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 1960 (Rev 10/2011) |
OMB No. 0651-0050 (Exp 09/20/2020) |
Request for Reconsideration after Final Action
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
88071814 |
LAW OFFICE ASSIGNED |
LAW OFFICE 108 |
MARK SECTION |
MARK |
mark |
LITERAL ELEMENT |
APTIVA |
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 (001) (current) |
INTERNATIONAL CLASS |
001 |
DESCRIPTION |
Chemical products for scientific purposes, namely, biomarkers for scientific testing; reagents for scientific and research use; all of
the foregoing for use in connection with a fluorescence multi-analyte immunoassay system for medical diagnostic and research use and not for use in connection with detecting nucleic acid |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
TOM1803534 |
FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
Tonga |
FOREIGN FILING DATE |
02/28/2018 |
GOODS AND/OR SERVICES SECTION (001) (proposed) |
INTERNATIONAL CLASS |
001 |
TRACKED TEXT DESCRIPTION |
Chemical products for scientific purposes, namely, biomarkers for scientific testing; reagents for scientific and research use; all of the foregoing for use in connection with a fluorescence multi-analyte immunoassay system for medical
diagnostic and research use and not for use in connection with detecting nucleic acid; all of the foregoing for use in connection with a fluorescence
multi-analyte immunoassay system for medical research use and not for use in connection with detecting nucleic acid |
FINAL DESCRIPTION |
Chemical products for scientific purposes, namely, biomarkers for scientific testing; reagents for scientific and research use; all of
the foregoing for use in connection with a fluorescence multi-analyte immunoassay system for medical research use and not for use in connection with detecting nucleic acid |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
TOM1803534 |
FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
Tonga |
FOREIGN FILING DATE |
02/28/2018 |
INTENT TO
PERFECT 44(d)
|
At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await
the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained. |
GOODS AND/OR SERVICES SECTION (005) (current) |
INTERNATIONAL CLASS |
005 |
DESCRIPTION |
Pharmaceutical and veterinary products, namely, fluorescence multi-analyte immunoassay system for medical diagnostic and research use;
clinical diagnostic assays for medical purposes, namely, identifying and diagnosing of gastrointestinal, neurological, autoimmune, infectious, hepatological, rheumatologic, nephrological,
dermatological, coagulation, endocrine, pulmonologic, immune system related, and respiratory diseases; all of the foregoing for use in connection with a fluorescence multi-analyte immunoassay system
for medical diagnostic and research use and not for use in connection with detecting nucleic acid |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
TOM1803534 |
FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
Tonga |
FOREIGN FILING DATE |
02/28/2018 |
GOODS AND/OR SERVICES SECTION (005) (proposed) |
INTERNATIONAL CLASS |
005 |
TRACKED TEXT DESCRIPTION |
Pharmaceutical and veterinary products, namely, fluorescence multi-analyte immunoassay system for
medical diagnostic and research use; Pharmaceutical and veterinary products, namely, fluorescence multi-analyte immunoassay system for medical diagnostic use,
namely, gastrointestinal, neurological, autoimmune, infectious, hepatological, rheumatologic, nephrological, dermatological, coagulation, endocrine, pulmonologic, immune system related, and
respiratory diseases; clinical diagnostic assays for medical purposes, namely, identifying and diagnosing of gastrointestinal, neurological, autoimmune, infectious,
hepatological, rheumatologic, nephrological, dermatological, coagulation, endocrine, pulmonologic, immune system related, and respiratory diseases; all of the
foregoing for use in connection with a fluorescence multi-analyte immunoassay system for medical diagnostic and research use and not for use in connection with detecting nucleic acid;
all of the foregoing for use in connection with a fluorescence multi-analyte immunoassay system for medical diagnostic use and not for use in connection with
detecting nucleic acid |
FINAL DESCRIPTION |
Pharmaceutical and veterinary products, namely, fluorescence multi-analyte immunoassay system for medical diagnostic use, namely,
gastrointestinal, neurological, autoimmune, infectious, hepatological, rheumatologic, nephrological, dermatological, coagulation, endocrine, pulmonologic, immune system related, and respiratory
diseases; clinical diagnostic assays for medical purposes, namely, identifying and diagnosing of gastrointestinal, neurological, autoimmune, infectious, hepatological, rheumatologic, nephrological,
dermatological, coagulation, endocrine, pulmonologic, immune system related, and respiratory diseases; all of the foregoing for use in connection with a fluorescence multi-analyte immunoassay system
for medical diagnostic use and not for use in connection with detecting nucleic acid |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
TOM1803534 |
FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
Tonga |
FOREIGN FILING DATE |
02/28/2018 |
INTENT TO
PERFECT 44(d)
|
At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await
the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained. |
