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. 87464804 THERANOS(Standard Characters, see http://uspto.report/TM/87464804/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 Diagnostic reagents for laboratory use, namely, for clinical, medical, or forensic laboratory use; reagents for chemical analysis; diagnostic kits consisting primarily of monoclonal antibodies, buffers, and reagents; genetic identity tests comprised of reagents; 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; chemical preparations to be used in biochemical and clinical research; diagnostic preparations for laboratory use, namely, for clinical, medical, or forensic laboratory use; test strips for laboratory analysis of blood and other body fluids; testing kits comprised of reagents for measuring analytes in a biological sample; genetic diagnostic tests comprised of reagents
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: Diagnostic reagents for laboratory use, namely, for clinical, medical, or forensic laboratory use; reagents for chemical analysis; reagents for chemical analysis except for medical and veterinary use; diagnostic kits consisting primarily of monoclonal antibodies, buffers, and reagents; diagnostic kits consisting primarily of monoclonal antibodies, buffers, and reagents for scientific laboratory use; genetic identity tests comprised of reagents; genetic identity tests comprised of reagents for non-medical purposes; 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; chemical preparations to be used in biochemical and clinical research; diagnostic preparations for laboratory use, namely, for clinical, medical, or forensic laboratory use; test strips for laboratory analysis of blood and other body fluids; testing kits comprised of reagents for measuring analytes in a biological sample; testing kits comprised of reagents for measuring analytes in a biological sample for scientific and research use; genetic diagnostic tests comprised of reagents; genetic diagnostic tests comprised of reagents for non-medical purposesClass 001 for Diagnostic reagents for laboratory use, namely, for clinical, medical, or forensic laboratory use; reagents for chemical analysis except for medical and veterinary use; diagnostic kits consisting primarily of monoclonal antibodies, buffers, and reagents for scientific laboratory use; genetic identity tests comprised of reagents for non-medical purposes; 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; chemical preparations to be used in biochemical and clinical research; diagnostic preparations for laboratory use, namely, for clinical, medical, or forensic laboratory use; test strips for laboratory analysis of blood and other body fluids; testing kits comprised of reagents for measuring analytes in a biological sample for scientific and research use; genetic diagnostic tests comprised of reagents for non-medical purposes
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 005 for Biological and chemical preparations for medical or veterinary use; reagents and media for veterinary purposes; clinical medical reagents; biological and chemical preparations, namely, antibodies for veterinary use to detect and analyze substances; diagnostic kits for medical or veterinary use, comprised of medical diagnostic reagents and assays for testing blood and other body fluids; diagnostic preparations for medical or veterinary purposes; testing kits comprised of medical diagnostic reagents and assays for testing bodily fluids; medical diagnostic test kits comprised of reagents and assays for testing of body fluids; medical diagnostic and monitoring test strips for use in the detection of a wide variety of diseases and health conditions; test strips for medical analysis of blood and other body fluids; ovulation test kits; biological tissue cultures for medical or veterinary purposes; culture media for cultivating blood cells for medical purposes
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: Biological and chemical preparations for medical or veterinary use; Biological and chemical preparations for medical or veterinary use to detect, analyze, monitor and treat a wide variety of infectious diseases, bacteria-based diseases, autoimmune diseases, gastrointestinal diseases, respiratory diseases, renal diseases, pulmonary diseases, endocrinal diseases, blood diseases and disorders, cancerous diseases, metabolic diseases, and neurological diseases and conditions; reagents and media for veterinary purposes; clinical medical reagents; biological and chemical preparations, namely, antibodies for veterinary use to detect and analyze substances; diagnostic kits for medical or veterinary use, comprised of medical diagnostic reagents and assays for testing blood and other body fluids; diagnostic preparations for medical or veterinary purposes; testing kits comprised of medical diagnostic reagents and assays for testing bodily fluids; medical diagnostic test kits comprised of reagents and assays for testing of body fluids; medical diagnostic and monitoring test strips for use in the detection of a wide variety of diseases and health conditions; medical diagnostic and monitoring test strips for use in the detection of a wide variety of diseases and health conditions, namely, infectious diseases, bacteria-based diseases, autoimmune diseases, gastrointestinal diseases, respiratory diseases, renal diseases, pulmonary diseases, endocrinal