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. 79280103 CODI(Standard Characters, see http://tmng-al.gov.uspto.report/resting2/api/img/79280103/large) has been amended as follows:

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

Applicant hereby submits amended descriptions of goods and services which obviate the basis for refusal

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Apparatus and instruments for microscopy; apparatus and instruments for scanning ion conductance microscopy; apparatus and instruments for scanning ion microscopy; apparatus and instruments for scanning probe microscopy; apparatus for recording images; apparatus for recording information; apparatus for recording of images; apparatus for the processing of images; bioinformatics software; biological microscopes; biomicroscopes; body-tubes for microscopes [lens-barrels]; camera lenses; cameras; computer apparatus; computer software for scanning images and documents; computer software for the control of lighting; computer software for the transmission of positioning data; condensers (optical -); data cables; data capture apparatus; detection apparatus; devices for analysing genome information; devices for analysing protein sequence used as laboratory apparatus; downloadable applications for mobile devices; downloadable cloud computing software; downloadable image files; electron microscopes; fibre optic cables; fibre optics; film lenses; fluorescence analysers; fluorometers; focusing circuits; glass tubes for scientific purposes; heat regulating apparatus; heat regulators; illuminometers; image analysers; image capturing and developing devices; image processing apparatus; image processing equipment; image processing instruments; image processors; image recording apparatus; imaging devices for scientific purposes; incubators for laboratory use; infrared optical apparatus; infrared scanners; instruments for producing photographs; instruments for recording images; instruments for recording information; integrated software packages for use in the automation of laboratories; junction sleeves for electrical cables; junction sleeves for fibre optics; laboratory apparatus and instruments; laboratory instrument for the detection of pathogens and toxins in a biological sample for research use; laboratory instruments [other than for medical use]; laboratory optical apparatus; LED microscopes; lens filters [for cameras]; lenses for cameras; lenses for microscopes; lenses for photographic apparatus; luminescence analysers; luminescence scanners; measuring apparatus; measuring apparatus and instruments; measuring apparatus not for medical purposes; measuring, counting, alignment and calibrating instruments; measuring, detecting and monitoring instruments, indicators and controllers; measuring sensors; microscope condensers; microscope illuminating devices; microscope lamps; microscope objectives; microscope slides; microscope slides (containers for -); microscope video processors; microscopes; microscopes for medical use; optical apparatus; optical apparatus and instruments; optical condensers; optical connectors; optical devices, enhancers and correctors; optical fibre cables; optical fibres; optical instruments; optical lamps; optical lenses; optical measurement apparatus; optical sensors; optical tables; optical transmitters for use with fibre optic cables; photographic instruments; photographic lenses; plates for laboratory use; polarising microscopes; portable scanners; portable test apparatus; position sensors; parts, fittings and accessories for all the aforesaid goods
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: Apparatus and instruments for microscopy; Apparatus and instruments for microscopy, namely, microscopes; apparatus and instruments for scanning ion conductance microscopy; apparatus and instruments for scanning ion microscopy; apparatus and instruments for scanning probe microscopy; apparatus and instruments for scanning probe microscopy, namely, scanning probe microscopes; apparatus for recording images; apparatus for recording information; apparatus for recording information, namely, apparatus for recording of sound and images, time recording apparatus; apparatus for recording of images; apparatus for the processing of images; bioinformatics software; downloadable bioinformatics software for the characterisation and analysis of proteins, biological samples, chemicals, pathogens and genetic material, machine learning and for processing digital images and data storage; biological microscopes; biomicroscopes; body-tubes for microscopes [lens-barrels]; body-tubes for microscopes being lens-barrels; camera lenses; camera lenses for use in the field of microscopy; cameras; cameras for use in the field of microscopy; computer apparatus; computer apparatus, namely, peripherals, computers; computer software for scanning images and documents; downloadable computer software for scanning images and documents; computer software for the control of lighting; downloadable computer software for the control of lighting; computer software for the transmission of positioning data; downloadable computer software for the transmission of positioning data; condensers (optical -); optical condensers; data cables; data capture apparatus; data capture apparatus, namely, electronic data recorders, scanners; detection apparatus; detection apparatus, namely, diagnostic apparatus for the detection of pathogens, biomarkers, peptides, RNA, DNA, and toxins in a biological sample for laboratory or research use; devices for analysing genome information; laboratory devices for analysing genome information; devices for analysing protein sequence used as laboratory apparatus; downloadable applications for mobile devices; downloadable software applications for mobile devices for processing digital images and data analysis for the characterisation and analysis of proteins, biological samples, chemicals, pathogens and genetic material; downloadable cloud computing software; downloadable cloud computing software for processing digital images, data analysis and data management in the life science research field; downloadable image files; downloadable image files containing data from microscopes; electron microscopes; fibre optic cables; fibre optics; film lenses; fluorescence analysers; X-ray fluorescence analysers; fluorometers; focusing circuits; electric focusing circuits; glass tubes for scientific purposes; heat regulating apparatus; illuminometers; heat regulators; image analysers, namely, image scanners; image capturing and developing devices, namely, scanner for capturing images for analysis for use in the life science research field; image analysers; image processing apparatus; image capturing and developing devices; image processing equipment, namely, apparatus for processing images; image processing instruments, namely, central and peripheral processing units for processing images; image processing equipment; image processors, namely, apparatus for processing