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
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
88081490 |
LAW OFFICE ASSIGNED |
LAW OFFICE 116 |
MARK SECTION |
MARK FILE NAME |
http://uspto.report/TM/88081490/mark.png |
LITERAL ELEMENT |
SYNGENE |
STANDARD CHARACTERS |
NO |
USPTO-GENERATED IMAGE |
NO |
ARGUMENT(S) |
Consent to Registration
The Examiner has cited Registration Nos. 2868233 and 3751573 in the name of Synoptics Limited as blocking this application due to a likelihood of
confusion. The Applicant hereby submits the attached consent of that company to registration of the mark in this application.
TMEP § 1207.01(d)(viii) provides that “[E]xamining attorneys should give substantial weight
to a proper consent agreement. When an applicant and registrant have entered into a credible consent agreement and, on balance, the other factors do not dictate a finding of
likelihood of confusion, an examining attorney should not interpose his or her own judgment that confusion is likely.”
The attached agreement shows that parties involved believe that use of their respective marks is not likely to cause confusion because of differences
in the goods and services, the respective targeted customers, and the different channels of trade.
In the landmark case of In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 568 (CCPA 1973), the appeals court
noted:
[W]hen those most familiar with use in the marketplace and most interested in precluding confusion enter agreements designed to avoid it, the scales
of evidence are clearly tilted. It is at least difficult to maintain a subjective view that confusion will occur when those directly concerned say it won’t. A mere assumption that confusion is likely
will rarely prevail against uncontroverted evidence from those on the firing line that it is not.
Accordingly, the Examiner should respect the business judgment of the applicant and the owner of the cited registered marks that confusion is not
likely, and there should be no refusal to register under Section 2(d).
|
EVIDENCE SECTION |
EVIDENCE FILE NAME(S) |
ORIGINAL PDF FILE |
evi_216759226-20191211101226454768_._SYNGENE_consent.pdf |
CONVERTED PDF FILE(S)
(6 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\880\814\88081490\xml8\ROA0002.JPG |
|
\\TICRS\EXPORT17\IMAGEOUT17\880\814\88081490\xml8\ROA0003.JPG |
|
\\TICRS\EXPORT17\IMAGEOUT17\880\814\88081490\xml8\ROA0004.JPG |
|
\\TICRS\EXPORT17\IMAGEOUT17\880\814\88081490\xml8\ROA0005.JPG |
|
\\TICRS\EXPORT17\IMAGEOUT17\880\814\88081490\xml8\ROA0006.JPG |
|
\\TICRS\EXPORT17\IMAGEOUT17\880\814\88081490\xml8\ROA0007.JPG |
DESCRIPTION OF EVIDENCE FILE |
the consent of Synoptics Limited to registration of the applicant's mark. |
GOODS AND/OR SERVICES SECTION (001)(no change) |
GOODS AND/OR SERVICES SECTION (005)(no change) |
GOODS AND/OR SERVICES SECTION (009)(no change) |
GOODS AND/OR SERVICES SECTION (010)(no change) |
GOODS AND/OR SERVICES SECTION (016)(current) |
INTERNATIONAL CLASS |
016 |
DESCRIPTION |
Paper and paper articles, namely, writing paper, notebooks, sketch pads, letter heads, envelops, files, brochures leaflet, flyers, sign
boards, pamphlets, banners, pen, pencil, USB drives, table calendars, table clock, certificates, flask, coffee cups, power banks, photo frames; cardboard and cardboard articles, namely, boxes,
packing material, container, bag; printed matter in the nature of newspapers and periodicals for general circulation; books in the field of science; book-binding materials; photographs; stationery;
adhesive materials for stationery and office use; artists materials, namely, paint, drawing paper, canvas, pens; paint brushes; typewriters and office requisites other than furniture, namely, rubber
bands, staplers, hole-punches, mouse pad, pen stands, adhesive note paper; printed instructional and teaching materials other than apparatus in the field of science, biology, genetics, chemistry,
formulations, antibodies, antibody technology, chemistry, agrochemical pharmaceuticals, bioinformatics, biomedical devices, biologics, biotechnology, biotherapeutics, biology, biochemical
preparations, cell lines, cheminformatics, genetics and genetic engineering, gene expression systems, in vitro research, inhalation pharmaceuticals, molecular sciences, micro-organisms, nutrition,
ophthalmic preparations, pharmacogenetics, pharmacokinetics, pharmacology, pharmaceuticals, polymers, peptide synthesis, protein, and solid state characterization; printers type and printing clichés,
namely, stereotypes; directories in the field of science, biology, genetics, chemistry, formulations, antibodies, antibody technology, chemistry, agrochemical pharmaceuticals, bioinformatics,
biomedical devices, biologics, biotechnology, biotherapeutics, biology, biochemical preparations, cell lines, cheminformatics, genetics and genetic engineering, gene expression systems, in vitro
research, inhalation pharmaceuticals, molecular sciences, micro-organisms, nutrition, ophthalmic preparations, pharmacogenetics, pharmacokinetics, pharmacology, pharmaceuticals, polymers, peptide
synthesis, protein, and solid state characterization and blank journals; printed training materials in the field of clinical study, medical writing and pharmacovigilance services |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (016)(proposed) |
INTERNATIONAL CLASS |
016 |
TRACKED TEXT DESCRIPTION |
Paper and paper articles, namely, writing paper, notebooks, sketch pads, letter heads, envelops, files,
brochures leaflet, flyers, sign boards, pamphlets, banners, pen, pencil, USB drives, table calendars, table clock, certificates, flask, coffee cups, power banks, photo frames; Paper and paper articles, namely, writing paper, notebooks, sketch pads, letterhead paper, envelopes, file folders, printed brochures, leaflet, informational flyers and pamphlets
in the field of science, biology, genetics, chemistry, formulations, antibodies, antibody technology, chemistry, agrochemical pharmaceuticals, bioinformatics, biomedical devices, biologics,
biotechnology, biotherapeutics, biology, biochemical preparations, cell lines, cheminformatics, genetics and genetic engineering, gene expression systems, in vitro research, inhalation
pharmaceuticals, molecular sciences, micro-organisms, nutrition, ophthalmic preparations, pharmacogenetics, pharmacokinetics, pharmacology, pharmaceuticals, polymers, peptide synthesis, protein, and
solid state characterization; cardboard and cardboard articles, namely, boxes, packing material, container, bag; printers type and
printing clichés, namely, stereotypes; printed matter in the nature of newspapers and periodicals for general circulation; directories in the field of science, biology, genetics, chemistry, formulations, antibodies, antibody technology, chemistry, agrochemical pharmaceuticals, bioinformatics, biomedical devices,
biologics, biotechnology, biotherapeutics, biology, biochemical preparations, cell lines, cheminformatics, genetics and genetic engineering, gene expression systems, in vitro research, inhalation