diseases, blood diseases and disorders, cancerous diseases, metabolic diseases, and neurological diseases and conditions; test strips for medical analysis of blood and other body fluids; ovulation test kits; biological tissue cultures for medical or veterinary purposes; culture media for cultivating blood cells for medical purposes; reagents for chemical analysis for medical and veterinary use; diagnostic kits consisting primarily of monoclonal antibodies, buffers, and reagents for diagnosis of disease; genetic identity tests comprised of reagents for medical purposes; testing kits comprised of reagents for measuring analytes in a biological sample for medical diagnostic use; genetic diagnostic tests comprised of reagents for medical purposesClass 005 for Biological and chemical preparations for medical or veterinary use to detect, analyze, monitor and treat a wide variety of infectious diseases, bacteria-based diseases, autoimmune diseases, gastrointestinal diseases, respiratory diseases, renal diseases, pulmonary diseases, endocrinal diseases, blood diseases and disorders, cancerous diseases, metabolic diseases, and neurological diseases and conditions; reagents and media for veterinary purposes; clinical medical reagents; biological and chemical preparations, namely, antibodies for veterinary use to detect and analyze substances; diagnostic kits for medical or veterinary use, comprised of medical diagnostic reagents and assays for testing blood and other body fluids; diagnostic preparations for medical or veterinary purposes; testing kits comprised of medical diagnostic reagents and assays for testing bodily fluids; medical diagnostic test kits comprised of reagents and assays for testing of body fluids; medical diagnostic and monitoring test strips for use in the detection of a wide variety of diseases and health conditions, namely, infectious diseases, bacteria-based diseases, autoimmune diseases, gastrointestinal diseases, respiratory diseases, renal diseases, pulmonary diseases, endocrinal diseases, blood diseases and disorders, cancerous diseases, metabolic diseases, and neurological diseases and conditions; test strips for medical analysis of blood and other body fluids; ovulation test kits; biological tissue cultures for medical or veterinary purposes; culture media for cultivating blood cells for medical purposes; reagents for chemical analysis for medical and veterinary use; diagnostic kits consisting primarily of monoclonal antibodies, buffers, and reagents for diagnosis of disease; genetic identity tests comprised of reagents for medical purposes; testing kits comprised of reagents for measuring analytes in a biological sample for medical diagnostic use; genetic diagnostic tests comprised of reagents for medical purposes
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 or 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 controlling the operation of medical test equipment and test results; 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, personal digital assistants, tablet computers, mobile phones, smartphones, and other cellular or wireless communication devices for voice, data or image transmission; portable biomonitoring devices not for medical purposes; electronic publications, namely, downloadable newsletters in the field of medical diagnostic testing, downloadable e-zines, magazines, books, manuals, pamphlets, and journals, all in the fields of healthcare, medicine, personal health and fitness, biomonitoring, medical diagnostics, monitoring and testing; electronic diaries; laboratory apparatus, for use in medical laboratories, for analysis of body fluids and tissue
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 or 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 controlling the operation of medical test equipment and test results; 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, personal digital assistants, tablet computers, mobile phones, smartphones, and other cellular or wireless communication devices for voice, data or image transmission; portable biomonitoring devices not for medical purposes; electronic publications, namely, downloadable newsletters in the field of medical diagnostic testing, downloadable e-zines, magazines, books, manuals, pamphlets, and journals, all in the fields of healthcare, medicine, personal health and fitness, biomonitoring, medical diagnostics, monitoring and testing; electronic diaries; laboratory apparatus, for use in medical laboratories, for analysis of body fluids and tissue; apparatus for urine analysis for medical reporting, namely, computer hardware and software for use with urine analysis equipment for transmitting collected data; medical reporting apparatus for biological tissue or fluid analysis namely, computer hardware and software for use with biological tissue and fluid analysis equipment for transmitting collected data; medical apparatus in the nature of mobile electronic devices, namely, computer hardware and software for reporting and transmitting collected data, for medical and healthcare purposes for individualized medicine and healthcareClass 009 for Computer software for healthcare monitoring; computer software for medical diagnostics testing and monitoring and for communicating medical test results to patients or 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 controlling the operation of medical test equipment and test results; 