images; image processing instruments; image recording apparatus; image processors; imaging devices for scientific purposes, namely, thermal imaging cameras, magnetic resonance imaging apparatus, not for medical purposes; incubators for laboratory use; imaging devices for scientific purposes; infrared optical apparatus, namely, infrared cameras; infrared scanners; infrared optical apparatus; instruments for producing photographs, namely, photo printers, cameras for use in the field of microscopy; instruments for recording images, namely, scanners and cameras for use in the field of microscopy; instruments for producing photographs; instruments for recording information, namely, electronic data recorders, scanners; instruments for recording images; integrated software packages for use in the automation of laboratories comprised of downloadable software for data acquisition, data management, data processing and data analysis for use in scientific research; instruments for recording information; junction sleeves for electrical cables; integrated software packages for use in the automation of laboratories; junction sleeves for fibre optics; laboratory optical apparatus, namely, microscopes, microscopes, optical lenses; LED microscopes; laboratory apparatus and instruments; lens filters for cameras; laboratory instrument for the detection of pathogens and toxins in a biological sample for research use; lenses for cameras for use in the field of microscopy; laboratory instruments [other than for medical use]; lenses for microscopes; laboratory optical apparatus; lenses for photographic apparatus; luminescence analysers, namely, electric luminescent display panels; lens filters [for cameras]; luminescence scanners; lenses for cameras; measuring apparatus, namely, digital measuring apparatus, measuring lasers; microscope condensers; microscope illuminating devices; luminescence analysers; microscope Optical lamps; microscope objectives; measuring apparatus; microscope slides; measuring apparatus and instruments; containers for microscope slides; measuring apparatus not for medical purposes; microscope video processors; measuring, counting, alignment and calibrating instruments; microscopes; measuring, detecting and monitoring instruments, indicators and controllers; microscopes for medical use; measuring sensors; microscope lamps; microscope slides (containers for -); optical apparatus; optical apparatus and instruments; optical connectors; optical devices, enhancers and correctors; optical fibre cables; optical fibres; optical instruments; optical lamps; optical lenses; optical measurement apparatus; optical sensors; optical tables; optical transmitters for use with fibre optic cables; photographic instruments; photographic lenses; plates for laboratory use; polarising microscopes; portable scanners; portable test apparatus; position sensors; parts, fittings and accessories for all the aforesaid goodsClass 009 for Apparatus and instruments for microscopy, namely, microscopes; apparatus and instruments for scanning ion conductance microscopy; apparatus and instruments for scanning ion microscopy; apparatus and instruments for scanning probe microscopy, namely, scanning probe microscopes; apparatus for recording images; apparatus for recording information, namely, apparatus for recording of sound and images, time recording apparatus; apparatus for recording of images; apparatus for the processing of images; downloadable bioinformatics software for the characterisation and analysis of proteins, biological samples, chemicals, pathogens and genetic material, machine learning and for processing digital images and data storage; biological microscopes; biomicroscopes; body-tubes for microscopes being lens-barrels; camera lenses for use in the field of microscopy; cameras for use in the field of microscopy; computer apparatus, namely, peripherals, computers; downloadable computer software for scanning images and documents; downloadable computer software for the control of lighting; downloadable computer software for the transmission of positioning data; optical condensers; data cables; data capture apparatus, namely, electronic data recorders, scanners; detection apparatus, namely, diagnostic apparatus for the detection of pathogens, biomarkers, peptides, RNA, DNA, and toxins in a biological sample for laboratory or research use; laboratory devices for analysing genome information; devices for analysing protein sequence used as laboratory apparatus; downloadable software applications for mobile devices for processing digital images and data analysis for the characterisation and analysis of proteins, biological samples, chemicals, pathogens and genetic material; downloadable cloud computing software for processing digital images, data analysis and data management in the life science research field; downloadable image files containing data from microscopes; electron microscopes; fibre optic cables; fibre optics; film lenses; X-ray fluorescence analysers; fluorometers; electric focusing circuits; glass tubes for scientific purposes; illuminometers; image analysers, namely, image scanners; image capturing and developing devices, namely, scanner for capturing images for analysis for use in the life science research field; image processing apparatus; image processing equipment, namely, apparatus for processing images; image processing instruments, namely, central and peripheral processing units for processing images; image processors, namely, apparatus for processing images; image recording apparatus; imaging devices for scientific purposes, namely, thermal imaging cameras, magnetic resonance imaging apparatus, not for medical purposes ; incubators for laboratory use; infrared optical apparatus, namely, infrared cameras; infrared scanners; instruments for producing photographs, namely, photo printers, cameras for use in the field of microscopy; instruments for recording images, namely, scanners and cameras for use in the field of microscopy; instruments for recording information, namely, electronic data recorders, scanners; integrated software packages for use in the automation of laboratories comprised of downloadable software for data acquisition, data management, data processing and data analysis for use in scientific research; junction sleeves for electrical cables; junction sleeves for fibre optics; laboratory optical apparatus, namely, microscopes, microscopes, optical lenses; LED microscopes; lens filters for cameras; lenses for cameras for use in the field of microscopy; lenses for microscopes; lenses for photographic apparatus; luminescence analysers, namely, electric luminescent display panels; luminescence scanners; measuring apparatus, namely, digital measuring apparatus, measuring lasers; microscope condensers; microscope illuminating devices; microscope Optical lamps; microscope objectives; microscope slides; containers for microscope slides; microscope video processors; microscopes; microscopes 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:

Current:
Class 010 for Medical analysis instruments
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 analysis instruments; Medical analysis instruments, namely, medical instruments for analyzing and identifying pathogens, biomarkers, peptides, RNA, DNA, and toxins in a biological sampleClass 010 for Medical analysis instruments, namely, medical instruments for analyzing and identifying pathogens, biomarkers, peptides, RNA, DNA, and toxins in a biological sample

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:

Current:
Class 038 for Communication services, namely, electronic transmission of data and documents among users of computers; computer aided transmission of messages, information and images; computer-aided transmission of images; data bank interconnection services; data streaming; data transfer services; data transmission services; distribution of data or audio visual images via a global computer network or the internet; electrical data transmission over a global remote data processing network, including the internet; electronic data exchange; electronic file transfer; providing access to and leasing time to computer databases; providing access to online computer databases; streaming of data; wireless electronic transmission of images; consultancy relating to all the aforesaid services; all of the aforementioned services only and specifically designated for use in the scientific research and development and healthcare field
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: Communication services, namely, electronic transmission of data and documents among users of computers; computer aided transmission of messages, information and images; computer-aided transmission of images; data bank interconnection services; data bank interconnection services, namely, encrypted electronic transmission and delivery of recovered data, fibre optic network services, data storage, data analysis and data archiving services; data streaming; data transfer services; data transfer services by telecommunications; data transmission services; electronic data transmission services; distribution of data or audio visual images via a global computer network or the internet; electrical data transmission over a global remote data processing network, including the internet; electronic data exchange; electronic data exchange, namely, electronic exchange of data stored in databases accessible via telecommunication networks; electronic file transfer; electronic file transfer, namely, electronic transfer of data by telecommunications; providing access to and leasing time to computer databases; providing access tocomputer databases; providing access to online computer databases; streaming of data; wireless electronic transmission of images; consultancy relating to all the aforesaid services; all of the aforementioned services only and specifically designated for use in the scientific research and development and healthcare fieldClass 038 for Communication services, namely, electronic transmission of data and documents among users of computers; computer aided transmission of messages, information and images; computer-aided transmission of images; data bank interconnection services, namely, encrypted electronic transmission and delivery of recovered data, fibre optic network services, data storage, data analysis and data archiving services; data streaming; data transfer services by telecommunications; electronic data transmission services; distribution of data or audio visual images via a global computer network or the internet; electrical data transmission over a global remote data processing network, including the internet; electronic data exchange, namely, electronic exchange of data stored in databases accessible via telecommunication networks; electronic file transfer, namely, electronic transfer of data by telecommunications; providing access tocomputer databases; providing access to online computer databases; streaming of data; wireless electronic transmission of images; consultancy relating to all the aforesaid services; all of the aforementioned services only and specifically designated for use in the scientific research and development and healthcare field

