TEAS Request Reconsideration after FOA

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)

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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 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. 88073859 AB CHECK (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8807385 9/large) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 042 for Scientific and technological services and research projects for the preparation of peptide and antibody libraries, namely, chemical analysis; scientific and technological services and research projects for the identification and characterisation of binding molecules, namely in the field of antibody discovery, antibody research and antibody optimization in the nature of working on and evaluation of chemical analyses; scientific and technological services and research projects for the preparation, identification and characterisation of peptides and antibodies, namely in the field of antibody discovery, antibody research and antibody optimization; scientific and technological services and research projects for the preparation and identification of recombinant antibodies, single-chain antibodies, diabodies, tandabs, flexibodies, triabodies, tetrabodies, bivalent antibodies, multivalent antibodies, whole immunoglobulins, and antibody fragments, in particular Fab and scFv fragments, and of nucleic acid sequences coding for these molecules, namely in the field of antibody discovery, antibody research and antibody optimization, namely, scientific research in the field of antibodies; scientific and technological services and research projects in relation to antibody discovery, namely in the field of antibody research and drug design; scientific and technological services and research projects in relation to screening of natural, engineered and immunized libraries, namely in the field of antibody discovery for scientific research services; scientific and technological services and research projects in relation to screening of antibody libraries, namely in the field of antibody discovery for scientific research services; scientific and technological services and research projects in relation to phage display, phage panning and yeast display vectors, namely in the field of antibody discovery in the nature of chemical analysis; scientific and technological services and research projects in relation to next-generation yeast display and antibody selection process, namely in the field of antibody discovery in the nature of chemical analysis; scientific and technological services and research projects in relation to the upstream enrichment of target-specific candidates and batch cloning into yeast-display vectors in the nature of research and development services in the field of antibodies; scientific and technological services in relation to drug discovery by high throughput screen and antibody delivery for therapeutic application, namely scientific research in the field of antibody research and drug design; scientific and technological services and research projects in relation to batch-cloning and screening of natural, engineered and immunized libraries, namely scientific research in the field of antibodies and antibody optimization; scientific and technological services and research projects in relation to batch-cloning and screening of antibody libraries, namely scientific research in the field of antibodies and antibody optimization; scientific and technological services and research projects in relation to antibody development strategies, namely scientific research in the field of antibody research and antibody optimization; scientific and technological services and research projects in relation to the optimization, maturation and humanization of antibody drug candidates, namely in the field of antibody research and drug design; scientific and technological services and research projects in relation to multi-factor antibody optimization, namely scientific research in the field of antibody research and drug design; scientific and technological services and research projects in relation to the optimization of antibody binding affinity, antibody stability, species cross-reactivity, specificity, developability, producibility, and human properties, namely scientific research in the field of antibody research and antibody optimization; scientific and technological services and research projects in relation to human and non-human lead antibody technology, namely scientific research in the field of antibody research and antibody optimization
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: Scientific and technological services and research projects for the preparation of peptide and antibody libraries, namely, chemical analysis; scientific and technological services and research projects for the identification and characterisation of binding molecules, namely in the field of antibody discovery, antibody research and antibody optimization in the nature of working on and evaluation of chemical analyses; scientific and technological services and research projects for the preparation, identification and characterisation of peptides and antibodies, namely in the field of antibody discovery, antibody research and antibody optimization; scientific and technological services and research projects for the preparation, identification and characterisation of peptides and antibodies, namely, medical research in the field of antibody discovery, antibody research and antibody optimization; scientific and technological services and research projects for the preparation and identification of recombinant antibodies, single-chain antibodies, diabodies, tandabs, flexibodies, triabodies, tetrabodies, bivalent antibodies, multivalent antibodies, whole immunoglobulins, and antibody fragments, in particular Fab and scFv fragments, and of nucleic acid sequences coding for these molecules, namely in the field of antibody discovery, antibody research and antibody optimization, namely, scientific research in the field of antibodies; scientific and technological services and research projects in relation to antibody discovery, namely in the field of antibody research and drug design; scientific and technological services and research projects in relation to antibody discovery, namely, medical research in the field of antibody research and drug design; scientific and technological services and research projects in relation to screening of natural, engineered and immunized libraries, namely in the field of antibody discovery for scientific research services; scientific and technological services and research projects in relation to screening of natural, engineered and immunized libraries, namely, medical research in the field of antibody discovery for scientific research services; scientific and technological services and research projects in relation to screening of antibody libraries, namely in the field of antibody discovery for scientific research services; scientific and technological services and research projects in relation to phage display, phage panning and yeast display vectors, namely in the field of antibody discovery in the nature of chemical analysis; scientific and technological services and research projects in relation to next-generation yeast display and antibody selection process, namely in the field of antibody discovery in the nature of chemical analysis; scientific and technological services and research projects in relation to the upstream enrichment of target-specific candidates and batch cloning into yeast-display vectors in the nature of research and development services in the field of antibodies; scientific and technological services in relation to drug discovery by high throughput screen and antibody delivery for therapeutic application, namely scientific research in the field of antibody research and drug design; scientific and technological services and research projects in relation to batch-cloning and screening of natural, engineered and immunized libraries, namely scientific research in the field of antibodies and antibody optimization; scientific and technological services and research projects in relation to batch-cloning and screening of antibody libraries, namely scientific research in the field of antibodies and antibody optimization; scientific and technological services and research projects in relation to antibody development strategies, namely scientific research in the field of antibody research and antibody optimization; scientific and technological services and research projects in relation to the optimization, maturation and humanization of antibody drug candidates, namely in the field of antibody research and drug design; scientific and technological services and research projects in relation to multi-factor antibody optimization, namely scientific research in the field of antibody research and drug design; scientific and technological services and research projects in relation to the optimization of antibody binding affinity, antibody stability, species cross-reactivity, specificity, developability, producibility, and human properties, namely scientific research in the field of antibody research and antibody optimization; scientific and technological services and research projects in relation to human and non-human lead antibody technology, namely scientific research in the field of antibody research and antibody optimizationClass 042 for Scientific and technological services and research projects for the preparation of peptide and antibody libraries, namely, chemical analysis; scientific and technological services and research projects for the identification and characterisation of binding molecules, namely in the field of antibody discovery, antibody research and antibody optimization in the nature of working on and evaluation of chemical analyses; scientific and technological services and research projects for the preparation, identification and characterisation of peptides and antibodies, namely, medical research in the field of antibody discovery, antibody research and antibody optimization; scientific and technological services and research projects for the preparation and identification of recombinant antibodies, single-chain antibodies, diabodies, tandabs, flexibodies, triabodies, tetrabodies, bivalent antibodies, multivalent antibodies, whole immunoglobulins, and antibody fragments, in particular Fab and scFv fragments, and of nucleic acid sequences coding for these molecules, namely in the field of antibody discovery, antibody research and antibody optimization, namely, scientific research in the field of antibodies; scientific and technological services and research projects in relation to antibody discovery, namely, medical research in the field of antibody research and drug design; scientific and technological services and research projects in relation to screening of natural, engineered and immunized libraries, namely, medical research in the field of antibody discovery for scientific research services; scientific and technological services and research projects in relation to screening of antibody libraries, namely in the field of antibody discovery for scientific research services; scientific and technological services and research projects in relation to phage display, phage panning and yeast display vectors, namely in the field of antibody discovery in the nature of chemical analysis; scientific and technological services and research projects in relation to next-generation yeast display and antibody selection process, namely in the field of antibody discovery in the nature of chemical analysis; scientific and technological services and research projects in relation to the upstream enrichment of target-specific candidates and batch cloning into yeast-display vectors in the nature of research and development services in the field of antibodies; scientific and technological services in relation to drug discovery by high throughput screen and antibody delivery for therapeutic application, namely scientific research in the field of antibody research and drug design; scientific and technological services and research projects in relation to batch-cloning and screening of natural, engineered and immunized libraries, namely scientific research in the field of antibodies and antibody optimization; scientific and technological services and research projects in relation to batch-cloning and screening of antibody libraries, namely scientific research in the field of antibodies and antibody optimization; scientific and technological services and research projects in relation to antibody development strategies, namely scientific research in the field of antibody research and antibody optimization; scientific and technological services and research projects in relation to the optimization, maturation and humanization of antibody drug candidates, namely in the field of antibody research and drug design; scientific and technological services and research projects in relation to multi-factor antibody optimization, namely scientific research in the field of antibody research and drug design; scientific and technological services and research projects in relation to the optimization of antibody binding affinity, antibody stability, species cross-reactivity, specificity, developability, producibility, and human properties, namely scientific research in the field of antibody research and antibody optimization; scientific and technological services and research projects in relation to human and non-human lead antibody technology, namely scientific research in the field of antibody research and antibody optimization
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.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: AbCheck s.r.o., a limited liability company legally organized under the laws of Czech Republic, having an address of

