a fee payment.
SIGNATURE(S)
Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant has 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); and/or the applicant has had a bona fide intention to exercise legitimate control over the use of the mark in commerce by its members. 37 C.F. R. Sec. 2.44. 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 and/or services listed in the application as of the application filing date or as of the date of any submitted allegation of use. 37 C.F.R. Secs. 2.34(a)(1)(i); and/or the applicant has exercised legitimate control over the use of the mark in commerce by its members. 37 C.F.R. Sec. 244. 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. Section1001, 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. Section1051(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: /michael leonard/      Date: 03/23/2010
Signatory's Name: Michael J. Leonard
Signatory's Position: Attorney of Record

Response Signature
Signature: /michael leonard/     Date: 03/23/2010
Signatory's Name: Michael J. Leonard
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.

Mailing Address:    Michael J. Leonard
   Panitch Schwarze Belisario & Nadel LLP
   One Commerce Square
   2005 Market Street, Suite 2200
   Philadelphia, Pennsylvania 19103-7013
        
Serial Number: 77799315
Internet Transmission Date: Tue Mar 23 14:01:56 EDT 2010
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2010032314015677
7060-77799315-460339271418698fbba18869e8
87b4bf07d-N/A-N/A-20100323135738397945