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:

Current:
Class 042 for Scientific and technological services and research and design relating thereto; analysis of substances and research services; laboratory research services; medical and pharmacological research services; analysis and measurement of substances; analysis and measurement of molecules and characteristics; bioanalysis services; scientific imaging services; testing, authentication and quality control; consultancy in relation to all the aforesaid 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.


Proposed:

Tracked Text Description: Scientific and technological services and research and design relating thereto; Scientific and technological services, namely, data analysis, diagnostic testing, scientific research, analysis, testing, measurement and quantification of biomarkers in the field of life science and clinical applications; analysis of substances and research services; analysis of substances, namely, analysis, detection quantification and isolation of biological substances in biological samples and research services in the field of life sciences and clinical applications; laboratory research services; laboratory research services in the field of life sciences and clinical applications; medical and pharmacological research services; analysis and measurement of substances; analysis and measurement of substances, namely, quality measurement and analysis of molecules in the field of life sciences and clinical applications; analysis and measurement of molecules and characteristics; analysis and measurement of molecules and characteristics namely, measurement and analysis of molecules and molecular characteristics in the field of life science and clinical applications; bioanalysis services; bioanalysis services for scientific research purposes; scientific imaging services; scientific imaging services, namely, radio tomographic imaging services; testing, authentication and quality control; diagnostic testing in the field of life science and clinical applications; consultancy in relation to all the aforesaid servicesClass 042 for Scientific and technological services, namely, data analysis, diagnostic testing, scientific research, analysis, testing, measurement and quantification of biomarkers in the field of life science and clinical applications; analysis of substances, namely, analysis, detection quantification and isolation of biological substances in biological samples and research services in the field of life sciences and clinical applications; laboratory research services in the field of life sciences and clinical applications; medical and pharmacological research services; analysis and measurement of substances, namely, quality measurement and analysis of molecules in the field of life sciences and clinical applications; analysis and measurement of molecules and characteristics namely, measurement and analysis of molecules and molecular characteristics in the field of life science and clinical applications; bioanalysis services for scientific research purposes; scientific imaging services, namely, radio tomographic imaging services; diagnostic testing in the field of life science and clinical applications; consultancy in relation to all the aforesaid 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.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Oxford Nanoimaging Limited a(n) Limited Company legally organized under the laws of United Kingdom
Proposed: Oxford Nanoimaging Limited, Limited Company legally organized under the laws of United Kingdom
      Email Address: XXXX

The owner's/holder's proposed attorney information: Ben Natter. Other appointed attorneys are Kyle Koemm. Ben Natter of Haug Partners LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      745 Fifth Ave
      New York, New York 10151
      United States
is appointed to submit this Response to Office Action Form on behalf of the applicant.
The docket/reference number is A325-36.
      The email address is bnatter@haugpartners.com

Ben Natter 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.Correspondence Information (current):
      Stratagem Intellectual Property Management
Correspondence Information (proposed):
      Ben Natter
      PRIMARY EMAIL FOR CORRESPONDENCE: bnatter@haugpartners.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): docket@haugpartners.com; kkoemm@haugpartners.com

The docket/reference number is A325-36.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: //Kyle Koemm//     Date: 09/25/2020
Signatory's Name: Kyle Koemm
Signatory's Position: Attorney of Record, member NY bar

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:    Stratagem Intellectual Property Management
   Limited
   Comberton Road
   Meridian Court,
   Toft, Cambridge CB23 2RY,
Mailing Address:    Ben Natter
   Haug Partners LLP
   745 Fifth Ave
   New York, New York 10151
        
Serial Number: 79280103
Internet Transmission Date: Fri Sep 25 11:07:15 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.X-20200925110715568
220-79280103-75013ab25e367ba5741b7227944
2c6d8a87035578f4375f0c5c9f0af553ddeaaae-
N/A-N/A-20200925110009653556