Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 79252478 NIKON (Stylized and/or with Design, see http://uspto.report/TM/79252478/mark.png) has been amended as follows:

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

In the Provisional Refusal mailed on March 9, 2019, the Examining Attorney noted that the Class 10 good "medical imaging apparatus" is indefinite and should be further specified. Applicant notes that this identification is in the Trademark ID Manual, and therefore kindly submits that the identification should be acceptable without amendment.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 001 for Chemicals; chemicals for research or scientific purposes; chemical reagents; chemical reagents for research or scientific purposes; chemical agents; chemical agents for research or scientific purposes; bacterial preparations, other than for medical and veterinary use; cell growth media for growing biological cells; cell growth media for growing biological cells for research or scientific purposes; cell growth media for growing cells for use in scientific research; cells for research or scientific purposes; assays for research purposes
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: Chemicals; Industrial chemicals; chemicals for research or scientific purposes; chemicals for use in industry and science; chemical reagents; lithography chemicals; photographic chemicals; chemical agents; chemicals for use in semiconductor manufacturing; chemical agents for research or scientific purposes; industrial chemicals for research or scientific purposes; chemicals for use in biotechnological manufacturing processes and biotechnological product development; chemical reagents for non-medical purposes; chemical reagents for research or scientific purposes; chemical agents being industrial chemicals for research or scientific purposes; chemical agents for use in cell and tissue growth applications, for research and scientific purposes; bacterial preparations, other than for medical and veterinary use; cell growth media for growing biological cells; cell growth media for growing biological cells for research or scientific purposes; cell growth media for growing cells for use in scientific research; cells for research or scientific purposes; assays for research purposesClass 001 for Industrial chemicals; chemicals for use in industry and science; lithography chemicals; photographic chemicals; chemicals for use in semiconductor manufacturing; industrial chemicals for research or scientific purposes; chemicals for use in biotechnological manufacturing processes and biotechnological product development; chemical reagents for non-medical purposes; chemical reagents for research or scientific purposes; chemical agents being industrial chemicals for research or scientific purposes; chemical agents for use in cell and tissue growth applications, for research and scientific purposes; bacterial preparations, other than for medical and veterinary use; cell growth media for growing biological cells; cell growth media for growing biological cells for research or scientific purposes; cell growth media for growing cells for use in scientific research; cells for research or scientific purposes; assays for research purposes