pharmaceuticals, molecular sciences, micro-organisms, nutrition, ophthalmic preparations, pharmacogenetics, pharmacokinetics, pharmacology, pharmaceuticals, polymers, peptide synthesis, protein, and
solid state characterization; printed sign boards, banners, table calendars, and printed certificates; book-binding
materials; pens and pencils; photographs; cardboard and cardboard articles,
namely, boxes, packing material, containers, and paper bags; printed matter in the nature of newspapers for general circulation; periodicals in the nature of general features magazines; books in the field of science; bookbinding
materials; typewriters and office requisites other than furniture, namely, rubber bands, staplers, hole-punches, mouse pad, pen stands, adhesive note
paper; printed photographs; stationery; adhesive materials for stationery and office use;
directories in the field of science, biology, genetics, chemistry, formulations, antibodies, antibody technology, chemistry, agrochemical pharmaceuticals,
bioinformatics, biomedical devices, biologics, biotechnology, biotherapeutics, biology, biochemical preparations, cell lines, cheminformatics, genetics and genetic engineering, gene expression
systems, in vitro research, inhalation pharmaceuticals, molecular sciences, micro-organisms, nutrition, ophthalmic preparations, pharmacogenetics, pharmacokinetics, pharmacology, pharmaceuticals,
polymers, peptide synthesis, protein, and solid state characterization and blank journals; artists materials, namely, paint, drawing paper, canvas, pens;
paint brushes; typewriters and office requisites other than furniture, namely, rubber bands, staplers, paper hole-punches, pen stands,
adhesive note paper; printed instructional and teaching materials other than apparatus in the field of science, biology, genetics, chemistry, formulations, antibodies,
antibody technology, chemistry, agrochemical pharmaceuticals, bioinformatics, biomedical devices, biologics, biotechnology, biotherapeutics, biology, biochemical preparations, cell lines,
cheminformatics, genetics and genetic engineering, gene expression systems, in vitro research, inhalation pharmaceuticals, molecular sciences, micro-organisms, nutrition, ophthalmic preparations,
pharmacogenetics, pharmacokinetics, pharmacology, pharmaceuticals, polymers, peptide synthesis, protein, and solid state characterization; printers type and
printing clichés, namely, stereotypes; directories in the field of science, biology, genetics, chemistry, formulations, antibodies, antibody technology,
chemistry, agrochemical pharmaceuticals, bioinformatics, biomedical devices, biologics, biotechnology, biotherapeutics, biology, biochemical preparations, cell lines, cheminformatics, genetics and
genetic engineering, gene expression systems, in vitro research, inhalation pharmaceuticals, molecular sciences, micro-organisms, nutrition, ophthalmic preparations, pharmacogenetics,
pharmacokinetics, pharmacology, pharmaceuticals, polymers, peptide synthesis, protein, and solid state characterization; blank journals; printed training materials in the field of clinical study, medical writing and pharmacovigilance services; none of the aforesaid goods relating to
gel imaging and gel analysis applications |
FINAL DESCRIPTION |
Paper and paper articles, namely, writing paper, notebooks, sketch pads, letterhead paper, envelopes, file folders, printed brochures,
leaflet, informational flyers and pamphlets in the field of science, biology, genetics, chemistry, formulations, antibodies, antibody technology, chemistry, agrochemical pharmaceuticals,
bioinformatics, biomedical devices, biologics, biotechnology, biotherapeutics, biology, biochemical preparations, cell lines, cheminformatics, genetics and genetic engineering, gene expression
systems, in vitro research, inhalation pharmaceuticals, molecular sciences, micro-organisms, nutrition, ophthalmic preparations, pharmacogenetics, pharmacokinetics, pharmacology, pharmaceuticals,
polymers, peptide synthesis, protein, and solid state characterization; printers type and printing clichés, namely, stereotypes; directories in the field of science, biology, genetics, chemistry,
formulations, antibodies, antibody technology, chemistry, agrochemical pharmaceuticals, bioinformatics, biomedical devices, biologics, biotechnology, biotherapeutics, biology, biochemical
preparations, cell lines, cheminformatics, genetics and genetic engineering, gene expression systems, in vitro research, inhalation pharmaceuticals, molecular sciences, micro-organisms, nutrition,
ophthalmic preparations, pharmacogenetics, pharmacokinetics, pharmacology, pharmaceuticals, polymers, peptide synthesis, protein, and solid state characterization; printed sign boards, banners, table
calendars, and printed certificates; pens and pencils; cardboard and cardboard articles, namely, boxes, packing material, containers, and paper bags; printed matter in the nature of newspapers for
general circulation; periodicals in the nature of general features magazines; books in the field of science; bookbinding materials; printed photographs; stationery; adhesive materials for stationery
and office use; artists materials, namely, paint, drawing paper, canvas, pens; paint brushes; typewriters and office requisites other than furniture, namely, rubber bands, staplers, paper
hole-punches, pen stands, adhesive note paper; printed instructional and teaching materials other than apparatus in the field of science, biology, genetics, chemistry, formulations, antibodies,
antibody technology, chemistry, agrochemical pharmaceuticals, bioinformatics, biomedical devices, biologics, biotechnology, biotherapeutics, biology, biochemical preparations, cell lines,
cheminformatics, genetics and genetic engineering, gene expression systems, in vitro research, inhalation pharmaceuticals, molecular sciences, micro-organisms, nutrition, ophthalmic preparations,
pharmacogenetics, pharmacokinetics, pharmacology, pharmaceuticals, polymers, peptide synthesis, protein, and solid state characterization; printers type and printing clichés, namely, stereotypes;
directories in the field of science, biology, genetics, chemistry, formulations, antibodies, antibody technology, chemistry, agrochemical pharmaceuticals, bioinformatics, biomedical devices,
biologics, biotechnology, biotherapeutics, biology, biochemical preparations, cell lines, cheminformatics, genetics and genetic engineering, gene expression systems, in vitro research, inhalation
pharmaceuticals, molecular sciences, micro-organisms, nutrition, ophthalmic preparations, pharmacogenetics, pharmacokinetics, pharmacology, pharmaceuticals, polymers, peptide synthesis, protein, and
solid state characterization; blank journals; printed training materials in the field of clinical study, medical writing and pharmacovigilance services; none of the aforesaid goods relating to gel
