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. 86359576 VANQUISH(Standard Characters, see http://uspto.report/TM/86359576/mark.png) has been amended as follows:

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

Now that Applicant has deleted the entire list of goods in Class 1 and has amended its description of goods in Classes 9 and 10, it is clear that Applicant is not seeking to registered its VANQUISH mark in connection with any goods that are similar or related to the goods provided by the cited Registrant under its marks. Accordingly, Applicant respectfully requests that the Examining Attorney withdraw the likelihood of confusion refusal and approve the application for publication. If however, the Examining Attorney maintains the likelihood of confusion refusal again, Applicant reserves the right to argue further against this refusal at that time.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 001 for Chemical reagents; Chemical solvents; Chemical reagents, compounds and solvents for use in the clinical diagnostic field; Chemical reagents, compounds and solvents for use in the field of liquid chromatography; Chemical reagents, compounds and solvents for use with liquid chromatographs for analyzing biological or human samples in the clinical diagnostic field

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Liquid chromatographs and parts therefor; Laboratory apparatus and instruments for separating one or more compounds from a solution; Liquid chromatographs for use in identifying, quantifying and purifying individual components of a mixture; Laboratory apparatus and instruments, namely, chromatography columns, pipettors, dispensers, tubes and tube handlers
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.

Based on Foreign Application: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and will submit a copy of a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

Proposed:
Tracked Text Description: Liquid chromatographs and parts therefor; Laboratory apparatus and instruments, for performing chromatography, namely, liquid chromatographs, chromatography columns, pipettors, dispensers, tubes and tube handlers all for laboratory use; Laboratory apparatus and instruments for separating one or more compounds from a solution; Liquid chromatographs for use in identifying, quantifying and purifying individual components of a mixture; Laboratory apparatus and instruments, namely, chromatography columns, pipettors, dispensers, tubes and tube handlersClass 009 for Laboratory apparatus and instruments, for performing chromatography, namely, liquid chromatographs, chromatography columns, pipettors, dispensers, tubes and tube handlers all for laboratory use
Deleted Filing Basis: 1(b)
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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 authorized users in connection with the identified goods/services, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ __________ application number 012720371 filed 03/24/2014]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Community registration number 012720371 registered 08/20/2014 with a renewal date of __________ and an expiration date of 03/24/2024 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU1-19816019011-142026580_._VANQUISH-_OHIM_Registration_Certificate.pdf
Converted PDF file(s) ( 6 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5
Foreign Registration-6

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 010 for Liquid chromatographs and parts therefor; Laboratory apparatus and instruments for separating one or more compounds from a solution; Liquid chromatographs for use in identifying, quantifying and purifying individual components of a mixture; Laboratory apparatus and instruments, namely, chromatography columns, pipettors, dispensers, tubes and tube handlers; All of the foregoing for clinical diagnostic or medical diagnostic 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.

Based on Foreign Application: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and will submit a copy of a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

Proposed:
Tracked Text Description: Liquid chromatographs and parts therefor; Apparatus and instruments, for performing chromatography, namely, liquid chromatographs, chromatography columns, pipettors, dispensers, tubes and tube handlers all for clinical diagnostic or medical diagnostic use; Laboratory apparatus and instruments for separating one or more compounds from a solution; Liquid chromatographs for use in identifying, quantifying and purifying individual components of a mixture; Laboratory apparatus and instruments, namely, chromatography columns, pipettors, dispensers, tubes and tube handlers; All of the foregoing for clinical diagnostic or medical diagnostic useClass 010 for Apparatus and instruments, for performing chromatography, namely, liquid chromatographs, chromatography columns, pipettors, dispensers, tubes and tube handlers all for clinical diagnostic or medical diagnostic use
Deleted Filing Basis: 1(b)
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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 authorized users in connection with the identified goods/services, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ European Community application number 012720371 filed 03/24/2014]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Community registration number 012720371 registered 08/20/2014 with a renewal date of __________ and an expiration date of 03/24/2024 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU2-19816019011-142026580_._VANQUISH-_OHIM_Registration_Certificate.pdf
Converted PDF file(s) ( 6 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5
Foreign Registration-6

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

SIGNATURE(S)
Declaration Signature
I hereby elect to bypass the submission of a signed declaration, because I believe a declaration is not required by the rules of practice. I understand that the examining attorney could still, upon later review, require a signed declaration.
Response Signature
Signature: / Alan M. Doernberg /     Date: 05/14/2015
Signatory's Name: Alan M. Doernberg
Signatory's Position: Attorney of record, Pennsylvania bar member

Signatory's Phone Number: 760-476-6945

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: 86359576
Internet Transmission Date: Thu May 14 14:51:34 EDT 2015
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-201505141451341
22066-86359576-530d5f5fd45b4989e1cf5ed6f
20b8773e418eab8b98e1c16b7491121ad4b7483-
N/A-N/A-20150514142026580340