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, personal digital assistants, tablet computers, mobile phones, smartphones, and other cellular or wireless communication devices for voice, data or image transmission; portable biomonitoring devices not for medical purposes; electronic publications, namely, downloadable newsletters in the field of medical diagnostic testing, downloadable e-zines, magazines, books, manuals, pamphlets, and journals, all in the fields of healthcare, medicine, personal health and fitness, biomonitoring, medical diagnostics, monitoring and testing; electronic diaries; laboratory apparatus, for use in medical laboratories, for analysis of body fluids and tissue; apparatus for urine analysis for medical reporting, namely, computer hardware and software for use with urine analysis equipment for transmitting collected data; medical reporting apparatus for biological tissue or fluid analysis namely, computer hardware and software for use with biological tissue and fluid analysis equipment for transmitting collected data; medical apparatus in the nature of mobile electronic devices, namely, computer hardware and software for reporting and transmitting collected data, 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 010 for Medical devices, namely, portable biomonitoring devices; 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 urine analysis for medical diagnostics, monitoring and reporting; medical diagnostic, monitoring and reporting apparatus for biological tissue or fluid analysis; apparatus for clinical diagnosis; containers especially made for processing blood samples for medical purposes; 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, and blood oxygen, blood glucose, blood composition, cholesterol and temperature for monitoring a wide variety of physical conditions and diseases; medical diagnostic 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; medical monitors for monitoring a wide variety of physical conditions and diseases, namely, individualized, electronic monitors for measuring biochemical, hematological, neurological, pulmonary, muscular and cardiac activity; home or portable monitors for monitoring a wide variety of physical conditions and diseases, namely, individualized, electronic monitors for measuring biochemical, hematological, neurological, pulmonary, muscular and cardiac activity; medical apparatus in the nature of mobile electronic devices, namely, testing, monitoring and reporting devices for medical and healthcare purposes for individualized medicine and healthcare; portable biomonitoring devices for medical purposes
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; 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 urine analysis for medical diagnostics, monitoring and reporting; apparatus for urine analysis for medical diagnostics and monitoring; medical diagnostic, monitoring and reporting apparatus for biological tissue or fluid analysis; medical diagnostic and monitoring apparatus for biological tissue or fluid analysis; apparatus for clinical diagnosis; apparatus for clinical diagnosis for the detection of a wide variety of diseases and health conditions, namely, infectious diseases, bacteria-based diseases, autoimmune diseases, gastrointestinal diseases, respiratory diseases, renal diseases, pulmonary diseases, endocrinal diseases, blood diseases and disorders, cancerous diseases, metabolic diseases, and neurological diseases and conditions; containers especially made for processing blood samples for medical purposes; devices for monitoring blood sugar; electronic diagnostic apparatus, namely, analytic 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 and health conditions, namely, infectious diseases, bacteria-based diseases, autoimmune diseases, gastrointestinal diseases, respiratory diseases, renal diseases, pulmonary diseases, endocrinal diseases, blood diseases and disorders, cancerous diseases, metabolic diseases, and neurological diseases and conditions; health monitoring devices, namely, personal medical monitors of blood pressure, pulse, and blood oxygen, blood glucose, blood composition, cholesterol and temperature for monitoring a wide variety of physical conditions and diseases; medical diagnostic 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; medical monitors for monitoring a wide variety of physical conditions and diseases, namely, individualized, electronic monitors for measuring biochemical, hematological, neurological, pulmonary, muscular and cardiac activity; home or portable monitors for monitoring a wide variety of physical conditions and diseases, namely, individualized, electronic monitors for measuring biochemical, hematological, neurological, pulmonary, muscular and cardiac activity; medical apparatus in the nature of mobile electronic devices, namely, testing, monitoring and reporting devices for medical and healthcare purposes for individualized medicine and healthcare; medical apparatus in the nature of mobile electronic devices, namely, testing and monitoring devices for medical and healthcare purposes, namely, for the detection of a wide variety of diseases and health conditions, namely, infectious diseases, bacteria-based diseases, autoimmune diseases, gastrointestinal diseases, respiratory diseases, renal diseases, pulmonary diseases, endocrinal diseases, blood diseases and disorders, cancerous diseases, metabolic diseases, and neurological diseases and