imaging and gel analysis applications |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (035)(no change) |
GOODS AND/OR SERVICES SECTION (039)(no change) |
GOODS AND/OR SERVICES SECTION (040)(no change) |
GOODS AND/OR SERVICES SECTION (042)(current) |
INTERNATIONAL CLASS |
042 |
DESCRIPTION |
Scientific research and custom synthesis; scientific and clinical research in the field of medicine, pharma, agro, nutraceuticals,
FMCG; scientific research and development; custom design and development of chemical reagents and biochemical assays; laboratory testing; laboratory testing services for research and development
purposes; testing of pharmaceuticals; chemical engineering; drug discovery services; pharmaceutical drug development services; pharmaceutical products development; development of pharmaceutical
preparations and medicines; scientific study and research in the field of reproduction, husbandry, and general health of animal; biotechnology research for determining the neuronal survival of
molecules in animal models; research and development services in the field of antibodies, antibody technology; custom design and development of chemical reagents and biochemical assays; design,
engineering, research, development and testing services in the field of polymeric materials, polymer synthesis, and materials customization for medical, scientific, and technological applications;
toxicology services; toxicity analysis; toxicity testing for research purposes; conducting clinical trials; conducting clinical trials for scientific research for others; conducting clinical trials
for pharmaceutical products; providing medical and scientific research information in the field of clinical trials; conducting early evaluations in the field of new pharmaceuticals; DNA analysis
services for scientific research purposes; laboratory research in the field of gene expression; blood analysis services for scientific research purposes; analysis of human tissues for medical
research; scientific services relating to the isolation and cultivation of human tissues and cells for research purposes; preparation of reports relating to scientific and technical research;
analysis in the field of molecular biology; contract research services relating to molecular sciences; biological cloning services; structural and functional analysis of genomes; scientific and
medical laboratory services; services of a chemical and/or biological laboratory; laboratory research services relating to pharmaceuticals; research and development and consultation related thereto
in the field of antibodies, antibody technology, chemistry, agrochemical pharmaceuticals, bioinformatics, biomedical devices, biologics, biotechnology, biotherapeutics, biology, biochemical
preparations, cell lines, cheminformatics, genetics and genetic engineering, gene expression systems, in vitro research, inhalation pharmaceuticals, molecular sciences, micro-organisms, nutrition,
ophthalmic preparations, pharmacogenetics, pharmacokinetics, pharmacology, pharmaceuticals, polymers, peptide synthesis, protein, and solid state characterization; toxicokinetic analysis and
toxicology services; scientific and technological services, namely, scientific research, development, analysis, testing, engineering, extraction, synthesis, purification and production in the field
of antibodies, active pharmaceutical ingredients (API), biomolecules, cell bank characterization, chirality, chromosome aberration, clinical chemistry, cloning vector, cyclotides, DNA, flow
cytometry, gas chromatography mass spectrometry, genes, immuno-pharmaceuticals, in vitro irritation, large molecule, liquid chromatography mass spectrometry, microbials, monomers, nanoparticles,
natural products, peptides, proteins, RNA, supercritical fluid chromatography, small molecules and vaccines |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (042)(proposed) |
INTERNATIONAL CLASS |
042 |
TRACKED TEXT DESCRIPTION |
Scientific research and custom synthesis; scientific and clinical research in
the field of medicine, pharma, agro, nutraceuticals, FMCG; scientific and clinical research in the field of medicine, pharmaceutical, agrochemicals,
nutraceuticals,; scientific research and development; custom design and development of chemical reagents and biochemical assays;
laboratory testing; laboratory testing services for research and development purposes; testing of pharmaceuticals;
chemical engineering; drug discovery services; pharmaceutical drug development services; pharmaceutical products development; development of pharmaceutical preparations and medicines; scientific study and research in the field
of reproduction, husbandry, and general health of animal; biotechnology research for determining the neuronal survival of molecules in animal models; research and development services in the field of antibodies, antibody technology; custom design and development of chemical reagents and biochemical assays;
design, engineering, research, development and testing services in the field of polymeric materials, polymer synthesis, and materials customization for medical, scientific, and
technological applications; toxicology services; toxicity analysis; toxicity testing for research purposes;
conducting clinical trials; conducting clinical trials for scientific research for others; conducting clinical trials for
pharmaceutical products; providing medical and scientific research information in the field of clinical trials; conducting early evaluations in
the field of new pharmaceuticals; DNA analysis services for scientific research purposes; laboratory research in the field of gene
expression; blood analysis services for scientific research purposes; analysis of human tissues for medical research; scientific services relating to the isolation and cultivation of human tissues and cells for research purposes; preparation of reports relating to scientific and
technical research; analysis in the field of molecular biology; contract research services relating to molecular sciences; biological cloning services; structural and functional analysis of genomes; scientific and medical laboratory services;
services of a chemical and/or biological laboratory; laboratory research services relating to pharmaceuticals; research
and development and consultation related thereto in the field of antibodies, antibody technology, chemistry, agrochemical pharmaceuticals, bioinformatics, biomedical devices, biologics,
biotechnology, biotherapeutics, biology, biochemical preparations, cell lines, cheminformatics, genetics and genetic engineering, gene expression systems, in vitro research, inhalation
pharmaceuticals, molecular sciences, micro-organisms, nutrition, ophthalmic preparations, pharmacogenetics, pharmacokinetics, pharmacology, pharmaceuticals, polymers, peptide synthesis, protein, and
solid state characterization; toxicokinetic analysis and toxicology services; scientific and technological services, namely, scientific