GOODS AND/OR SERVICES SECTION (009) (current) |
INTERNATIONAL CLASS |
009 |
DESCRIPTION |
Laboratory apparatus for diagnosing, monitoring, and treating diseases; all of the foregoing for use in connection with a fluorescence
multi-analyte immunoassay system for medical diagnostic and research use and not for use in connection with detecting nucleic acid |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
TOM1803534 |
FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
Tonga |
FOREIGN FILING DATE |
02/28/2018 |
GOODS AND/OR SERVICES SECTION (009) (proposed) |
INTERNATIONAL CLASS |
009 |
TRACKED TEXT DESCRIPTION |
Laboratory apparatus for diagnosing, monitoring, and treating diseases; Laboratory apparatus for testing of plasma, serum, sputum, fecal, and urine samples for research purposes; all of the foregoing for use in connection with
a fluorescence multi-analyte immunoassay system for medical diagnostic and research use and not for use in connection with detecting nucleic acid; all of the
foregoing for use in connection with a fluorescence multi-analyte immunoassay system for laboratory research use and not for use in connection with detecting nucleic acid |
FINAL DESCRIPTION |
Laboratory apparatus for testing of plasma, serum, sputum, fecal, and urine samples for research purposes; all of the foregoing for use
in connection with a fluorescence multi-analyte immunoassay system for laboratory research use and not for use in connection with detecting nucleic acid |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
TOM1803534 |
FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
Tonga |
FOREIGN FILING DATE |
02/28/2018 |
INTENT TO
PERFECT 44(d)
|
At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await
the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained. |
GOODS AND/OR SERVICES SECTION (010) (current) |
INTERNATIONAL CLASS |
010 |
DESCRIPTION |
Apparatus and instruments for medical diagnosis, namely, medical apparatus for diagnosing, monitoring, and treating diseases; all of
the foregoing for use in connection with a fluorescence multi-analyte immunoassay system for medical diagnostic and research use and not for use in connection with detecting nucleic acid |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
TOM1803534 |
FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
Tonga |
FOREIGN FILING DATE |
02/28/2018 |
GOODS AND/OR SERVICES SECTION (010) (proposed) |
INTERNATIONAL CLASS |
010 |
TRACKED TEXT DESCRIPTION |
Apparatus and instruments for medical diagnosis, namely, medical apparatus for diagnosing, monitoring,
and treating diseases; Apparatus and instruments for medical diagnosis, namely, medical apparatus for diagnosing, monitoring, and treating gastrointestinal,
neurological, autoimmune, infectious, hepatological, rheumatologic, nephrological, dermatological, coagulation, endocrine, pulmonologic, immune system related, and respiratory diseases;
all of the foregoing for use in connection with a fluorescence multi-analyte immunoassay system for medical diagnostic and research use and not for use in connection
with detecting nucleic acid; all of the foregoing for use in connection with a fluorescence multi-analyte immunoassay system for medical diagnostic use and not
for use in connection with detecting nucleic acid |
FINAL DESCRIPTION |
Apparatus and instruments for medical diagnosis, namely, medical apparatus for diagnosing, monitoring, and treating gastrointestinal,
neurological, autoimmune, infectious, hepatological, rheumatologic, nephrological, dermatological, coagulation, endocrine, pulmonologic, immune system related, and respiratory diseases; all of the
foregoing for use in connection with a fluorescence multi-analyte immunoassay system for medical diagnostic use and not for use in connection with detecting nucleic acid |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
TOM1803534 |
FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
Tonga |
FOREIGN FILING DATE |
02/28/2018 |
INTENT TO
PERFECT 44(d)
|
At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await
the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained. |
CORRESPONDENCE INFORMATION (current) |
NAME |
Brian Focarino |
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE |
trademarks@cooley.com |
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) |
apeck@cooley.com; bfocarino@cooley.com; dkoons@cooley.com |
DOCKET/REFERENCE NUMBER |
317350-20000 |
CORRESPONDENCE INFORMATION (proposed) |
NAME |
Brian Focarino |
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE |
trademarks@cooley.com |
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) |
apeck@cooley.com; bfocarino@cooley.com; dkoons@cooley.com |
DOCKET/REFERENCE NUMBER |
317350-20000 |
SIGNATURE SECTION |
RESPONSE SIGNATURE |
/Brian J. Focarino/ |
SIGNATORY'S NAME |
Brian J. Focarino |
SIGNATORY'S POSITION |
Attorney of Record, California Bar Member |
DATE SIGNED |
04/24/2020 |
AUTHORIZED SIGNATORY |
YES |
CONCURRENT APPEAL NOTICE FILED |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Fri Apr 24 16:40:02 ET 2020 |
TEAS STAMP |
USPTO/RFR-XX.XXX.XX.XX-20
200424164002592786-880718
14-710dfb6d30c8e528d431a3
55e9d41d28993395c9d197512
7e149ccfbfd3b2fdf-N/A-N/A
-20200424163630914811 |
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 1960 (Rev 10/2011) |
OMB No. 0651-0050 (Exp 09/20/2020) |
Request for Reconsideration after Final Action
To the Commissioner for Trademarks:
Application serial no.
