TEAS Response to Suspension Inquiry

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 1822 (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 1822 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Suspension Inquiry or Letter of Suspension

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:
FOREIGN APPLICATION(S)
The applicant herein elects NOT to proceed to registration under Section 44(e) for any foreign application(s) claimed as a basis for priority.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
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
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Tonga application number TOM1803534 filed 02/28/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed: 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: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority 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 has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.

Applicant proposes to amend the following class of goods/services in the application:
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 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
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority 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; clinical diagnostic assays for medical purposes, namely, identifying and diagnosing of 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 acidClass 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: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority 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 has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 010 for Apparatus and instruments for laboratory analysis and medical diagnosis, namely, medical and 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
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority 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 laboratory analysis and medical diagnosis, namely, medical and laboratory apparatus for diagnosing, monitoring, and treating diseases; 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 acidClass 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: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority 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 has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.

Applicant hereby adds the following class of goods/services to the application:
New: 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: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [ __________ application number __________ filed __________ ]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.


APPLICANT AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Inova Diagnostics, Inc., a corporation of California, having an address of
      9900 Old Grove Rd
      San Diego, California 92131
      United States
Proposed: Inova Diagnostics, Inc., a corporation of California, having an address of
      9900 Old Grove Rd
      San Diego, California 92131
      United States
      Email Address: XXXX

The owner's/holder's current attorney information: Brian Focarino. Brian Focarino of COOLEY LLP, is located at

      1299 PENNSYLVANIA AVE NW STE 700
      WASHINGTON, District of Columbia
      United States

The phone number is 617-937-2347.

The fax number is 202-842-7899.

The email address is trademarks@cooley.com

The owner's/holder's proposed attorney information: Brian Focarino. Other appointed attorneys are Salsabil Ahmed, Susan Piascik Christoff, John W. Crittenden, Bobby A. Ghajar, Colette A. Ghazarian, Rebecca Givner-Forbes, Katherine E. Green, Jeffrey H. Greene, Kelley B. Harrington, Shannan Higgins, Ariana G. Hiscott, Brendan J. Hughes, Rose Mendenhall Kautz, Judd D. Lauter, Lori A. Levine, John Paul Oleksiuk, Anne H. Peck, Marcus D. Peterson, Dina Roumiantseva, Shane Rumbaugh, Jane van Benten, and Colleen Wellington-Caban. Brian Focarino of COOLEY LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      1299 PENNSYLVANIA AVE NW STE 700
      WASHINGTON, District of Columbia 20004-2400
      United States
The docket/reference number is 317350-20000.

The phone number is 617-937-2347.

The fax number is 202-842-7899.

The email address is trademarks@cooley.com

Brian Focarino submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.Correspondence Information (current):
      BRIAN FOCARINO
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@cooley.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED
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 applicant owner/holder and the applicant owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

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

Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or amendment to allege use (AAU) unsigned, all statements in the application or AAU and this submission based on the signatory's own knowledge are true, and all statements in the application or AAU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AAU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AAU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the application or AAU filing date; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AAU on or in connection with the goods/services/collective membership organization in the application or AAU; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over use of the mark in commerce as of the application or AAU filing date; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: for a trademark or service mark application, the applicant believes the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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 of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Bryan Hoenig/    Date: 03/11/2020
Signatory's Name: Hoenig, Bryan
Signatory's Position: VP of Commercial Operations
Signatory's Phone Number: N/A

Response Suspension Inquiry Signature
Signature: /Brian J. Focarino/     Date: 03/11/2020
Signatory's Name: Brian J. Focarino
Signatory's Position: Attorney of Record, California Bar Member

Mailing Address:    BRIAN FOCARINO
   COOLEY LLP
   
   1299 PENNSYLVANIA AVE NW STE 700
   WASHINGTON, District of Columbia
Mailing Address:    Brian Focarino
   COOLEY LLP
   1299 PENNSYLVANIA AVE NW STE 700
   WASHINGTON, District of Columbia 20004-2400
        
RAM Sale Number: 88071814
RAM Accounting Date: 03/11/2020
        
Serial Number: 88071814
Internet Transmission Date: Wed Mar 11 12:36:42 ET 2020
TEAS Stamp: USPTO/RSI-XXX.XXX.XXX.XX-202003111236421
02286-88071814-71093ac216f9ab9ca3f466884
45ef7288ce1836c95e581c84dc334588ba903d1f
-DA-36417212-20200310132657071094