research, development, analysis, testing, engineering, extraction, synthesis, purification and production in the field of antibodies, active pharmaceutical ingredients (API), biomolecules, cell bank
characterization, chirality, chromosome aberration, clinical chemistry, cloning vector, cyclotides, DNA, flow cytometry, gas chromatography mass spectrometry, genes, immuno-pharmaceuticals, in vitro
irritation, large molecule, liquid chromatography mass spectrometry, microbials, monomers, nanoparticles, natural products, peptides, proteins, RNA, supercritical fluid chromatography, small
molecules and vaccines; none of the aforesaid services relating to gel imaging and gel analysis applications |
FINAL DESCRIPTION |
Scientific research and custom synthesis; scientific and clinical research in the field of medicine, pharmaceutical, agrochemicals,
nutraceuticals,; scientific research and development; custom design and development of chemical reagents and biochemical assays; laboratory testing; laboratory testing services for research and
development purposes; testing of pharmaceuticals; chemical engineering; drug discovery services; pharmaceutical drug development services; pharmaceutical products development; development of
pharmaceutical preparations and medicines; scientific study and research in the field of reproduction, husbandry, and general health of animal; biotechnology research for determining the neuronal
survival of molecules in animal models; research and development services in the field of antibodies, antibody technology; custom design and development of chemical reagents and biochemical assays;
design, engineering, research, development and testing services in the field of polymeric materials, polymer synthesis, and materials customization for medical, scientific, and technological
applications; toxicology services; toxicity analysis; toxicity testing for research purposes; conducting clinical trials; conducting clinical trials for scientific research for others; conducting
clinical trials for pharmaceutical products; providing medical and scientific research information in the field of clinical trials; conducting early evaluations in the field of new pharmaceuticals;
DNA analysis services for scientific research purposes; laboratory research in the field of gene expression; blood analysis services for scientific research purposes; analysis of human tissues for
medical research; scientific services relating to the isolation and cultivation of human tissues and cells for research purposes; preparation of reports relating to scientific and technical research;
analysis in the field of molecular biology; contract research services relating to molecular sciences; biological cloning services; structural and functional analysis of genomes; scientific and
medical laboratory services; services of a chemical and/or biological laboratory; laboratory research services relating to pharmaceuticals; research and development and consultation related thereto
in the field of antibodies, antibody technology, chemistry, agrochemical pharmaceuticals, bioinformatics, biomedical devices, biologics, biotechnology, biotherapeutics, biology, biochemical
preparations, cell lines, cheminformatics, genetics and genetic engineering, gene expression systems, in vitro research, inhalation pharmaceuticals, molecular sciences, micro-organisms, nutrition,
ophthalmic preparations, pharmacogenetics, pharmacokinetics, pharmacology, pharmaceuticals, polymers, peptide synthesis, protein, and solid state characterization; toxicokinetic analysis and
toxicology services; scientific and technological services, namely, scientific research, development, analysis, testing, engineering, extraction, synthesis, purification and production in the field
of antibodies, active pharmaceutical ingredients (API), biomolecules, cell bank characterization, chirality, chromosome aberration, clinical chemistry, cloning vector, cyclotides, DNA, flow
cytometry, gas chromatography mass spectrometry, genes, immuno-pharmaceuticals, in vitro irritation, large molecule, liquid chromatography mass spectrometry, microbials, monomers, nanoparticles,
natural products, peptides, proteins, RNA, supercritical fluid chromatography, small molecules and vaccines; none of the aforesaid services relating to gel imaging and gel analysis applications |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (044)(no change) |
ATTORNEY SECTION (current) |
NAME |
Lawrence E. Abelman |
ATTORNEY BAR MEMBERSHIP NUMBER |
NOT SPECIFIED |
YEAR OF ADMISSION |
NOT SPECIFIED |
U.S. STATE/ COMMONWEALTH/ TERRITORY |
NOT SPECIFIED |
FIRM NAME |
ABELMAN, FRAYNE & SCHWAB |
INTERNAL ADDRESS |
10th Floor |
STREET |
666 THIRD AVENUE |
CITY |
NEW YORK |
STATE |
New York |
POSTAL CODE |
10017 |
COUNTRY |
US |
PHONE |
212-949-9022 |
FAX |
212-949-9190 |
EMAIL |
docket@lawabel.com |
AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
DOCKET/REFERENCE NUMBER |
879374 |
ATTORNEY SECTION (proposed) |
NAME |
Lawrence E. Abelman |
ATTORNEY BAR MEMBERSHIP NUMBER |
XXX |
YEAR OF ADMISSION |
XXXX |
U.S. STATE/ COMMONWEALTH/ TERRITORY |
XX |
FIRM NAME |
ABELMAN, FRAYNE & SCHWAB |
INTERNAL ADDRESS |
10th Floor |
STREET |
666 THIRD AVENUE |
CITY |
NEW YORK |
STATE |
New York |
POSTAL CODE |
10017 |
COUNTRY |
United States |
PHONE |
212-949-9022 |
FAX |
212-949-9190 |
EMAIL |
fterranella@lawabel.com |
AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
DOCKET/REFERENCE NUMBER |
879374 |
OTHER APPOINTED ATTORNEY |
Frank Terranella, Julie Seyler, Marie Anne Mastrovito and Erica Halstead |
CORRESPONDENCE SECTION (current) |
NAME |
LAWRENCE E. ABELMAN |
FIRM NAME |
ABELMAN, FRAYNE & SCHWAB |
INTERNAL ADDRESS |
10th Floor |
STREET |
666 THIRD AVENUE |
CITY |
NEW YORK |
STATE |
New York |
POSTAL CODE |
10017 |
COUNTRY |
US |
PHONE |
212-949-9022 |
FAX |
212-949-9190 |
EMAIL |
fterranella@lawabel.com; docket@lawabel.com |
AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
DOCKET/REFERENCE NUMBER |
879374 |
CORRESPONDENCE SECTION (proposed) |
NAME |
Lawrence E. Abelman |
FIRM NAME |
ABELMAN, FRAYNE & SCHWAB |
INTERNAL ADDRESS |
10th Floor |
STREET |
666 THIRD AVENUE |
CITY |
NEW YORK |
STATE |
New York |
POSTAL CODE |
10017 |
COUNTRY |
United States |
PHONE |
212-949-9022 |
FAX |
212-949-9190 |
EMAIL |
fterranella@lawabel.com; docket@lawabel.com |
AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
DOCKET/REFERENCE NUMBER |
879374 |
SIGNATURE SECTION |
RESPONSE SIGNATURE |
/ft/ |
SIGNATORY'S NAME |
Frank Terranella |
SIGNATORY'S POSITION |
Attorney for Owner, NY Bar member no. 1918697 (1984) |
SIGNATORY'S PHONE NUMBER |
2129499022 |
DATE SIGNED |
12/11/2019 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Wed Dec 11 10:24:59 EST 2019 |
TEAS STAMP |
USPTO/ROA-XXX.XX.XX.XX-20
191211102459364100-880814
90-700accf8585f42dc2b991e
f951064fdfc6c5d11ee1506dc
423adb873877d83f846-N/A-N
/A-20191211101226454768 |
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.
