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. 85960709 THERANOS (Stylized and/or with Design, see http://uspto.report/TM/85960709/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 001 for Reagents for scientific or research use; diagnostic reagents for clinical or medical laboratory use; chemical preparations for scientific purposes; reagents for chemical analysis; diagnostic kits consisting primarily of monoclonal antibodies, buffers, and reagents to monitor toxicity of drugs; testing kits containing reagents used in analyzing and detecting certain toxins for clinical or medical laboratory use; genetic identity tests comprised of reagents; antibodies for in vitro scientific or research use; biochemicals, namely, for in vitro and in vivo scientific use; biomedical compounds, namely, substrates used in analyzing and detecting certain toxins for laboratory or research use; biomedical compounds, namely, substrates used in analyzing and detecting certain toxins for laboratory or research use; chemical preparations to be used in biochemical and clinical research; diagnostic preparations for clinical or medical laboratory use
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Reagents for scientific or research use; diagnostic reagents for clinical or medical laboratory use; chemical preparations for scientific purposes; reagents for chemical analysis; diagnostic kits consisting primarily of monoclonal antibodies, buffers, and reagents to monitor toxicity of drugs; testing kits containing reagents used in analyzing and detecting certain toxins for clinical or medical laboratory use; genetic identity tests comprised of reagents; antibodies for in vitro scientific or research use; biochemicals, namely, for in vitro and in vivo scientific use; biomedical compounds, namely, substrates used in analyzing and detecting certain toxins for laboratory or research use; biomedical compounds, namely, peptide substrates used in analyzing and detecting certain toxins for laboratory or research use; biomedical compounds, namely, substrates used in analyzing and detecting certain toxins for laboratory or research use; chemical preparations to be used in biochemical and clinical research; diagnostic preparations for clinical or medical laboratory useClass 001 for Reagents for scientific or research use; diagnostic reagents for clinical or medical laboratory use; chemical preparations for scientific purposes; reagents for chemical analysis; diagnostic kits consisting primarily of monoclonal antibodies, buffers, and reagents to monitor toxicity of drugs; testing kits containing reagents used in analyzing and detecting certain toxins for clinical or medical laboratory use; genetic identity tests comprised of reagents; antibodies for in vitro scientific or research use; biochemicals, namely, for in vitro and in vivo scientific use; biomedical compounds, namely, peptide substrates used in analyzing and detecting certain toxins for laboratory or research use; chemical preparations to be used in biochemical and clinical research; diagnostic preparations for clinical or medical laboratory use
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Computer software for healthcare monitoring; computer software for medical diagnostics testing and monitoring and for communicating medical test results to patients and service providers in the medical and healthcare fields; computer software for use in biomonitoring of humans and of animals; computer software for medical monitoring and analysis of medical data; computer software for analysis of body fluids; computer software for communication and data transfer between health care professionals and patients; computer hardware; mobile electronic devices, namely, testing, monitoring and reporting devices for medical and healthcare purposes for individualized medicine and healthcare; downloadable electronic publications, namely, downloadable newsletters, blogs, e-zines, magazines, books, manuals, pamphlets, diaries and journals in the fields of healthcare, medicine, personal health and fitness, biomonitoring, medical diagnostics, monitoring and testing
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Computer software for healthcare monitoring; computer software for medical diagnostics testing and monitoring and for communicating medical test results to patients and service providers in the medical and healthcare fields; computer software for use in biomonitoring of humans and of animals; computer software for medical monitoring and analysis of medical data; computer software for analysis of body fluids; computer software for communication and data transfer between health care professionals and patients; computer hardware; mobile electronic devices, namely, testing, monitoring and reporting devices for medical and healthcare purposes for individualized medicine and healthcare; mobile electronic devices, namely, tablet computers, mobile phones, personal digital assistants, and other cellular or wireless communication devices; downloadable electronic publications, namely, downloadable newsletters, blogs, e-zines, magazines, books, manuals, pamphlets, diaries and journals in the fields of healthcare, medicine, personal health and fitness, biomonitoring, medical diagnostics, monitoring and testingClass 009 for Computer software for healthcare monitoring; computer software for medical diagnostics testing and monitoring and for communicating medical test results to patients and service providers in the medical and healthcare fields; computer software for use in biomonitoring of humans and of animals; computer software for medical monitoring and analysis of medical data; computer software for analysis of body fluids; computer software for communication and data transfer between health care professionals and patients; computer hardware; mobile electronic devices, namely, tablet computers, mobile phones, personal digital assistants, and other cellular or wireless communication devices; downloadable electronic publications, namely, downloadable newsletters, blogs, e-zines, magazines, books, manuals, pamphlets, diaries and journals in the fields of healthcare, medicine, personal health and fitness, biomonitoring, medical diagnostics, monitoring and testing