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 005 for Proteins for medical use; cells for medical use; microorganisms and cultures for medical use; cultures of microorganisms for medical use; culture media for use in cultivating human, animal, and plant cells; pharmaceutical preparations; pharmaceutical preparations for medical purposes; pharmaceutical preparations for regenerative medical purposes; pharmaceutical preparations for gene therapy purposes; pharmaceutical preparations for research or scientific purposes; semen for artificial insemination; cell culture reagents for medical or clinical use; sera and reagents for biological and pharmaceutical research and for the manufacture of pharmaceutical products; medical diagnostic reagents and assays for testing of body fluids; diagnostic preparations; chemical reagents for medical or veterinary purpose; chemicals for medical purposes; chemicals for regenerative medical purposes; chemicals for gene therapy purposes; chemical reagents for medical purposes; chemical reagents for regenerative medical purposes; chemical reagents for gene therapy purposes; chemical agents for medical purposes; chemical agents for regenerative medical purposes; chemical agents for gene therapy purposes; cell growth media for growing biological cells for medical purposes; cell growth media for growing biological cells for regenerative medical purposes; cell growth media for growing biological cells for gene therapy purposes
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: Proteins for medical use; Protein arrays for medical diagnostic use; proteins in the nature of enzymes for medical use; cells for medical use; microorganisms and cultures for medical use; cultures of microorganisms for medical use; culture media for use in cultivating human, animal, and plant cells; pharmaceutical preparations for medical purposes; pharmaceutical preparations; pharmaceutical preparations for medical purposes used in chemotherapy, immunotherapy, and gene therapy; pharmaceutical preparations for regenerative medical purposes; pharmaceutical preparations for research or scientific purposes; pharmaceutical preparations for gene therapy purposes; pharmaceutical preparations for chemotherapy, immunotherapy and gene therapy research and scientific purposes; cell culture reagents for medical or clinical use; semen for artificial insemination; sera and reagents for biological and pharmaceutical research and for the manufacture of pharmaceutical products; cell culture reagents for medical or clinical medical use; sera and reagents for biological and pharmaceutical research and for the manufacture of pharmaceutical products, for oncological; diagnostic preparations; medical diagnostic reagents and assays for testing of body fluids; chemical reagents for medical or veterinary purpose; diagnostic preparations for medical purposes; chemical reagents for medical or veterinary purposes; chemicals for medical purposes; chemicals for regenerative medical purposes; chemicals for gene therapy purposes; chemical reagents for medical purposes; chemical reagents for regenerative medical purposes; chemical reagents for gene therapy purposes; chemical agents for medical purposes; chemical agents for regenerative medical purposes; chemical agents for gene therapy purposes; cell growth media for growing biological cells for medical purposes; cell growth media for growing biological cells for regenerative medical purposes; cell growth media for growing biological cells for gene therapy purposesClass 005 for Protein arrays for medical diagnostic use; proteins in the nature of enzymes for medical use; cells for medical use; microorganisms and cultures for medical use; cultures of microorganisms for medical use; culture media for use in cultivating human, animal, and plant cells; pharmaceutical preparations; pharmaceutical preparations for medical purposes used in chemotherapy, immunotherapy, and gene therapy; pharmaceutical preparations for regenerative medical purposes; pharmaceutical preparations for gene therapy purposes; pharmaceutical preparations for chemotherapy, immunotherapy and gene therapy research and scientific purposes; semen for artificial insemination; cell culture reagents for medical or clinical medical use; sera and reagents for biological and pharmaceutical research and for the manufacture of pharmaceutical products, for oncological; medical diagnostic reagents and assays for testing of body fluids; diagnostic preparations for medical purposes; chemical reagents for medical or veterinary purposes; chemicals for medical purposes; chemicals for regenerative medical purposes; chemicals for gene therapy purposes; chemical reagents for medical purposes; chemical reagents for regenerative medical purposes; chemical reagents for gene therapy purposes; chemical agents for medical purposes; chemical agents for regenerative medical purposes; chemical agents for gene therapy purposes; cell growth media for growing biological cells for medical purposes; cell growth media for growing biological cells for regenerative medical purposes; cell growth media for growing biological cells for gene therapy purposes

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 010 for Medical apparatus and instruments and part and fitting therefor; medical imaging apparatus; medical apparatus and instruments for diagnostic radiopharmaceutical use; medical apparatus and instruments for regenerative medical purposes; medical apparatus and instruments for gene therapy purposes; medical apparatus and instruments used for cell culture and part and fitting therefor; cell culture apparatus for medical use, namely, cell culture chambers; cell culture apparatus for regenerative medical purposes; cell culture apparatus for gene therapy purposes
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: Medical apparatus and instruments and part and fitting therefor; Medical surgical apparatus and surgical instruments and replacement parts and replacement fittings therefor; medical imaging apparatus; medical apparatus and instruments for diagnostic radiopharmaceutical use; medical apparatus and instruments for regenerative medical purposes; medical apparatus and instruments for regenerative medical gene therapy purposes; medical apparatus and instruments for stem cell regenerative medical purposes; medical apparatus and instruments used for cell culture and part and fitting therefor; medical apparatus and instruments for gene therapy purposes; medical apparatus and instruments used for cell culture and replacement parts and replacement fitting therefor; cell culture apparatus for regenerative medical purposes; medical apparatus and instruments used for cell culture and parts and fitting therefor, namely, bioreactors; cell culture apparatus for medical use, namely, cell culture chambers; cell culture apparatus for regenerative medical purposes being cell culture chambers; cell culture apparatus for regenerative medical purposes, namely, tissue engineering chambers and bioreactors; cell culture apparatus for gene therapy purposesClass 010 for Medical surgical apparatus and surgical instruments and replacement parts and replacement fittings therefor; medical imaging apparatus; medical apparatus and instruments for diagnostic radiopharmaceutical use; medical apparatus and instruments for regenerative medical gene therapy purposes; medical apparatus and instruments for stem cell regenerative medical purposes; medical apparatus and instruments for gene therapy purposes; medical apparatus and instruments used for cell culture and replacement parts and replacement fitting therefor; medical apparatus and instruments used for cell culture and parts and fitting therefor, namely, bioreactors; cell culture apparatus for medical use, namely, cell culture chambers; cell culture apparatus for regenerative medical purposes being cell culture chambers; cell culture apparatus for regenerative medical purposes, namely, tissue engineering chambers and bioreactors; cell culture apparatus for gene therapy purposes