88081490 SYNGENE (Stylized and/or with Design, see http://uspto.report/TM/88081490/mark.png) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
Consent to Registration
The Examiner has cited Registration Nos. 2868233 and 3751573 in the name of Synoptics Limited as blocking this application due to a likelihood of
confusion. The Applicant hereby submits the attached consent of that company to registration of the mark in this application.
TMEP § 1207.01(d)(viii) provides that “[E]xamining attorneys should give substantial weight
to a proper consent agreement. When an applicant and registrant have entered into a credible consent agreement and, on balance, the other factors do not dictate a finding of
likelihood of confusion, an examining attorney should not interpose his or her own judgment that confusion is likely.”
The attached agreement shows that parties involved believe that use of their respective marks is not likely to cause confusion because of differences
in the goods and services, the respective targeted customers, and the different channels of trade.
In the landmark case of In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 568 (CCPA 1973), the appeals court
noted:
[W]hen those most familiar with use in the marketplace and most interested in precluding confusion enter agreements designed to avoid it, the scales
of evidence are clearly tilted. It is at least difficult to maintain a subjective view that confusion will occur when those directly concerned say it won’t. A mere assumption that confusion is likely
will rarely prevail against uncontroverted evidence from those on the firing line that it is not.
Accordingly, the Examiner should respect the business judgment of the applicant and the owner of the cited registered marks that confusion is not
likely, and there should be no refusal to register under Section 2(d).
EVIDENCE
Evidence in the nature of the consent of Synoptics Limited to registration of the applicant's mark. has been attached.
Original PDF file:
evi_216759226-20191211101226454768_._SYNGENE_consent.pdf
Converted PDF file(s) ( 6 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 016 for Paper and paper articles, namely, writing paper, notebooks, sketch pads, letter heads, envelops, files, brochures leaflet, flyers, sign boards, pamphlets, banners, pen,
pencil, USB drives, table calendars, table clock, certificates, flask, coffee cups, power banks, photo frames; cardboard and cardboard articles, namely, boxes, packing material, container, bag;
printed matter in the nature of newspapers and periodicals for general circulation; books in the field of science; book-binding materials; photographs; stationery; adhesive materials for stationery
and office use; artists materials, namely, paint, drawing paper, canvas, pens; paint brushes; typewriters and office requisites other than furniture, namely, rubber bands, staplers, hole-punches,
mouse pad, pen stands, adhesive note paper; printed instructional and teaching materials other than apparatus in the field of science, biology, genetics, chemistry, formulations, antibodies, antibody
technology, chemistry, agrochemical pharmaceuticals, bioinformatics, biomedical devices, biologics, biotechnology, biotherapeutics, biology, biochemical preparations, cell lines, cheminformatics,
genetics and genetic engineering, gene expression systems, in vitro research, inhalation pharmaceuticals, molecular sciences, micro-organisms, nutrition, ophthalmic preparations, pharmacogenetics,
pharmacokinetics, pharmacology, pharmaceuticals, polymers, peptide synthesis, protein, and solid state characterization; printers type and printing clichés, namely, stereotypes; directories in the
field of science, biology, genetics, chemistry, formulations, antibodies, antibody technology, chemistry, agrochemical pharmaceuticals, bioinformatics, biomedical devices, biologics, biotechnology,
biotherapeutics, biology, biochemical preparations, cell lines, cheminformatics, genetics and genetic engineering, gene expression systems, in vitro research, inhalation pharmaceuticals, molecular
sciences, micro-organisms, nutrition, ophthalmic preparations, pharmacogenetics, pharmacokinetics, pharmacology, pharmaceuticals, polymers, peptide synthesis, protein, and solid state
characterization and blank journals; printed training materials in the field of clinical study, medical writing and pharmacovigilance 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: Paper and paper articles, namely, writing paper, notebooks, sketch pads, letter heads, envelops, files, brochures leaflet, flyers,
sign boards, pamphlets, banners, pen, pencil, USB drives, table calendars, table clock, certificates, flask, coffee cups, power banks, photo frames;
Paper and
paper articles, namely, writing paper, notebooks, sketch pads, letterhead paper, envelopes, file folders, printed brochures, leaflet, informational flyers and pamphlets in the field of science,
biology, genetics, chemistry, formulations, antibodies, antibody technology, chemistry, agrochemical pharmaceuticals, bioinformatics, biomedical devices, biologics, biotechnology, biotherapeutics,
biology, biochemical preparations, cell lines, cheminformatics, genetics and genetic engineering, gene expression systems, in vitro research, inhalation pharmaceuticals, molecular sciences,
micro-organisms, nutrition, ophthalmic preparations, pharmacogenetics, pharmacokinetics, pharmacology, pharmaceuticals, polymers, peptide synthesis, protein, and solid state characterization;
cardboard and cardboard articles, namely, boxes, packing material, container, bag;
printers type and printing clichés, namely,
stereotypes;
printed matter in the nature of newspapers and periodicals for general circulation;
directories in the
field of science, biology, genetics, chemistry, formulations, antibodies, antibody technology, chemistry, agrochemical pharmaceuticals, bioinformatics, biomedical devices, biologics, biotechnology,
biotherapeutics, biology, biochemical preparations, cell lines, cheminformatics, genetics and genetic engineering, gene expression systems, in vitro research, inhalation pharmaceuticals, molecular
sciences, micro-organisms, nutrition, ophthalmic preparations, pharmacogenetics, pharmacokinetics, pharmacology, pharmaceuticals, polymers, peptide synthesis, protein, and solid state
characterization;
printed sign boards, banners, table calendars, and printed certificates;
book-binding
materials;
pens and pencils;
photographs;
cardboard and cardboard articles,
namely, boxes, packing material, containers, and paper bags;
printed matter in the nature of newspapers for general circulation;