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 010 for Medical devices, namely, portable biomonitoring devices for monitoring blood pressure, pulse, heart rate, respiration, blood oxygen, blood glucose, blood composition, cholesterol, temperature and weight; medical devices, namely apparatus for laboratory analysis of body fluids and tissue; medical devices, namely, point of care and handheld devices for analysis of drugs, proteins and other substances, and wireless transfer of medical data; medical measuring apparatus, namely, equipment for medical monitoring and analysis of body fluids and tissue; medical measuring apparatus, namely, cartridges for use with therapies or equipment for medical monitoring and analysis of substances; apparatus for blood analysis; apparatus for taking blood samples; blood testing apparatus; apparatus for clinical diagnosis; capillary reagent tubes; capillary tubes for blood; capillary tubes for samples; containers especially made for processing blood samples; containers for medical waste; devices for monitoring blood sugar; diagnostic apparatus for the detection of a wide variety of diseases; health monitoring devices, namely, personal medical monitors of blood pressure, pulse, heart rate, respiration, blood oxygen, blood glucose, blood composition, cholesterol, temperature and weight, for monitoring a wide variety of physical conditions and diseases; medical diagnostics apparatus for diagnosing a wide variety of physical conditions and diseases; medical apparatus and instruments for monitoring blood properties; medical devices for obtaining body fluid samples; patient medical monitors for monitoring a wide variety of physical conditions and diseases
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Medical devices, namely, portable biomonitoring devices for monitoring blood pressure, pulse, heart rate, respiration, blood oxygen, blood glucose, blood composition, cholesterol, temperature and weight; medical devices, namely apparatus for laboratory analysis of body fluids and tissue; medical devices, namely, point of care and handheld devices for analysis of drugs, proteins and other substances, and wireless transfer of medical data; medical measuring apparatus, namely, equipment for medical monitoring and analysis of body fluids and tissue; medical measuring apparatus, namely, cartridges for use with therapies or equipment for medical monitoring and analysis of substances; apparatus for blood analysis; apparatus for taking blood samples; blood testing apparatus; apparatus for clinical diagnosis; capillary reagent tubes; capillary tubes for blood; capillary tubes for samples; containers especially made for processing blood samples; containers for medical waste; devices for monitoring blood sugar; diagnostic apparatus for the detection of a wide variety of diseases; electronic diagnostic apparatus, namely, analytic apparatus for the detection of a wide variety of diseases; health monitoring devices, namely, personal medical monitors of blood pressure, pulse, heart rate, respiration, blood oxygen, blood glucose, blood composition, cholesterol, temperature and weight, for monitoring a wide variety of physical conditions and diseases; medical diagnostics apparatus for diagnosing a wide variety of physical conditions and diseases; medical diagnostics apparatus, namely, blood pressure, pulse, and blood oxygen, blood glucose, blood composition, cholesterol and temperature monitors for diagnosing a wide variety of physical conditions and diseases; medical apparatus and instruments for monitoring blood properties; medical devices for obtaining body fluid samples; patient medical monitors for monitoring a wide variety of physical conditions and diseases; mobile electronic devices, namely, testing, monitoring and reporting devices for medical and healthcare purposes for individualized medicine and healthcareClass 010 for Medical devices, namely, portable biomonitoring devices for monitoring blood pressure, pulse, heart rate, respiration, blood oxygen, blood glucose, blood composition, cholesterol, temperature and weight; medical devices, namely apparatus for laboratory analysis of body fluids and tissue; medical devices, namely, point of care and handheld devices for analysis of drugs, proteins and other substances, and wireless transfer of medical data; medical measuring apparatus, namely, equipment for medical monitoring and analysis of body fluids and tissue; medical measuring apparatus, namely, cartridges for use with therapies or equipment for medical monitoring and analysis of substances; apparatus for blood analysis; apparatus for taking blood samples; blood testing apparatus; apparatus for clinical diagnosis; capillary reagent tubes; capillary tubes for blood; capillary tubes for samples; containers especially made for processing blood samples; containers for medical waste; devices for monitoring blood sugar; electronic diagnostic apparatus, namely, analytic apparatus for the detection of a wide variety of diseases; health monitoring devices, namely, personal medical monitors of blood pressure, pulse, heart rate, respiration, blood oxygen, blood glucose, blood composition, cholesterol, temperature and weight, for monitoring a wide variety of physical conditions and diseases; medical diagnostics apparatus, namely, blood pressure, pulse, and blood oxygen, blood glucose, blood composition, cholesterol and temperature monitors for diagnosing a wide variety of physical conditions and diseases; medical apparatus and instruments for monitoring blood properties; medical devices for obtaining body fluid samples; patient medical monitors for monitoring a wide variety of physical conditions and diseases; mobile electronic devices, namely, testing, monitoring and reporting devices for medical and healthcare purposes for individualized medicine and healthcare
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 039 for Biomedical services, namely, storage of medical data; biomedical services, namely, the storage of human cells for medical use; consulting services in the field of air medical operations in the nature of air medical transport; medical transport services; transportation of medical waste and special waste