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 035 for Retail services featuring cells for research or scientific use; retail services featuring cells for medical use; business consultancy services relating to manufacturing
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: Retail services featuring cells for research or scientific use; Retail store services featuring cells for research or scientific use; retail services featuring cells for medical use; online, telephone and facsimile retail ordering services and mail order or electronic retail catalog services featuring cells for research or scientific use; retail store services featuring cells for medical use; online, telephone and facsimile retail ordering services and mail order or electronic retail catalog services featuring cells for medical use; business consultancy services relating to manufacturingClass 035 for Retail store services featuring cells for research or scientific use; online, telephone and facsimile retail ordering services and mail order or electronic retail catalog services featuring cells for research or scientific use; retail store services featuring cells for medical use; online, telephone and facsimile retail ordering services and mail order or electronic retail catalog services featuring cells for medical use; business consultancy services relating to manufacturing

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 039 for Storage of cells; storage of cells for medical purposes; storage of cells for regenerative medical purposes; storage of cells for gene therapy purposes; storage of cells for research or scientific purposes; storage of goods; warehousing services; temporary safekeeping of personal belongings; cryogenic storage
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: Storage of cells; storage of cells for medical purposes; storage of cells for regenerative medical purposes; storage of cells for gene therapy purposes; storage of cells for research or scientific purposes; storage of goods; warehousing services; temporary safekeeping of personal belongings; cryogenic storage; cryogenic storage being biomedical services, namely, the storage of human cells for medical useClass 039 for Storage of cells; storage of cells for medical purposes; storage of cells for regenerative medical purposes; storage of cells for gene therapy purposes; storage of cells for research or scientific purposes; storage of goods; warehousing services; temporary safekeeping of personal belongings; cryogenic storage being biomedical services, namely, the storage of human cells for medical use

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 040 for Custom production and processing of proteins and chemicals for others; custom manufacture of cells for others; custom manufacture of cells for medical purposes for others; custom manufacture of cells for regenerative medical purposes for others; custom manufacture of cells for gene therapy purposes for others; custom manufacture of cells for research or scientific purposes for others; custom development of manufacturing process of cells for others; custom development of manufacturing process of cells for medical purposes for others; custom development of manufacturing process of cells for regenerative medical purposes for others; custom development of manufacturing process of cells for gene therapy purposes for others; custom development of manufacturing process of cells for research or scientific purposes for others; custom manufacture of cell tissues for others; custom processing of cells for others; custom processing of cells for medical purposes for others; custom processing of cells for regenerative medical purposes for others; custom processing of cells for gene therapy purposes for others; custom processing of cells for research or scientific purposes for others; providing information and advices about manufacturing cells; providing information and advices about manufacturing cells for medical purposes; providing information and advices about manufacturing cells for regenerative medical purposes; providing information and advices about manufacturing cells for gene therapy purposes; providing information and advices about manufacturing cells for research or scientific purposes; custom manufacture and processing of chemicals, chemical products and pharmaceuticals for others; custom manufacture and processing of cells for research or scientific use for others; processing of artificial limbs or artificial teeth, including processing of medical materials; production and processing of chemicals, ingredients for pharmaceuticals, and cells for research and scientific purposes; manufacture of bacteriological cultures, buffer solution, and reagents for others; cryogenic preservation
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: Custom production and processing of proteins and chemicals for others; custom manufacture of cells for others; custom manufacture of cells for medical purposes for others; custom manufacture of cells for regenerative medical purposes for others; custom manufacture of cells for gene therapy purposes for others; custom manufacture of cells for research or scientific purposes for others; custom development of manufacturing process of cells for others; custom manufacture of cell tissues for others; custom development of manufacturing process of cells for medical purposes for others; custom processing of cells for others; custom development of manufacturing process of cells for regenerative medical purposes for others; custom processing of cells for medical purposes for others; custom development of manufacturing process of cells for gene therapy purposes for others; custom processing of cells for regenerative medical purposes for others; custom development of manufacturing process of cells for research or scientific purposes for others; custom processing of cells for gene therapy purposes for others; custom processing of cells for research or scientific purposes for others; providing information and advices about manufacturing cells; providing information and advices about manufacturing cells for medical purposes; providing information and advices about manufacturing cells for regenerative medical purposes; providing information and advices about manufacturing cells for gene therapy purposes; providing information and advices about manufacturing cells for research or scientific purposes; custom manufacture and processing of chemicals, chemical products and pharmaceuticals for others; custom manufacture and processing of cells for research or scientific use for others; processing of artificial limbs or artificial teeth, including processing of medical materials; production being manufacturing and processing of chemicals, ingredients for pharmaceuticals, and cells for research and scientific purposes; manufacture of bacteriological cultures, buffer solution, and reagents for others; cryogenic preservation; production and processing of chemicals, ingredients for pharmaceuticals, and cells for research and scientific purposesClass 040 for Custom production and processing of proteins and chemicals for others; custom manufacture of cells for others; custom manufacture of cells for medical purposes for others; custom manufacture of cells for regenerative medical purposes for others; custom manufacture of cells for gene therapy purposes for others; custom manufacture of cells for research or scientific purposes for others; custom manufacture of cell tissues for others; custom processing of cells for others; custom processing of cells for medical purposes for others; custom processing of cells for regenerative medical purposes for others; custom processing of cells for gene therapy purposes for others; custom processing of cells for research or scientific purposes for others; providing information and advices about manufacturing cells; providing information and advices about manufacturing cells for medical purposes; providing information and advices about manufacturing cells for regenerative medical purposes; providing information and advices about manufacturing cells for gene therapy purposes; providing information and advices about manufacturing cells for research or scientific purposes; custom manufacture and processing of chemicals, chemical products and pharmaceuticals for others; custom manufacture and processing of cells for research or scientific use for others; processing of artificial limbs or artificial teeth, including processing of medical materials; production being manufacturing and processing of chemicals, ingredients for pharmaceuticals, and cells for research and scientific purposes; manufacture of bacteriological cultures, buffer solution, and reagents for others; cryogenic preservation

