Response to Office Action

PHENOLOGIX

Phenomenex, Inc.

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 07/31/2017)

Response to Office Action


The table below presents the data as entered.

Input Field
Entered
SERIAL NUMBER 86911236
LAW OFFICE ASSIGNED LAW OFFICE 120
MARK SECTION
MARK http://tmng-al.gov.uspto.report/resting2/api/img/86911236/large
LITERAL ELEMENT PHENOLOGIX
STANDARD CHARACTERS YES
USPTO-GENERATED IMAGE YES
MARK STATEMENT The mark consists of standard characters, without claim to any particular font style, size or color.
GOODS AND/OR SERVICES SECTION (current)
INTERNATIONAL CLASS 042
DESCRIPTION
Consulting services in the field of design and development of engineering processes, Scientific and technological services, including chemical analysis and testing using chromatography and process development in the field of chromatography; design services, including chemical and process research in the field of production of bioindustrial chemicals using chromatography; chromatography services, including gas chromatography, liquid chromatography, ion chromatography, ion exchange chromatography; solid phase extraction chromatography, chiral screening and optimization of chromatography processes, chromatography purification services; consulting, engineering, training and design services in the field of chromatography; chiral screening and analytical to preparative scaling of processes for chromatography
FILING BASIS Section 1(b)
GOODS AND/OR SERVICES SECTION (proposed)
INTERNATIONAL CLASS 042
TRACKED TEXT DESCRIPTION
Consulting services in the field of design and development of engineering processes, Scientific and technological services, including chemical analysis and testing using chromatography and process development in the field of chromatography; Consulting services in the field of design and development of engineering processes; design services, including chemical and process research in the field of production of bioindustrial chemicals using chromatography; Scientific and technological services, namely, chemical analysis and testing using chromatography and process development in the field of chromatography; chromatography services, including gas chromatography, liquid chromatography, ion chromatography, ion exchange chromatography; design services in the field of production of bioindustrial chemicals using chromatography; solid phase extraction chromatography, chiral screening and optimization of chromatography processes, chromatography purification services; chemical and process scientific research in the field of production of bioindustrial chemicals using chromatography; chromatography scientific laboratory services, in the field of gas chromatography, liquid chromatography, ion chromatography, ion exchange chromatography; chiral screening and analytical to preparative scaling of processes for chromatography; laboratory services, namely, solid phase extraction chromatography, chiral screening and optimization of chromatography processes, chromatography purification services; consulting, engineering, training and design services in the field of chromatography; laboratory services, namely, chiral screening and analysis to preparative scaling of processes for chromatography
FINAL DESCRIPTION
Consulting services in the field of design and development of engineering processes; Scientific and technological services, namely, chemical analysis and testing using chromatography and process development in the field of chromatography; design services in the field of production of bioindustrial chemicals using chromatography; chemical and process scientific research in the field of production of bioindustrial chemicals using chromatography; chromatography scientific laboratory services, in the field of gas chromatography, liquid chromatography, ion chromatography, ion exchange chromatography; laboratory services, namely, solid phase extraction chromatography, chiral screening and optimization of chromatography processes, chromatography purification services; consulting, engineering, training and design services in the field of chromatography; laboratory services, namely, chiral screening and analysis to preparative scaling of processes for chromatography
FILING BASIS Section 1(b)
SIGNATURE SECTION
RESPONSE SIGNATURE /LOWELL ANDERSON/
SIGNATORY'S NAME Lowell Anderson
SIGNATORY'S POSITION Attorney of Record
SIGNATORY'S PHONE NUMBER 949-855-1246
DATE SIGNED 06/29/2016
AUTHORIZED SIGNATORY YES
FILING INFORMATION SECTION
SUBMIT DATE Wed Jun 29 13:09:51 EDT 2016
TEAS STAMP USPTO/ROA-XX.XXX.X.XX-201
60629130951571033-8691123
6-5505d9f513875506f873ece
bff5963678cac2eb3f190f71c
fab51d84af29d68c4f-N/A-N/
A-20160629125527911797



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 07/31/2017)

Response to Office Action


To the Commissioner for Trademarks:

Application serial no. 86911236 PHENOLOGIX(Standard Characters, see http://tmng-al.gov.uspto.report/resting2/api/img/86911236/large) 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 042 for Consulting services in the field of design and development of engineering processes, Scientific and technological services, including chemical analysis and testing using chromatography and process development in the field of chromatography; design services, including chemical and process research in the field of production of bioindustrial chemicals using chromatography; chromatography services, including gas chromatography, liquid chromatography, ion chromatography, ion exchange chromatography; solid phase extraction chromatography, chiral screening and optimization of chromatography processes, chromatography purification services; consulting, engineering, training and design services in the field of chromatography; chiral screening and analytical to preparative scaling of processes for chromatography
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: Consulting services in the field of design and development of engineering processes, Scientific and technological services, including chemical analysis and testing using chromatography and process development in the field of chromatography; Consulting services in the field of design and development of engineering processes; design services, including chemical and process research in the field of production of bioindustrial chemicals using chromatography; Scientific and technological services, namely, chemical analysis and testing using chromatography and process development in the field of chromatography; chromatography services, including gas chromatography, liquid chromatography, ion chromatography, ion exchange chromatography; design services in the field of production of bioindustrial chemicals using chromatography; solid phase extraction chromatography, chiral screening and optimization of chromatography processes, chromatography purification services; chemical and process scientific research in the field of production of bioindustrial chemicals using chromatography; chromatography scientific laboratory services, in the field of gas chromatography, liquid chromatography, ion chromatography, ion exchange chromatography; chiral screening and analytical to preparative scaling of processes for chromatography; laboratory services, namely, solid phase extraction chromatography, chiral screening and optimization of chromatography processes, chromatography purification services; consulting, engineering, training and design services in the field of chromatography; laboratory services, namely, chiral screening and analysis to preparative scaling of processes for chromatographyClass 042 for Consulting services in the field of design and development of engineering processes; Scientific and technological services, namely, chemical analysis and testing using chromatography and process development in the field of chromatography; design services in the field of production of bioindustrial chemicals using chromatography; chemical and process scientific research in the field of production of bioindustrial chemicals using chromatography; chromatography scientific laboratory services, in the field of gas chromatography, liquid chromatography, ion chromatography, ion exchange chromatography; laboratory services, namely, solid phase extraction chromatography, chiral screening and optimization of chromatography processes, chromatography purification services; consulting, engineering, training and design services in the field of chromatography; laboratory services, namely, chiral screening and analysis to preparative scaling of processes for chromatography
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: /LOWELL ANDERSON/     Date: 06/29/2016
Signatory's Name: Lowell Anderson
Signatory's Position: Attorney of Record

Signatory's Phone Number: 949-855-1246

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

        
Serial Number: 86911236
Internet Transmission Date: Wed Jun 29 13:09:51 EDT 2016
TEAS Stamp: USPTO/ROA-XX.XXX.X.XX-201606291309515710
33-86911236-5505d9f513875506f873ecebff59
63678cac2eb3f190f71cfab51d84af29d68c4f-N
/A-N/A-20160629125527911797



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