Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 79166086 ADENA(Standard Characters, see http://tmng-al.gov.uspto.report/resting2/api/img/79166086/large) has been amended as follows:

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

Applicant has deleted "commercial information and advice for consumers" and "commercial information and advice for consumers on the composition, quality, origin and traceability of foodstuffs" from its application. 

Applicant's mark is not identical to the cited registration and its services differ from those services listed in the cited registration. Applicant submits there is no likelihood of confusion between ADENA and the cited registration.  Applicant respectfully requests that its mark be advanced to publication.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Commercial information and advice for consumers; product demonstration; commercial information for consumers on the nutritional and energy values of foodstuffs for animals; commercial information for consumers on the composition and combination of foodstuffs for animals; commercial information and advice for consumers on the composition, quality, origin, control and traceability of foodstuffs; organization of promotional and advertising activities for developing customer loyalty; organization of commercial operations with a view to developing customer loyalty; presentation of goods on all communication media, for retail sale; retail or wholesale services for apparatus and instruments for identifying animals, apparatus and instruments for taking animal tissue samples, apparatus and instruments for identifying foodstuffs for animals; internet sale services for apparatus and instruments for identifying animals, apparatus and instruments for taking animal tissue samples, apparatus and instruments for identifying foodstuffs for animals; import and export services for apparatus and instruments for identifying animals, apparatus and instruments for taking animal tissue samples, apparatus and instruments for identifying foodstuffs for animals; accounts receivable management services in the field of identification of animals and/or genome analysis; computer file management services; collection and systematization of data in a central file; compilation of information in the field of identification of animals and/or genome analysis; computerized database management; management of computerized databases in the field of identification of animals, animal DNA and/or genome analysis; compilation and systemization of information in the field of identification of animals, animal DNA and/or the genome analysis of data in computer databases
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Commercial information and advice for consumers; product demonstration; Providing commercial information for consumers on the nutritional and energy values of foodstuffs for animals; commercial information for consumers on the nutritional and energy values of foodstuffs for animals; Providing commercial information for consumers on the composition and combination of foodstuffs for animals; commercial information for consumers on the composition and combination of foodstuffs for animals; organization of promotional and advertising activities in the nature of viral marketing programs for developing customer loyalty; commercial information and advice for consumers on the composition, quality, origin, control and traceability of foodstuffs; organization of commercial operations in the nature of exhibitions for advertising purposes with a view to developing customer loyalty; organization of promotional and advertising activities for developing customer loyalty; Providing television home shopping services in the field of general consumer merchandise; organization of commercial operations with a view to developing customer loyalty; retail and wholesale store services featuring apparatus and instruments for identifying animals, apparatus and instruments for taking animal tissue samples, and apparatus and instruments for identifying foodstuffs for animals; presentation of goods on all communication media, for retail sale; Online retail store services featuring apparatus and instruments for identifying animals, apparatus and instruments for taking animal tissue samples, and apparatus and instruments for identifying foodstuffs for animals; retail or wholesale services for apparatus and instruments for identifying animals, apparatus and instruments for taking animal tissue samples, apparatus and instruments for identifying foodstuffs for animals; import and export agencies in the field of apparatus and instruments for identifying animals, apparatus and instruments for taking animal tissue samples, and apparatus and instruments for identifying foodstuffs for animals; internet sale services for apparatus and instruments for identifying animals, apparatus and instruments for taking animal tissue samples, apparatus and instruments for identifying foodstuffs for animals; Inventory management services related to identification of animals and genomic material; import and export services for apparatus and instruments for identifying animals, apparatus and instruments for taking animal tissue samples, apparatus and instruments for identifying foodstuffs for animals; computer file management services; accounts receivable management services in the field of identification of animals and/or genome analysis; Business services, namely, collection and systematization of data in a central file for business purposes; Services consisting of the compilation and systemization of data related to the identification of animals and genomic analysis; collection and systematization of data in a central file; computerized database management; compilation of information in the field of identification of animals and/or genome analysis; management of computerized databases in the field of identification of animals, animal DNA and/or genome analysis; compilation and systemization of information in the field of identification of animals, animal DNA and/or the genome analysis of data in computer databasesClass 035 for product demonstration; Providing commercial information for consumers on the nutritional and energy values of foodstuffs for animals; Providing commercial information for consumers on the composition and combination of foodstuffs for animals; organization of promotional and advertising activities in the nature of viral marketing programs for developing customer loyalty; organization of commercial operations in the nature of exhibitions for advertising purposes with a view to developing customer loyalty; Providing television home shopping services in the field of general consumer merchandise; retail and wholesale store services featuring apparatus and instruments for identifying animals, apparatus and instruments for taking animal tissue samples, and apparatus and instruments for identifying foodstuffs for animals; Online retail store services featuring apparatus and instruments for identifying animals, apparatus and instruments for taking animal tissue samples, and apparatus and instruments for identifying foodstuffs for animals; import and export agencies in the field of apparatus and instruments for identifying animals, apparatus and instruments for taking animal tissue samples, and apparatus and instruments for identifying foodstuffs for animals; Inventory management services related to identification of animals and genomic material; computer file management services; Business services, namely, collection and systematization of data in a central file for business purposes; Services consisting of the compilation and systemization of data related to the identification of animals and genomic analysis; computerized database management; management of computerized databases in the field of identification of animals, animal DNA and/or genome analysis; compilation and systemization of information in the field of identification of animals, animal DNA and/or the genome analysis of data in computer databases