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Biomedical services, namely, storage of medical data; Biomedical services, namely, electronic storage of medical data; biomedical services, namely, the storage of human cells for medical use; consulting services in the field of air medical operations in the nature of air medical transport; medical transport services; transportation of medical waste and special wasteClass 039 for Biomedical services, namely, electronic storage of medical data; biomedical services, namely, the storage of human cells for medical use; consulting services in the field of air medical operations in the nature of air medical transport; medical transport services; transportation of medical waste and special waste
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 044 for Medical evaluation services, namely, identifying, quantifying or monitoring a wide variety of physical conditions, traits and diseases; medical evaluation services, namely, assessment of patients undergoing medical treatment; medical monitoring services; medical monitoring services, namely, monitoring the efficacy of therapy and total patient or consumer health; medical diagnostic testing, monitoring and reporting services; collection and preservation of human and animal blood; consulting services in the field of health; consulting services in the field of diagnostic medical testing; consulting services in the fields of health and healthcare; drug use testing services; drug, alcohol and DNA screening for medical purposes; health assessment services, namely detection of a wide variety of diseases and physical conditions; health care; maintaining patient medical records and files; medical counseling; medical information; medical screening; medical services; medical testing for diagnostic or treatment purposes; providing information in the field of pet health; pet hospital services; providing a web site featuring medical information; providing a website featuring health and healthcare information; internet-based health care information services; providing health information; providing healthcare information; rental of medical equipment; veterinary special services, namely medical diagnostic services, healthcare management services, and emergency and trauma services, all for animals; medical and veterinary services
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Medical evaluation services, namely, identifying, quantifying or monitoring a wide variety of physical conditions, traits and diseases; medical evaluation services, namely, assessment of patients undergoing medical treatment; medical monitoring services; medical monitoring services, namely, monitoring the efficacy of therapy and total patient or consumer health; medical diagnostic testing, monitoring and reporting services; collection and preservation of human and animal blood; consulting services in the field of health; consulting services in the field of diagnostic medical testing; consulting services in the fields of health and healthcare; drug use testing services; drug, alcohol and DNA screening for medical purposes; health assessment services, namely detection of a wide variety of diseases and physical conditions; health assessment services, namely conducting medical physical evaluations detection of a wide variety of diseases and physical conditions; health care; maintaining patient medical records and files; medical counseling; medical information; medical screening; medical services; medical testing for diagnostic or treatment purposes; providing information in the field of pet health; pet hospital services; providing a web site featuring medical information; providing a website featuring health and healthcare information; internet-based health care information services; providing health information; providing healthcare information; rental of medical equipment; veterinary special services, namely medical diagnostic services, healthcare management services, and emergency and trauma services, all for animals; medical and veterinary servicesClass 044 for Medical evaluation services, namely, identifying, quantifying or monitoring a wide variety of physical conditions, traits and diseases; medical evaluation services, namely, assessment of patients undergoing medical treatment; medical monitoring services; medical monitoring services, namely, monitoring the efficacy of therapy and total patient or consumer health; medical diagnostic testing, monitoring and reporting services; collection and preservation of human and animal blood; consulting services in the field of health; consulting services in the field of diagnostic medical testing; consulting services in the fields of health and healthcare; drug use testing services; drug, alcohol and DNA screening for medical purposes; health assessment services, namely conducting medical physical evaluations detection of a wide variety of diseases and physical conditions; health care; maintaining patient medical records and files; medical counseling; medical information; medical screening; medical services; medical testing for diagnostic or treatment purposes; providing information in the field of pet health; pet hospital services; providing a web site featuring medical information; providing a website featuring health and healthcare information; internet-based health care information services; providing health information; providing healthcare information; rental of medical equipment; veterinary special services, namely medical diagnostic services, healthcare management services, and emergency and trauma services, all for animals; medical and veterinary services
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

SIGNATURE(S)
Response Signature
Signature: /sabel/     Date: 10/21/2014
Signatory's Name: Sally M. Abel, Esq.
Signatory's Position: Attorney for Applicant, CA bar member

Signatory's Phone Number: (650) 988-8500

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 85960709
Internet Transmission Date: Wed Oct 22 00:27:10 EDT 2014
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201410220027102
96934-85960709-50038906eef15a68a53f74f6c
9311ffdc8f6bace7798e94adcd35f8c6eb832e3-
N/A-N/A-20141021233126124030