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 Custom research and development for others; custom research and development for medical purposes for others; custom research and development for regenerative medical purposes for others; custom research and development for gene therapy purposes for others; custom research and development for research or scientific purposes for others; custom cultivation of cells and tissues for others; custom cultivation of cells and tissues for medical purposes for others; custom cultivation of cells and tissues for regenerative medical purposes for others; custom cultivation of cells and tissues for gene therapy purposes for others; custom cultivation of cells and tissues for research or scientific purposes for others; testing, inspection or research of cells and providing information and consultancy therefor; testing, inspection or research of cells for medical purposes and providing information and consultancy therefor; testing, inspection or research of cells for regenerative medical purposes and providing information and consultancy therefor; testing, inspection or research of cells for gene therapy purposes and providing information and consultancy therefor; testing, inspection or research of cells for research or scientific purposes and providing information and consultancy therefor; research, developments and quality control of cells and consultancy therefor; research, developments and quality control of cells for medical purposes and consultancy therefor; research, developments and quality control of cells for regenerative medical purposes and consultancy therefor; research, developments and quality control of cells for gene therapy purposes and consultancy therefor; research, developments and quality control of cells for research or scientific purposes and consultancy therefor; quality control for others; consultancy services in the field of quality control; consultancy services in the fields of testing, inspection, research or investigation of pharmaceuticals and chemicals; consultancy services about testing, inspection, research or investigation of cells; consultancy services in the fields of testing, inspection, research or investigation of cells for medical purpose; consultancy services in the fields of testing, inspection, research or investigation of cells for regenerative medical purposes; consultancy services in the fields of testing, inspection, research or investigation of cells for gene therapy purposes; consultancy services in the fields of testing, inspection, research or investigation of cells for research or scientific purposes; providing information and consultancy services about testing, inspection or research of pharmaceuticals; providing medical and scientific research information and consultancy services in the fields of testing, inspection or research of pharmaceuticals; custom inspection, analysis, research and development of cells for research or scientific use for others; custom services in the fields of scientific testing, inspection, research or investigation of pharmaceuticals and chemicals; custom inspection, analysis, research, development and design of pharmaceutical agents or pharmaceuticals for others; providing information about inspection, analysis, research, development and design of chemicals, chemical products or proteins; providing medical and scientific research information in the fields of inspection, analysis, research, development and design of chemicals, chemical products or proteins; providing information about inspection, analysis, research, development and design of pharmaceutical agents or pharmaceuticals; providing medical and scientific research information in the fields of inspection, analysis, research, development and design of pharmaceutical agents or pharmaceuticals; research and development in the field of microorganisms and cells; research and development in the field of microorganisms and cells for medical purposes; research and development in the field of microorganisms and cells for regenerative medical purposes; research and development in the field of microorganisms and cells for gene therapy purposes; research and development in the field of microorganisms and cells for research or scientific purposes; conducting clinical trials for others; providing information about clinical trials; providing medical and scientific research information in the field of clinical trials; conducting clinical trials for others in the field of pharmaceuticals; testing, inspection or research of pharmaceuticals, cosmetics or foodstuffs; research on building construction or city planning; testing or research on prevention of pollution; testing or research on electricity; testing or research on civil engineering; testing, inspection or research on agriculture, livestock breeding or fisheries; providing scientific and research information in the field of bioscience via a website; development and design of manufacturing methods and of testing methods; process monitoring for quality assurance