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Quality control Services for certification and warranty purposes; quality testing of products for certification purposes; testing, analysis and evaluation of products and services of others with a view to their certification; monitoring of the origin of foodstuffs and animals for certification and warranty purposes; quality control services of foodstuffs for certification, warranty and identification purposes; control of foodstuffs; awarding compliance certificates and seals of quality (quality control); quality evaluation (quality control); quality evaluation in the field of animal identification; technical studies provided by engineers, auditing and evaluation of foodstuffs for animals for the purpose of awarding labels (quality control); surveying (engineering work); testing of foodstuffs for animals; scientific laboratory services for identifying, evaluating and controlling foodstuffs for animals; technical advice and information to consumers on the identification and quality of foodstuffs for animals; technical advice and information on the composition, quality, origin, control and traceability of foodstuffs; technical advice and information on the nutritional and energy values of foodstuffs for animals; technical advice and information on the composition and combination of foodstuffs for animals; analysis for the installation of a computerized animal management system; design of software allowing for the identification of foodstuffs; design of computer programs and computer software in the field of identification of animals, management of animals and/or genome analysis; services for conversion of computer programs and data (other than physical conversion) in the field of identification of animals, management of animals and/or genome analysis; conversion of data from physical to electronic media in the field of identification of animals, management of animals and/or genome analysis; research and development for others in the field of identification of animals, management of animals and/or genome analysis; technical project studies in the field of identification of animals, management of animals and/or genome analysis; development (design), installation, maintenance, updating or rental of software in the field of identification of animals, management of animals and/or genome analysis; design, development and maintenance of databases in the field of identification of animals, management of animals; laboratory research and analysis services; scientific laboratory analysis; preparation of biological samples for testing and analysis in research laboratories; biological research services; bacteriological research services; chemical research services; scientific and biological analysis and research services for controlling the composition, quality, origin and traceability of foodstuffs and/or animal DNA; computer-aided scientific research, testing and analysis services; design and development of methods of analysis and testing; biological tests for scientific research purposes; technical data analysis services relating to animal DNA; biological analysis; structural and functional analysis of genomes; genetic research; scientific research in the field of genetics; DNA testing for scientific research; electronic storage services for data in connection with genome analysis; design of systems for storage of data in connection with genome analysis; genetic fingerprinting services
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Quality control Services for certification and warranty purposes; quality testing of products for certification purposes; testing, analysis and evaluation of products and services of others with a view to their certification; monitoring of the origin of foodstuffs and animals for certification and warranty purposes; quality control services of foodstuffs for certification, warranty and identification purposes; control of foodstuffs; Quality control for others of foodstuffs; awarding compliance certificates and seals of quality (quality control); Quality control for others that results in the awarding of compliance certificates and seals of quality (quality control); quality evaluation (quality control); quality evaluation, namely, quality control for others; quality evaluation in the field of animal identification; quality evaluation of the animals of others to assure compliance with industry standards; technical studies provided by engineers, auditing and evaluation of foodstuffs for animals for the purpose of awarding labels (quality control); technical research, safety auditing and testing of animal foods for the purpose of quality control that result in the awarding of a label certifying compliance with industry standards; surveying (engineering work); Engineering work in the nature of surveying; testing of foodstuffs for animals; scientific laboratory services for identifying, evaluating and controlling foodstuffs for animals; technical advice and information to consumers on the identification and quality of foodstuffs for animals; technical advice and information in the field of food research provided to consumers related to the quality of foodstuffs for animals; technical advice and information on the composition, quality, origin, control and traceability of foodstuffs; technical advice and information in the field of food research related to the composition, quality, origin, control and traceability of foodstuffs; technical advice and information on the nutritional and energy values of foodstuffs for animals; technical advice and information in the field of food research related to the nutritional and energy values of foodstuffs for animals; technical advice and information on the composition and combination of foodstuffs for animals; technical advice and information in the field of food research related to the composition and combination of foodstuffs for animals; analysis for the installation of a computerized animal management system; Providing technical consultation for installing a computerized animal management computer system; design of software allowing for the identification of foodstuffs; design of computer programs and computer software in the field of identification of animals, management of animals and/or genome analysis; services for conversion of computer programs and data (other than physical conversion) in the field of identification of animals, management of animals and/or genome analysis; Data conversion of computer programs and data, not physical conversion, in the field of identification of animals, management of animals and genome analysis; conversion of data from physical to electronic media in the field of identification of animals, management of animals and/or genome analysis; research and development for others in the field of identification of animals, management of animals and/or genome analysis; Scientific research and development for others in the field of identification of animals, management of animals and/or genome analysis; technical project studies in the field of identification of animals, management of animals and/or genome analysis; Conducting technical feasibility studies in the field of animal identification and management of animals; development (design), installation, maintenance, updating or rental of software in the field of identification of