88071814 APTIVA(Standard Characters, see http://uspto.report/TM/88071814/mark.png) has been amended as follows:
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current:
Class 001 for Chemical products for scientific purposes, namely, biomarkers for scientific testing; reagents for scientific and research use; all of the foregoing for use in connection with a
fluorescence multi-analyte immunoassay system for medical diagnostic and research use and not for use in connection with detecting nucleic acid
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.
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 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[ Tonga application number TOM1803534 filed 02/28/2018]. 15 U.S.C.Section 1126(d), as amended.
Proposed:
Tracked Text Description: Chemical products for scientific purposes, namely, biomarkers for scientific testing;
reagents for scientific and research
use;
all of the foregoing for use in connection with a fluorescence multi-analyte immunoassay system for medical diagnostic and research use and not for use in
connection with detecting nucleic acid;
all of the foregoing for use in connection with a fluorescence multi-analyte immunoassay system for medical research use
and not for use in connection with detecting nucleic acidClass 001 for Chemical products for scientific purposes, namely, biomarkers for scientific testing; reagents for scientific and research
use; all of the foregoing for use in connection with a fluorescence multi-analyte immunoassay system for medical research use and not for use in connection with detecting nucleic acid
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.
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 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 [ Tonga application number TOM1803534 filed 02/28/2018]. 15 U.S.C.Section
1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the
foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.
Applicant proposes to amend the following:
Current:
Class 005 for Pharmaceutical and veterinary products, namely, fluorescence multi-analyte immunoassay system for medical diagnostic and research use; clinical diagnostic assays for medical purposes,
namely, identifying and diagnosing of gastrointestinal, neurological, autoimmune, infectious, hepatological, rheumatologic, nephrological, dermatological, coagulation, endocrine, pulmonologic, immune
system related, and respiratory diseases; all of the foregoing for use in connection with a fluorescence multi-analyte immunoassay system for medical diagnostic and research use and not for use in
connection with detecting nucleic acid
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.
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 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[ Tonga application number TOM1803534 filed 02/28/2018]. 15 U.S.C.Section 1126(d), as amended.
Proposed:
Tracked Text Description: Pharmaceutical and veterinary products, namely, fluorescence multi-analyte immunoassay system for medical diagnostic and research
use;
Pharmaceutical and veterinary products, namely, fluorescence multi-analyte immunoassay system for medical diagnostic use, namely, gastrointestinal,
neurological, autoimmune, infectious, hepatological, rheumatologic, nephrological, dermatological, coagulation, endocrine, pulmonologic, immune system related, and respiratory diseases;
clinical diagnostic assays for medical purposes, namely, identifying and diagnosing of gastrointestinal, neurological, autoimmune, infectious, hepatological, rheumatologic,
nephrological, dermatological, coagulation, endocrine, pulmonologic, immune system related, and respiratory diseases;
all of the foregoing for use in
connection with a fluorescence multi-analyte immunoassay system for medical diagnostic and research use and not for use in connection with detecting nucleic acid;
all of the foregoing for use in connection with a fluorescence multi-analyte immunoassay system for medical diagnostic use and not for use in connection with detecting nucleic acidClass
005 for Pharmaceutical and veterinary products, namely, fluorescence multi-analyte immunoassay system for medical diagnostic use, namely, gastrointestinal, neurological, autoimmune, infectious,
hepatological, rheumatologic, nephrological, dermatological, coagulation, endocrine, pulmonologic, immune system related, and respiratory diseases; clinical diagnostic assays for medical purposes,
namely, identifying and diagnosing of gastrointestinal, neurological, autoimmune, infectious, hepatological, rheumatologic, nephrological, dermatological, coagulation, endocrine, pulmonologic, immune
system related, and respiratory diseases; all of the foregoing for use in connection with a fluorescence multi-analyte immunoassay system for medical diagnostic use and not for use in connection with
detecting nucleic acid
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.
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 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 [ Tonga application number TOM1803534 filed 02/28/2018]. 15 U.S.C.Section
1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the
foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.