            Vedeckotechnicky Park Plzen      Teslova 3
      Plzen, 30100
      Czech Republic

Proposed: AbCheck s.r.o., a limited liability company legally organized under the laws of Czech Republic, having an address of
      Vedeckotechnicky Park Plzen
      Teslova 3
      Plzen, 30100
      Czech Republic
      Email Address: XXXX
Correspondence Information (current):
      Karen L. Elbing
      PRIMARY EMAIL FOR CORRESPONDENCE: cedocket@clarkelbing.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 50125-T89001.
Correspondence Information (proposed):
      Karen L. Elbing
      PRIMARY EMAIL FOR CORRESPONDENCE: cedocket@clarkelbing.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 50125-T89001.

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)
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 allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU 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 filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; 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: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, 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; 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 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.

Signature: /Jan N. Tittel/      Date: 06/25/2020
Signatory's Name: Jan N. Tittel
Signatory's Position: Attorney of record, Massachusetts bar member
Signatory's Phone Number: 6174280200


Request for Reconsideration Signature
Signature: /Jan N. Tittel/     Date: 06/25/2020
Signatory's Name: Jan N. Tittel
Signatory's Position: Attorney of record, Massachusetts bar member

Signatory's Phone Number: 6174280200

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 not filing a Notice of Appeal in conjunction with this Request for Reconsideration.

Mailing Address:    Karen L. Elbing
   CLARK+ELBING LLP
   
   101 FEDERAL STREET, 15TH FLOOR
   BOSTON, Massachusetts 02110
Mailing Address:    Karen L. Elbing
   CLARK+ELBING LLP
   101 FEDERAL STREET, 15TH FLOOR
   BOSTON, Massachusetts 02110
        
Serial Number: 88073859
Internet Transmission Date: Thu Jun 25 11:31:57 ET 2020
TEAS Stamp: USPTO/RFR-XX.XXX.X.XXX-20200625113157838
324-88073859-710c1b1fc24f675d1e3855038b6
67a1636911ddef76626fbc810a3da1d26af058-N
/A-N/A-20200625113049375834