periodicals in the nature of general features magazines;
books in the field of science;
bookbinding
materials;
typewriters and office requisites other than furniture, namely, rubber bands, staplers, hole-punches, mouse pad, pen stands, adhesive note
paper;
printed photographs;
stationery;
adhesive materials for stationery and office use;
directories in the field of science, biology, genetics, chemistry, formulations, antibodies, antibody technology, chemistry, agrochemical pharmaceuticals,
bioinformatics, biomedical devices, biologics, biotechnology, biotherapeutics, biology, biochemical preparations, cell lines, cheminformatics, genetics and genetic engineering, gene expression
systems, in vitro research, inhalation pharmaceuticals, molecular sciences, micro-organisms, nutrition, ophthalmic preparations, pharmacogenetics, pharmacokinetics, pharmacology, pharmaceuticals,
polymers, peptide synthesis, protein, and solid state characterization and blank journals;
artists materials, namely, paint, drawing paper, canvas, pens;
paint brushes;
typewriters and office requisites other than furniture, namely, rubber bands, staplers, paper hole-punches, pen stands,
adhesive note paper;
printed instructional and teaching materials other than apparatus in the field of science, biology, genetics, chemistry, formulations, antibodies,
antibody technology, chemistry, agrochemical pharmaceuticals, bioinformatics, biomedical devices, biologics, biotechnology, biotherapeutics, biology, biochemical preparations, cell lines,
cheminformatics, genetics and genetic engineering, gene expression systems, in vitro research, inhalation pharmaceuticals, molecular sciences, micro-organisms, nutrition, ophthalmic preparations,
pharmacogenetics, pharmacokinetics, pharmacology, pharmaceuticals, polymers, peptide synthesis, protein, and solid state characterization;
printers type and
printing clichés, namely, stereotypes;
directories in the field of science, biology, genetics, chemistry, formulations, antibodies, antibody technology,
chemistry, agrochemical pharmaceuticals, bioinformatics, biomedical devices, biologics, biotechnology, biotherapeutics, biology, biochemical preparations, cell lines, cheminformatics, genetics and
genetic engineering, gene expression systems, in vitro research, inhalation pharmaceuticals, molecular sciences, micro-organisms, nutrition, ophthalmic preparations, pharmacogenetics,
pharmacokinetics, pharmacology, pharmaceuticals, polymers, peptide synthesis, protein, and solid state characterization;
blank journals;
printed training materials in the field of clinical study, medical writing and pharmacovigilance services;
none of the aforesaid goods relating to
gel imaging and gel analysis applicationsClass 016 for Paper and paper articles, namely, writing paper, notebooks, sketch pads, letterhead paper, envelopes, file folders, printed brochures,
leaflet, informational flyers and pamphlets in the field of science, biology, genetics, chemistry, formulations, antibodies, antibody technology, chemistry, agrochemical pharmaceuticals,
bioinformatics, biomedical devices, biologics, biotechnology, biotherapeutics, biology, biochemical preparations, cell lines, cheminformatics, genetics and genetic engineering, gene expression
systems, in vitro research, inhalation pharmaceuticals, molecular sciences, micro-organisms, nutrition, ophthalmic preparations, pharmacogenetics, pharmacokinetics, pharmacology, pharmaceuticals,
polymers, peptide synthesis, protein, and solid state characterization; printers type and printing clichés, namely, stereotypes; directories in the field of science, biology, genetics, chemistry,
formulations, antibodies, antibody technology, chemistry, agrochemical pharmaceuticals, bioinformatics, biomedical devices, biologics, biotechnology, biotherapeutics, biology, biochemical
preparations, cell lines, cheminformatics, genetics and genetic engineering, gene expression systems, in vitro research, inhalation pharmaceuticals, molecular sciences, micro-organisms, nutrition,
ophthalmic preparations, pharmacogenetics, pharmacokinetics, pharmacology, pharmaceuticals, polymers, peptide synthesis, protein, and solid state characterization; printed sign boards, banners, table
calendars, and printed certificates; pens and pencils; cardboard and cardboard articles, namely, boxes, packing material, containers, and paper bags; printed matter in the nature of newspapers for
general circulation; periodicals in the nature of general features magazines; books in the field of science; bookbinding materials; printed photographs; stationery; adhesive materials for stationery
and office use; artists materials, namely, paint, drawing paper, canvas, pens; paint brushes; typewriters and office requisites other than furniture, namely, rubber bands, staplers, paper
hole-punches, pen stands, adhesive note paper; printed instructional and teaching materials other than apparatus in the field of science, biology, genetics, chemistry, formulations, antibodies,
antibody technology, chemistry, agrochemical pharmaceuticals, bioinformatics, biomedical devices, biologics, biotechnology, biotherapeutics, biology, biochemical preparations, cell lines,
cheminformatics, genetics and genetic engineering, gene expression systems, in vitro research, inhalation pharmaceuticals, molecular sciences, micro-organisms, nutrition, ophthalmic preparations,
pharmacogenetics, pharmacokinetics, pharmacology, pharmaceuticals, polymers, peptide synthesis, protein, and solid state characterization; printers type and printing clichés, namely, stereotypes;
directories in the field of science, biology, genetics, chemistry, formulations, antibodies, antibody technology, chemistry, agrochemical pharmaceuticals, bioinformatics, biomedical devices,
biologics, biotechnology, biotherapeutics, biology, biochemical preparations, cell lines, cheminformatics, genetics and genetic engineering, gene expression systems, in vitro research, inhalation
pharmaceuticals, molecular sciences, micro-organisms, nutrition, ophthalmic preparations, pharmacogenetics, pharmacokinetics, pharmacology, pharmaceuticals, polymers, peptide synthesis, protein, and
solid state characterization; blank journals; printed training materials in the field of clinical study, medical writing and pharmacovigilance services; none of the aforesaid goods relating to gel
imaging and gel analysis applications
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 Scientific research and custom synthesis; scientific and clinical research in the field of medicine, pharma, agro, nutraceuticals, FMCG; scientific research and