conditions, for individualized medicine and healthcare; portable biomonitoring devices for medical purposesClass 010 for Medical devices, namely, portable biomonitoring devices; 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 urine analysis for medical diagnostics and monitoring; medical diagnostic and monitoring apparatus for biological tissue or fluid analysis; apparatus for clinical diagnosis for the detection of a wide variety of diseases and health conditions, namely, infectious diseases, bacteria-based diseases, autoimmune diseases, gastrointestinal diseases, respiratory diseases, renal diseases, pulmonary diseases, endocrinal diseases, blood diseases and disorders, cancerous diseases, metabolic diseases, and neurological diseases and conditions; containers especially made for processing blood samples for medical purposes; devices for monitoring blood sugar; electronic diagnostic apparatus, namely, analytic apparatus for the detection of a wide variety of diseases and health conditions, namely, infectious diseases, bacteria-based diseases, autoimmune diseases, gastrointestinal diseases, respiratory diseases, renal diseases, pulmonary diseases, endocrinal diseases, blood diseases and disorders, cancerous diseases, metabolic diseases, and neurological diseases and conditions; health monitoring devices, namely, personal medical monitors of blood pressure, pulse, and blood oxygen, blood glucose, blood composition, cholesterol and temperature for monitoring a wide variety of physical conditions and diseases; medical diagnostic 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; medical monitors for monitoring a wide variety of physical conditions and diseases, namely, individualized, electronic monitors for measuring biochemical, hematological, neurological, pulmonary, muscular and cardiac activity; home or portable monitors for monitoring a wide variety of physical conditions and diseases, namely, individualized, electronic monitors for measuring biochemical, hematological, neurological, pulmonary, muscular and cardiac activity; medical apparatus in the nature of mobile electronic devices, namely, testing and monitoring devices for medical and healthcare purposes, namely, for the detection of a wide variety of diseases and health conditions, namely, infectious diseases, bacteria-based diseases, autoimmune diseases, gastrointestinal diseases, respiratory diseases, renal diseases, pulmonary diseases, endocrinal diseases, blood diseases and disorders, cancerous diseases, metabolic diseases, and neurological diseases and conditions, for individualized medicine and healthcare; portable biomonitoring devices for medical purposes
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 035 for Compiling of information into computer databases; management and compilation of computerized databases; providing an internet-based database of patient medical information designed to facilitate sharing and maintenance of patient medical information
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: Compiling of information into computer databases; management and compilation of computerized databases; providing an internet-based database of patient medical information designed to facilitate sharing and maintenance of patient medical informationClass 035 for Compiling of information into computer databases; management and compilation of computerized databases
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 041 for On-line journals, namely, blogs in the fields of healthcare, medicine, diagnostics and personal health and fitness
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: Class 041 for On-line journals, namely, blogs in the fields of healthcare, medicine, diagnostics and personal health and fitness
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 042 for Medical and scientific research services in the fields of blood analysis health care; providing a web site featuring technology that enables patients, physicians, insurers and other healthcare providers to generate, manage and exchange medical information; Software as a Service (SaaS) for medical and disease analysis; veterinary special services, namely, veterinary laboratory 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 and scientific research services in the fields of blood analysis health care; providing a web site featuring technology that enables patients, physicians, insurers and other healthcare providers to generate, manage and exchange medical information; Software as a Service (SaaS) for medical and disease analysis; Software as a Service (SaaS) featuring software for healthcare monitoring; Software as a Service (SaaS) featuring software for medical diagnostics, testing and monitoring and for communicating medical test results to patients or service providers in the medical and healthcare fields; Software as a Service (SaaS) featuring software for use in biomonitoring of humans and of animals; Software as a Service (SaaS) featuring software for medical monitoring and analysis of medical data; Software as a Service (SaaS) featuring software for controlling the operation of medical test equipment and reporting and management of test results; Software as a Service (SaaS) featuring software for analysis of body fluids; Software as a Service (SaaS) featuring software for communication and data transfer between health care professionals and patients; veterinary special services, namely, veterinary