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: Custom research and development for others; Custom research and development for medical purposes for others; custom research and development of cell and gene therapy products; custom research and development for medical purposes for others; custom research and development for regenerative medical purposes for others; custom research and development for gene therapy purposes for others; custom cultivation of cells and tissues for others; custom research and development for research or scientific purposes for others; custom cultivation of cells and tissues for medical purposes for others; custom cultivation of cells and tissues for others in the nature of new product development; custom cultivation of cells and tissues for regenerative medical purposes for others; custom cultivation of cells and tissues for the development of new cell and gene therapy products of others; custom cultivation of cells and tissues for gene therapy purposes for others; custom cultivation of cells and tissues for medical purposes for others in the nature of new product development; custom cultivation of cells and tissues for research or scientific purposes for others; custom cultivation of cells and tissues for medical purposes in the nature of the development of new cell and gene therapy products of others; custom cultivation of cells and tissues for regenerative medical purposes for others in the nature of new product development; custom cultivation of cells and tissues for regenerative medical purposes in the nature of the development of new cell and gene therapy products of others; custom cultivation of cells and tissues for gene therapy purposes for others in the nature of new product development; custom cultivation of cells and tissues in the nature of the development of new cell and gene therapy products of others; custom cultivation of cells and tissues for research or scientific purposes for others in the nature of new product development; custom cultivation of cells and tissues in the nature of bioengineering for research or scientific purposes for others; testing, inspection or research of cells and providing information and consultancy therefor; testing, inspection or research of cells for medical purposes and providing information and consultancy therefor; testing, inspection or research of cells for regenerative medical purposes and providing information and consultancy therefor; testing, inspection or research of cells for gene therapy purposes and providing information and consultancy therefor; testing, inspection or research of cells for research or scientific purposes and providing information and consultancy therefor; research, developments and quality control of cells and consultancy therefor; research, developments and quality control of cells for medical purposes and consultancy therefor; research, developments and quality control of cells for regenerative medical purposes and consultancy therefor; research, developments and quality control of cells for gene therapy purposes and consultancy therefor; research, developments and quality control of cells for research or scientific purposes and consultancy therefor; quality control for others; consultancy services in the field of quality control; consultancy services in the fields of testing, inspection, research or investigation of pharmaceuticals and chemicals; consultancy services about testing, inspection, research or investigation of cells; consultancy services in the fields of testing, inspection, research or investigation of cells for medical purpose; consultancy services in the fields of testing, inspection, research or investigation of cells for regenerative medical purposes; consultancy services in the fields of testing, inspection, research or investigation of cells for gene therapy purposes; consultancy services in the fields of testing, inspection, research or investigation of cells for research or scientific purposes; providing information and consultancy services about testing, inspection or research of pharmaceuticals; providing medical and scientific research information and consultancy services in the fields of testing, inspection or research of pharmaceuticals; custom inspection, analysis, research and development of cells for research or scientific use for others; custom services in the fields of scientific testing, inspection, research or investigation of pharmaceuticals and chemicals; custom inspection, analysis, research, development and design of pharmaceutical agents or pharmaceuticals for others; providing information about inspection, analysis, research, development and design of chemicals, chemical products or proteins; providing medical and scientific research information in the fields of inspection, analysis, research, development and design of chemicals, chemical products or proteins; providing information about inspection, analysis, research, development and design of pharmaceutical agents or pharmaceuticals; providing medical and scientific research information in the fields of inspection, analysis, research, development and design of pharmaceutical agents or pharmaceuticals; research and development in the field of microorganisms and cells; research and development in the field of microorganisms and cells for medical purposes; research and development in the field of microorganisms and cells for regenerative medical purposes; research and development in the field of microorganisms and cells for gene therapy purposes; research and development in the field of microorganisms and cells for research or scientific purposes; conducting clinical trials for others; providing information about clinical trials; providing medical and scientific research information in the field of clinical trials; conducting clinical trials for others in the field of pharmaceuticals; testing, inspection or research of pharmaceuticals, cosmetics or foodstuffs; research on building construction or city planning; testing or research on prevention of pollution; testing or research on electricity; testing or research on civil engineering; testing, inspection or research on agriculture, livestock breeding or fisheries; providing scientific and research information in the field of bioscience via a website; development and design of manufacturing methods and of testing methods; process monitoring for quality assuranceClass 042 for Custom research and development for medical purposes for others; custom research and development of cell and gene therapy products; custom