development; custom design and development of chemical reagents and biochemical assays; laboratory testing; laboratory testing services for research and development purposes; testing of
pharmaceuticals; chemical engineering; drug discovery services; pharmaceutical drug development services; pharmaceutical products development; development of pharmaceutical preparations and
medicines; scientific study and research in the field of reproduction, husbandry, and general health of animal; biotechnology research for determining the neuronal survival of molecules in animal
models; research and development services in the field of antibodies, antibody technology; custom design and development of chemical reagents and biochemical assays; design, engineering, research,
development and testing services in the field of polymeric materials, polymer synthesis, and materials customization for medical, scientific, and technological applications; toxicology services;
toxicity analysis; toxicity testing for research purposes; conducting clinical trials; conducting clinical trials for scientific research for others; conducting clinical trials for pharmaceutical
products; providing medical and scientific research information in the field of clinical trials; conducting early evaluations in the field of new pharmaceuticals; DNA analysis services for scientific
research purposes; laboratory research in the field of gene expression; blood analysis services for scientific research purposes; analysis of human tissues for medical research; scientific services
relating to the isolation and cultivation of human tissues and cells for research purposes; preparation of reports relating to scientific and technical research; analysis in the field of molecular
biology; contract research services relating to molecular sciences; biological cloning services; structural and functional analysis of genomes; scientific and medical laboratory services; services of
a chemical and/or biological laboratory; laboratory research services relating to pharmaceuticals; research and development and consultation related thereto in the field of antibodies, antibody
technology, chemistry, agrochemical pharmaceuticals, bioinformatics, biomedical devices, biologics, biotechnology, biotherapeutics, biology, biochemical preparations, cell lines, cheminformatics,
genetics and genetic engineering, gene expression systems, in vitro research, inhalation pharmaceuticals, molecular sciences, micro-organisms, nutrition, ophthalmic preparations, pharmacogenetics,
pharmacokinetics, pharmacology, pharmaceuticals, polymers, peptide synthesis, protein, and solid state characterization; toxicokinetic analysis and toxicology services; scientific and technological
services, namely, scientific research, development, analysis, testing, engineering, extraction, synthesis, purification and production in the field of antibodies, active pharmaceutical ingredients
(API), biomolecules, cell bank characterization, chirality, chromosome aberration, clinical chemistry, cloning vector, cyclotides, DNA, flow cytometry, gas chromatography mass spectrometry, genes,
immuno-pharmaceuticals, in vitro irritation, large molecule, liquid chromatography mass spectrometry, microbials, monomers, nanoparticles, natural products, peptides, proteins, RNA, supercritical
fluid chromatography, small molecules and vaccines
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: Scientific research and custom synthesis;
scientific and clinical research in the field of medicine, pharma,
agro, nutraceuticals, FMCG;
scientific and clinical research in the field of medicine, pharmaceutical, agrochemicals, nutraceuticals,;
scientific research and development;
custom design and development of chemical reagents and biochemical assays;
laboratory
testing;
laboratory testing services for research and development purposes;
testing of pharmaceuticals;
chemical
engineering;
drug discovery services;
pharmaceutical drug development services;
pharmaceutical products
development;
development of pharmaceutical preparations and medicines;
scientific study and research in the field of reproduction, husbandry, and
general health of animal;
biotechnology research for determining the neuronal survival of molecules in animal models;
research and development
services in the field of antibodies, antibody technology;
custom design and development of chemical reagents and biochemical assays;
design,
engineering, research, development and testing services in the field of polymeric materials, polymer synthesis, and materials customization for medical, scientific, and technological
applications;
toxicology services;
toxicity analysis;
toxicity testing for research purposes;
conducting clinical trials;
conducting clinical trials for scientific research for others;
conducting clinical trials for
pharmaceutical products;
providing medical and scientific research information in the field of clinical trials;
conducting early evaluations in
the field of new pharmaceuticals;
DNA analysis services for scientific research purposes;
laboratory research in the field of gene
expression;
blood analysis services for scientific research purposes;
analysis of human tissues for medical research;
scientific services relating to the isolation and cultivation of human tissues and cells for research purposes;
preparation of reports relating to scientific and
technical research;
analysis in the field of molecular biology;
contract research services relating to molecular sciences;
biological cloning services;
structural and functional analysis of genomes;
scientific and medical laboratory services;
services of a chemical and/or biological laboratory;
laboratory research services relating to pharmaceuticals;
research
and development and consultation related thereto in the field of antibodies, antibody technology, chemistry, agrochemical pharmaceuticals, bioinformatics, biomedical devices, biologics,
biotechnology, biotherapeutics, biology, biochemical preparations, cell lines, cheminformatics, genetics and genetic engineering, gene expression systems, in vitro research, inhalation
pharmaceuticals, molecular sciences, micro-organisms, nutrition, ophthalmic preparations, pharmacogenetics, pharmacokinetics, pharmacology, pharmaceuticals, polymers, peptide synthesis, protein, and
solid state characterization;
toxicokinetic analysis and toxicology services;
scientific and technological services, namely, scientific
research, development, analysis, testing, engineering, extraction, synthesis, purification and production in the field of antibodies, active pharmaceutical ingredients (API), biomolecules, cell bank