animals, management of animals and/or genome analysis; Design, development, installation, maintenance, updating and rental of computer software in the field of identification of animals, management of animals and genome analysis; design, development and maintenance of databases in the field of identification of animals, management of animals; laboratory research and analysis services; Scientific laboratory research and analysis services in the field of genomic research; scientific laboratory analysis; scientific laboratory analysis, namely, scientific laboratory analysis in the field of genomic research; preparation of biological samples for testing and analysis in research laboratories; biological research services; bacteriological research services; chemical research services; scientific and biological analysis and research services for controlling the composition, quality, origin and traceability of foodstuffs and/or animal DNA; computer-aided scientific research, testing and analysis services; computer-aided scientific research, testing and analysis services in the field of genomic research; design and development of methods of analysis and testing; design and development of scientific methods of analysis and testing; biological tests for scientific research purposes; biological tests for scientific research purposes, namely, providing reagent sample testing and diagnostic services for others in the field of science and research related thereto; technical data analysis services relating to animal DNA; technical data analysis services relating to animal DNA for scientific research purposes; biological analysis; biological analysis in the nature of biological research; structural and functional analysis of genomes; structural and functional analysis of genomes for scientific research purposes; genetic research; genetic research for scientific research purposes; scientific research in the field of genetics; DNA testing for scientific research; Electronic storage of genomic data; electronic storage services for data in connection with genome analysis; genetic fingerprinting services; design of systems for storage of data in connection with genome analysis; Genetic testing for scientific research purposes in the nature of genetic fingerprinting servicesClass 042 for Quality control Services for certification and warranty purposes; quality testing of products for certification purposes; testing, analysis and evaluation of products and services of others with a view to their certification; monitoring of the origin of foodstuffs and animals for certification and warranty purposes; quality control services of foodstuffs for certification, warranty and identification purposes; Quality control for others of foodstuffs; Quality control for others that results in the awarding of compliance certificates and seals of quality (quality control); quality evaluation, namely, quality control for others; quality evaluation of the animals of others to assure compliance with industry standards; technical research, safety auditing and testing of animal foods for the purpose of quality control that result in the awarding of a label certifying compliance with industry standards; Engineering work in the nature of surveying; testing of foodstuffs for animals; scientific laboratory services for identifying, evaluating and controlling foodstuffs for animals; technical advice and information in the field of food research provided to consumers related to the quality of foodstuffs for animals; technical advice and information in the field of food research related to the composition, quality, origin, control and traceability of foodstuffs; technical advice and information in the field of food research related to the nutritional and energy values of foodstuffs for animals; technical advice and information in the field of food research related to the composition and combination of foodstuffs for animals; Providing technical consultation for installing a computerized animal management computer system; design of software allowing for the identification of foodstuffs; design of computer programs and computer software in the field of identification of animals, management of animals and/or genome analysis; Data conversion of computer programs and data, not physical conversion, in the field of identification of animals, management of animals and genome analysis; conversion of data from physical to electronic media in the field of identification of animals, management of animals and/or genome analysis; Scientific research and development for others in the field of identification of animals, management of animals and/or genome analysis; Conducting technical feasibility studies in the field of animal identification and management of animals; Design, development, installation, maintenance, updating and rental of computer software in the field of identification of animals, management of animals and genome analysis; design, development and maintenance of databases in the field of identification of animals, management of animals; Scientific laboratory research and analysis services in the field of genomic research; scientific laboratory analysis, namely, scientific laboratory analysis in the field of genomic research; preparation of biological samples for testing and analysis in research laboratories; biological research services; bacteriological research services; chemical research services; scientific and biological analysis and research services for controlling the composition, quality, origin and traceability of foodstuffs and/or animal DNA; computer-aided scientific research, testing and analysis services in the field of genomic research; design and development of scientific methods of analysis and testing; biological tests for scientific research purposes, namely, providing reagent sample testing and diagnostic services for others in the field of science and research related thereto; technical data analysis services relating to animal DNA for scientific research purposes; biological analysis in the nature of biological research; structural and functional analysis of genomes for scientific research purposes; genetic research for scientific research purposes; scientific research in the field of genetics; DNA testing for scientific research; Electronic storage of genomic data; electronic storage services for data in connection with genome analysis; design of systems for storage of data in connection with genome analysis; Genetic testing for scientific research purposes in the nature of genetic fingerprinting services

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

SIGNATURE(S)
Response Signature
Signature: /Sarah G. Voeller/     Date: 11/17/2015
Signatory's Name: Sarah G. Voeller
Signatory's Position: Attorney of record, MN 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 owner's/holder'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 owner/holder in this matter: (1) the owner/holder 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 owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder'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: 79166086
Internet Transmission Date: Tue Nov 17 15:59:34 EST 2015
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2015111715593488
1688-79166086-540a799b2f8fc8d83139ab3648
748a0f8285467a3e393634acd1ac81f347b7343-
N/A-N/A-20151117143951831501