research and development for medical purposes for others; custom research and development for regenerative medical purposes for others; custom research and development for gene therapy purposes for others; custom research and development for research or scientific purposes for others; custom cultivation of cells and tissues for others in the nature of new product development; custom cultivation of cells and tissues for the development of new cell and gene therapy products of others; custom cultivation of cells and tissues for medical purposes for others in the nature of new product development; custom cultivation of cells and tissues for medical purposes in the nature of the development of new cell and gene therapy products of others; custom cultivation of cells and tissues for regenerative medical purposes for others in the nature of new product development; custom cultivation of cells and tissues for regenerative medical purposes in the nature of the development of new cell and gene therapy products of others; custom cultivation of cells and tissues for gene therapy purposes for others in the nature of new product development; custom cultivation of cells and tissues in the nature of the development of new cell and gene therapy products of others; custom cultivation of cells and tissues for research or scientific purposes for others in the nature of new product development; custom cultivation of cells and tissues in the nature of bioengineering for research or scientific purposes for others; testing, inspection or research of cells and providing information and consultancy therefor; testing, inspection or research of cells for medical purposes and providing information and consultancy therefor; testing, inspection or research of cells for regenerative medical purposes and providing information and consultancy therefor; testing, inspection or research of cells for gene therapy purposes and providing information and consultancy therefor; testing, inspection or research of cells for research or scientific purposes and providing information and consultancy therefor; research, developments and quality control of cells and consultancy therefor; research, developments and quality control of cells for medical purposes and consultancy therefor; research, developments and quality control of cells for regenerative medical purposes and consultancy therefor; research, developments and quality control of cells for gene therapy purposes and consultancy therefor; research, developments and quality control of cells for research or scientific purposes and consultancy therefor; quality control for others; consultancy services in the field of quality control; consultancy services in the fields of testing, inspection, research or investigation of pharmaceuticals and chemicals; consultancy services about testing, inspection, research or investigation of cells; consultancy services in the fields of testing, inspection, research or investigation of cells for medical purpose; consultancy services in the fields of testing, inspection, research or investigation of cells for regenerative medical purposes; consultancy services in the fields of testing, inspection, research or investigation of cells for gene therapy purposes; consultancy services in the fields of testing, inspection, research or investigation of cells for research or scientific purposes; providing information and consultancy services about testing, inspection or research of pharmaceuticals; providing medical and scientific research information and consultancy services in the fields of testing, inspection or research of pharmaceuticals; custom inspection, analysis, research and development of cells for research or scientific use for others; custom services in the fields of scientific testing, inspection, research or investigation of pharmaceuticals and chemicals; custom inspection, analysis, research, development and design of pharmaceutical agents or pharmaceuticals for others; providing information about inspection, analysis, research, development and design of chemicals, chemical products or proteins; providing medical and scientific research information in the fields of inspection, analysis, research, development and design of chemicals, chemical products or proteins; providing information about inspection, analysis, research, development and design of pharmaceutical agents or pharmaceuticals; providing medical and scientific research information in the fields of inspection, analysis, research, development and design of pharmaceutical agents or pharmaceuticals; research and development in the field of microorganisms and cells; research and development in the field of microorganisms and cells for medical purposes; research and development in the field of microorganisms and cells for regenerative medical purposes; research and development in the field of microorganisms and cells for gene therapy purposes; research and development in the field of microorganisms and cells for research or scientific purposes; conducting clinical trials for others; providing information about clinical trials; providing medical and scientific research information in the field of clinical trials; conducting clinical trials for others in the field of pharmaceuticals; testing, inspection or research of pharmaceuticals, cosmetics or foodstuffs; research on building construction or city planning; testing or research on prevention of pollution; testing or research on electricity; testing or research on civil engineering; testing, inspection or research on agriculture, livestock breeding or fisheries; providing scientific and research information in the field of bioscience via a website; development and design of manufacturing methods and of testing methods; process monitoring for quality assurance