characterization, chirality, chromosome aberration, clinical chemistry, cloning vector, cyclotides, DNA, flow cytometry, gas chromatography mass spectrometry, genes, immuno-pharmaceuticals, in vitro
irritation, large molecule, liquid chromatography mass spectrometry, microbials, monomers, nanoparticles, natural products, peptides, proteins, RNA, supercritical fluid chromatography, small
molecules and vaccines;
none of the aforesaid services relating to gel imaging and gel analysis applicationsClass 042 for Scientific research and
custom synthesis; scientific and clinical research in the field of medicine, pharmaceutical, agrochemicals, nutraceuticals,; scientific research and development; custom design and development of
chemical reagents and biochemical assays; laboratory testing; laboratory testing services for research and development purposes; testing of pharmaceuticals; chemical engineering; drug discovery
services; pharmaceutical drug development services; pharmaceutical products development; development of pharmaceutical preparations and medicines; scientific study and research in the field of
reproduction, husbandry, and general health of animal; biotechnology research for determining the neuronal survival of molecules in animal models; research and development services in the field of
antibodies, antibody technology; custom design and development of chemical reagents and biochemical assays; design, engineering, research, development and testing services in the field of polymeric
materials, polymer synthesis, and materials customization for medical, scientific, and technological applications; toxicology services; toxicity analysis; toxicity testing for research purposes;
conducting clinical trials; conducting clinical trials for scientific research for others; conducting clinical trials for pharmaceutical products; providing medical and scientific research
information in the field of clinical trials; conducting early evaluations in the field of new pharmaceuticals; DNA analysis services for scientific research purposes; laboratory research in the field
of gene expression; blood analysis services for scientific research purposes; analysis of human tissues for medical research; scientific services relating to the isolation and cultivation of human
tissues and cells for research purposes; preparation of reports relating to scientific and technical research; analysis in the field of molecular biology; contract research services relating to
molecular sciences; biological cloning services; structural and functional analysis of genomes; scientific and medical laboratory services; services of a chemical and/or biological laboratory;
laboratory research services relating to pharmaceuticals; research and development and consultation related thereto in the field of antibodies, antibody technology, chemistry, agrochemical
pharmaceuticals, bioinformatics, biomedical devices, biologics, biotechnology, biotherapeutics, biology, biochemical preparations, cell lines, cheminformatics, genetics and genetic engineering, gene
expression systems, in vitro research, inhalation pharmaceuticals, molecular sciences, micro-organisms, nutrition, ophthalmic preparations, pharmacogenetics, pharmacokinetics, pharmacology,
pharmaceuticals, polymers, peptide synthesis, protein, and solid state characterization; toxicokinetic analysis and toxicology services; scientific and technological services, namely, scientific
research, development, analysis, testing, engineering, extraction, synthesis, purification and production in the field of antibodies, active pharmaceutical ingredients (API), biomolecules, cell bank
characterization, chirality, chromosome aberration, clinical chemistry, cloning vector, cyclotides, DNA, flow cytometry, gas chromatography mass spectrometry, genes, immuno-pharmaceuticals, in vitro
irritation, large molecule, liquid chromatography mass spectrometry, microbials, monomers, nanoparticles, natural products, peptides, proteins, RNA, supercritical fluid chromatography, small
molecules and vaccines; none of the aforesaid services relating to gel imaging and gel analysis applications
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.
The applicant's current attorney information: Lawrence E. Abelman. Lawrence E. Abelman of ABELMAN, FRAYNE & SCHWAB, is located at
10th Floor
666 THIRD AVENUE
NEW YORK, New York 10017
US
The docket/reference number is 879374.
The phone number is 212-949-9022.
The fax number is 212-949-9190.
The email address is docket@lawabel.com
The applicants proposed attorney information: Lawrence E. Abelman. Other appointed attorneys are Frank Terranella, Julie Seyler, Marie Anne Mastrovito and Erica Halstead. Lawrence E. Abelman of
ABELMAN, FRAYNE & SCHWAB, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at
10th Floor
666 THIRD AVENUE
NEW YORK, New York 10017
United States
The docket/reference number is 879374.
The phone number is 212-949-9022.
The fax number is 212-949-9190.
The email address is fterranella@lawabel.com
Lawrence E. Abelman 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.
The applicant's current correspondence information: LAWRENCE E. ABELMAN. LAWRENCE E. ABELMAN of ABELMAN, FRAYNE & SCHWAB, is located at
10th Floor
666 THIRD AVENUE
NEW YORK, New York 10017
US
The docket/reference number is 879374.
The phone number is 212-949-9022.
The fax number is 212-949-9190.
The email address is fterranella@lawabel.com; docket@lawabel.com
The applicants proposed correspondence information: Lawrence E. Abelman. Lawrence E. Abelman of ABELMAN, FRAYNE & SCHWAB, is located at
10th Floor
666 THIRD AVENUE
NEW YORK, New York 10017
United States
The docket/reference number is 879374.
The phone number is 212-949-9022.
The fax number is 212-949-9190.
The email address is fterranella@lawabel.com; docket@lawabel.com
SIGNATURE(S)
Response Signature
Signature: /ft/ Date: 12/11/2019
Signatory's Name: Frank Terranella
Signatory's Position: Attorney for Owner, NY Bar member no. 1918697 (1984)
Signatory's Phone Number: 2129499022
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.
Mailing Address: LAWRENCE E. ABELMAN
ABELMAN, FRAYNE & SCHWAB
10th Floor
666 THIRD AVENUE
NEW YORK, New York 10017
Mailing Address: Lawrence E. Abelman
ABELMAN, FRAYNE & SCHWAB
10th Floor
666 THIRD AVENUE
NEW YORK, New York 10017
Serial Number: 88081490
Internet Transmission Date: Wed Dec 11 10:24:59 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XX-20191211102459364
100-88081490-700accf8585f42dc2b991ef9510
64fdfc6c5d11ee1506dc423adb873877d83f846-
N/A-N/A-20191211101226454768