Applicant proposes to amend the following:
Current:
Class 009 for Laboratory apparatus for diagnosing, monitoring, and treating diseases; all of the foregoing for use in connection with a fluorescence multi-analyte immunoassay system for medical
diagnostic and research use and not for use in connection with detecting nucleic acid
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.
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 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[ Tonga application number TOM1803534 filed 02/28/2018]. 15 U.S.C.Section 1126(d), as amended.
Proposed:
Tracked Text Description: Laboratory apparatus for diagnosing, monitoring, and treating diseases;
Laboratory apparatus for
testing of plasma, serum, sputum, fecal, and urine samples for research purposes;
all of the foregoing for use in connection with a fluorescence multi-analyte
immunoassay system for medical diagnostic and research use and not for use in connection with detecting nucleic acid;
all of the foregoing for use in connection
with a fluorescence multi-analyte immunoassay system for laboratory research use and not for use in connection with detecting nucleic acidClass 009 for Laboratory apparatus for testing of
plasma, serum, sputum, fecal, and urine samples for research purposes; all of the foregoing for use in connection with a fluorescence multi-analyte immunoassay system for laboratory research use and
not for use in connection with detecting nucleic acid
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.
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 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 [ Tonga application number TOM1803534 filed 02/28/2018]. 15 U.S.C.Section
1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the
foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.
Applicant proposes to amend the following:
Current:
Class 010 for Apparatus and instruments for medical diagnosis, namely, medical apparatus for diagnosing, monitoring, and treating diseases; all of the foregoing for use in connection with a
fluorescence multi-analyte immunoassay system for medical diagnostic and research use and not for use in connection with detecting nucleic acid
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.
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 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[ Tonga application number TOM1803534 filed 02/28/2018]. 15 U.S.C.Section 1126(d), as amended.
Proposed:
Tracked Text Description: Apparatus and instruments for medical diagnosis, namely, medical apparatus for diagnosing, monitoring, and treating diseases;
Apparatus and instruments for medical diagnosis, namely, medical apparatus for diagnosing, monitoring, and treating gastrointestinal, neurological, autoimmune,
infectious, hepatological, rheumatologic, nephrological, dermatological, coagulation, endocrine, pulmonologic, immune system related, and respiratory diseases;
all of the foregoing for use in connection with a fluorescence multi-analyte immunoassay system for medical diagnostic and research use and not for use in connection with detecting nucleic
acid;
all of the foregoing for use in connection with a fluorescence multi-analyte immunoassay system for medical diagnostic use and not for use in connection
with detecting nucleic acidClass 010 for Apparatus and instruments for medical diagnosis, namely, medical apparatus for diagnosing, monitoring, and treating gastrointestinal, neurological,
autoimmune, infectious, hepatological, rheumatologic, nephrological, dermatological, coagulation, endocrine, pulmonologic, immune system related, and respiratory diseases; all of the foregoing for
use in connection with a fluorescence multi-analyte immunoassay system for medical diagnostic use and not for use in connection with detecting nucleic acid
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.
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 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 [ Tonga application number TOM1803534 filed 02/28/2018]. 15 U.S.C.Section
1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the
foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.
Correspondence Information (current):
Brian Focarino
PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@cooley.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): apeck@cooley.com; bfocarino@cooley.com; dkoons@cooley.com
The docket/reference number is 317350-20000.
Correspondence Information (proposed):
Brian Focarino
PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@cooley.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): apeck@cooley.com; bfocarino@cooley.com; dkoons@cooley.com
The docket/reference number is 317350-20000.
Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all
official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).
SIGNATURE(S)
Request for Reconsideration Signature
Signature: /Brian J. Focarino/ Date: 04/24/2020
Signatory's Name: Brian J. Focarino
Signatory's Position: Attorney of Record, California Bar Member
The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and
any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another
U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed
revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter;
or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.
The applicant is filing a Notice of Appeal in conjunction with this Request for Reconsideration.
Mailing Address: Brian Focarino
COOLEY LLP
1299 PENNSYLVANIA AVE NW STE 700
WASHINGTON, District of Columbia 20004-2400
Mailing Address: Brian Focarino
COOLEY LLP
1299 PENNSYLVANIA AVE NW STE 700
WASHINGTON, District of Columbia 20004-2400
Serial Number: 88071814
Internet Transmission Date: Fri Apr 24 16:40:02 ET 2020
TEAS Stamp: USPTO/RFR-XX.XXX.XX.XX-20200424164002592
786-88071814-710dfb6d30c8e528d431a355e9d
41d28993395c9d1975127e149ccfbfd3b2fdf-N/
A-N/A-20200424163630914811