laboratory services; medical diagnostic monitoring services; medical monitoring services, namely, monitoring the efficacy of therapy and total patient or consumer health; medical monitoring and reporting services; 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; health care; maintaining patient medical records and files; medical information; medical 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; providing an internet-based database of patient medical information designed to facilitate sharing and maintenance of patient medical informationClass 042 for Medical and scientific research services in the fields of blood analysis health care; providing a web site featuring technology that enables patients, physicians, insurers and other healthcare providers to generate, manage and exchange medical information; Software as a Service (SaaS) featuring software for healthcare monitoring; Software as a Service (SaaS) featuring software for medical diagnostics, testing and monitoring and for communicating medical test results to patients or service providers in the medical and healthcare fields; Software as a Service (SaaS) featuring software for use in biomonitoring of humans and of animals; Software as a Service (SaaS) featuring software for medical monitoring and analysis of medical data; Software as a Service (SaaS) featuring software for controlling the operation of medical test equipment and reporting and management of test results; Software as a Service (SaaS) featuring software for analysis of body fluids; Software as a Service (SaaS) featuring software for communication and data transfer between health care professionals and patients; veterinary special services, namely, veterinary laboratory services; medical diagnostic monitoring services; medical monitoring services, namely, monitoring the efficacy of therapy and total patient or consumer health; medical monitoring and reporting services; 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; health care; maintaining patient medical records and files; medical information; medical 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; providing an internet-based database of patient medical information designed to facilitate sharing and maintenance of patient medical information
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 diagnostic monitoring services; medical monitoring services, namely, monitoring the efficacy of therapy and total patient or consumer health; medical monitoring and reporting services; 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; health care; maintaining patient medical records and files; medical information; medical 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; providing maintenance services for medical equipment or laboratory equipment; veterinary special services, namely, medical diagnostic services, healthcare management services, and emergency and trauma services, all for animals
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 diagnostic monitoring services; medical monitoring services, namely, monitoring the efficacy of therapy and total patient or consumer health; medical monitoring and reporting services; 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; health care; maintaining patient medical records and files; medical information; medical 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; providing maintenance services for medical equipment or laboratory equipment; veterinary special services, namely, medical diagnostic services, healthcare management services, and emergency and trauma services, all for animals; providing an internet-based database of patient medical information designed to facilitate sharing and maintenance of patient medical informationClass 044 for Medical diagnostic monitoring services; medical monitoring services, namely, monitoring the efficacy of therapy and total patient or consumer health; medical monitoring and reporting services; 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; health care; maintaining patient medical records and files; medical information; medical 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; providing maintenance services for medical equipment or laboratory equipment; veterinary special services, namely, medical diagnostic services, healthcare management services, and emergency and trauma services, all for animals; providing an internet-based database of patient medical information designed to facilitate sharing and maintenance of patient medical information
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 hereby adds the following class of goods/services to the application:
New: Class 037 for Providing maintenance services for medical equipment or laboratory equipment
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.

FEE(S)
Fee(s) in the amount of $275 is being submitted.

SIGNATURE(S)
Declaration Signature
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice.
Response Signature
Signature: /sabel/     Date: 02/26/2018
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 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.

        
RAM Sale Number: 87464804
RAM Accounting Date: 02/27/2018
        
Serial Number: 87464804
Internet Transmission Date: Mon Feb 26 20:55:17 EST 2018
TEAS Stamp: USPTO/ROA-X.XX.XXX.XXX-20180226205517166
011-87464804-510dd4720b8259ef0823f59234e
806eaeb86db6564c963f3df0c0f3ddc53cc41cf-
DA-7365-20180226195217480938