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 045 for Consultancy services relating to laws and regulations; legal consultation services; regulatory compliance consulting in the field of pharmaceuticals and biologies; agencies for legal procedures relating to lawsuits or other legal issues; legal services; information services relating to manufacturing standards; advisory services relating to regulatory affairs
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: Consultancy services relating to laws and regulations; Consultancy services relating to laws and manufacturing regulations; consultancy services relating to laws and medical regulations; legal consultation services; regulatory compliance consulting in the field of pharmaceuticals and biologies; agencies for legal procedures relating to lawsuits or other legal issues; information services relating to manufacturing standards; legal services; advisory services relating to regulatory affairs; providing information in the field of legal standards in the field of manufacturing; advisory services relating to manufacturing regulatory affairs; advice and consultancy services in the field of medical regulatory affairsClass 045 for Consultancy services relating to laws and manufacturing regulations; consultancy services relating to laws and medical regulations; legal consultation services; regulatory compliance consulting in the field of pharmaceuticals and biologies; agencies for legal procedures relating to lawsuits or other legal issues; legal services; providing information in the field of legal standards in the field of manufacturing; advisory services relating to manufacturing regulatory affairs; advice and consultancy services in the field of medical regulatory affairs

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.

The applicant hereby appoints Charles T. J. Weigell. Other appointed attorneys are Julia Belagorudsky. Charles T. J. Weigell of Fross Zelnick Lehrman & Zissu, P.C., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      151 West 42nd Street, 17th Floor
      New York, New York 10036
      United States
to submit this Response to Office Action Form on behalf of the applicant.
The docket/reference number is NIKN 1907429.

The phone number is (212) 813-5900.

The email address is weigell-docket@fzlz.com

Charles T. J. Weigell submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: Kuga Takahiro. Kuga Takahiro, is located at

      Gran Tokyo South Tower,
      c/o Shiga International Patent Office,
      Tokyo 100-6620,
      JP

The applicants proposed correspondence information: Charles T. J. Weigell. Charles T. J. Weigell of Fross Zelnick Lehrman & Zissu, P.C., is located at

      151 West 42nd Street, 17th Floor
      New York, New York 10036
      United States
The docket/reference number is NIKN 1907429.

The phone number is (212) 813-5900.

The email address is weigell-docket@fzlz.com

ADDITIONAL STATEMENTS
Significance of wording, letter(s), or numeral(s)
"NIKON" appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as used in connection with the goods/services/collective membership organization listed in the application, or any geographical significance. The word(s) "NIKON" has no meaning in a foreign language.


Miscellaneous Statement
Pursuant to the Examining Attorney's information request, no one associated with the Applicant uses "NIKON" as a surname.


SIGNATURE(S)
Response Signature
Signature: /Julia Belagorudsky/     Date: 09/09/2019
Signatory's Name: Julia Belagorudsky
Signatory's Position: Associate Attorney, Fross Zelnick Lehrman & Zissu, New York State Bar member

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); 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.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    Kuga Takahiro
   
   Gran Tokyo South Tower,
   c/o Shiga International Patent Office,
   Tokyo 100-6620,
Mailing Address:    Charles T. J. Weigell
   Fross Zelnick Lehrman & Zissu, P.C.
   151 West 42nd Street, 17th Floor
   New York, New York 10036
        
Serial Number: 79252478
Internet Transmission Date: Mon Sep 09 16:23:49 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-201909091623499
71869-79252478-61045681b97f5b3e486f3b4b9
13f79fcbda53b296d1354d730f2d268f49934df9
-N/A-N/A-20190909155838681044