Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

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

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

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

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88215881 MISSION(Standard Characters, see http://uspto.report/TM/88215881/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

PRIOR PENDING APPLICATION Pending U.S. Application Serial No. 87-787069 was identified in the Office Action because of potential likelihood of confusion between the marks should that application register as filed. Applicant respectfully notes that the owner of pending U.S. Application Serial No. 87-787069 has deleted class 001 and the associated goods from that application, leaving only classes 009 and 042. Applicant, by way of this Response, has amended the present application to delete the services in class 042; only the goods in class 001 remain pending in this application. As there is now no overlap between the goods in the present application and the goods and services in pending U.S. Application Serial No. 87-787069, Applicant respectfully submits the potential conflict is now resolved. IDENTIFICATION OF GOODS AND SERVICES The listing of goods in class 001 and services in class 042 were objected to as indefinite and too broad. Applicant hereby amends the listing of goods in class 001 as recommended by the Examining Attorney. Class 042 is deleted from this application. Applicant respectfully submits that all issues identified in the Office Action have been addressed and overcome. If any issue remains outstanding, the Examining Attorney is invited to contact the undersigned attorney.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant hereby deletes the following class of goods/services from the application.
Class 042 for Genome editing and modification; designing gDNA for use by others in genome editing; deconvolution services

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 001 for Reagents for scientific and research use; genome editing reagents; plasmids for scientific and research purposes; proteins for scientific and research purposes; Cas9 proteins for scientific and research purposes; transfection reagents for scientific and research purposes; gRNA for scientific and research purposes; ivt-RNA for scientific and research purposes; pooled gRNA libraries for scientific and research purposes; CRISPR reagents for scientific and research purposes; lentivirus particles for scientific and research purposes; lentivirus packaging mix consisting of reagents for generating lentivirus particles; CRISPR reagents for editing plant genomes for scientific and research purposes; CRISPR activators for scientific and research purposes; CRISPR inhibitors for scientific and research purposes; CRISPR controls for scientific and research purposes; reagents for proxy-CRISPR; CRISPR Libraries; synthetic RNA scientific and research purposes; knockout clones for scientific and research purposes
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Reagents for scientific and research use; genome editing reagents; genome editing reagents for scientific and research purposes; plasmids for scientific and research purposes; proteins for scientific and research purposes; Cas9 proteins for scientific and research purposes; transfection reagents for scientific and research purposes; gRNA for scientific and research purposes; ivt-RNA for scientific and research purposes; pooled gRNA libraries for scientific and research purposes; CRISPR reagents for scientific and research purposes; lentivirus particles for scientific and research purposes; lentivirus packaging mix consisting of reagents for generating lentivirus particles; CRISPR reagents for editing plant genomes for scientific and research purposes; CRISPR activators for scientific and research purposes; CRISPR inhibitors for scientific and research purposes; CRISPR controls for scientific and research purposes; reagents for proxy-CRISPR; CRISPR Libraries; synthetic RNA scientific and research purposes; knockout clones for scientific and research purposesClass 001 for Reagents for scientific and research use; genome editing reagents for scientific and research purposes; plasmids for scientific and research purposes; proteins for scientific and research purposes; Cas9 proteins for scientific and research purposes; transfection reagents for scientific and research purposes; gRNA for scientific and research purposes; ivt-RNA for scientific and research purposes; pooled gRNA libraries for scientific and research purposes; CRISPR reagents for scientific and research purposes; lentivirus particles for scientific and research purposes; lentivirus packaging mix consisting of reagents for generating lentivirus particles; CRISPR reagents for editing plant genomes for scientific and research purposes; CRISPR activators for scientific and research purposes; CRISPR inhibitors for scientific and research purposes; CRISPR controls for scientific and research purposes; reagents for proxy-CRISPR; CRISPR Libraries; synthetic RNA scientific and research purposes; knockout clones for scientific and research purposes
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

The applicant's current attorney information: Kristin J. Frost. Kristin J. Frost of SIGMA-ALDRICH CO. LLC, is located at

      LAW DEPARTMENT
      3050 SPRUCE STREET
      ST. LOUIS, Missouri 63103
      US
The docket/reference number is TM27013US00.

The phone number is 314-771-5765.

The fax number is 314-236-8712.

The email address is tmdocketing@sial.com

The applicants proposed attorney information: Kristin J. Frost. Kristin J. Frost of SIGMA-ALDRICH CO. LLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      LAW DEPARTMENT
      3050 SPRUCE STREET
      ST. LOUIS, Missouri 63103
      United States
The docket/reference number is TM27013US00.

The phone number is 314-771-5765.

The fax number is 314-236-8712.

The email address is kristin.frost@milliporesigma.com

Kristin J. Frost 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: KRISTIN J. FROST. KRISTIN J. FROST of SIGMA-ALDRICH CO. LLC, is located at

      LAW DEPARTMENT
      3050 SPRUCE STREET
      ST. LOUIS, Missouri 63103
      US
The docket/reference number is TM27013US00.

The phone number is 314-771-5765.

The fax number is 314-236-8712.

The email address is tmdocketing@sial.com; kristin.frost@sial.com; kim.brucato@sial.com

The applicants proposed correspondence information: Kristin J. Frost. Kristin J. Frost of SIGMA-ALDRICH CO. LLC, is located at

      LAW DEPARTMENT
      3050 SPRUCE STREET
      ST. LOUIS, Missouri 63103
      United States
The docket/reference number is TM27013US00.

The phone number is 314-771-5765.

The fax number is 314-236-8712.

The email address is kristin.frost@milliporesigma.com; kim.brucato@milliporesigma.com

SIGNATURE(S)
Response Signature
Signature: /kjf/     Date: 08/21/2019
Signatory's Name: Kristin J. Frost
Signatory's Position: Attorney of Record, Missouri Bar Member

Signatory's Phone Number: 314-771-5765

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:    KRISTIN J. FROST
   SIGMA-ALDRICH CO. LLC
   LAW DEPARTMENT
   3050 SPRUCE STREET
   ST. LOUIS, Missouri 63103
Mailing Address:    Kristin J. Frost
   SIGMA-ALDRICH CO. LLC
   LAW DEPARTMENT
   3050 SPRUCE STREET
   ST. LOUIS, Missouri 63103
        
Serial Number: 88215881
Internet Transmission Date: Wed Aug 21 12:56:43 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.XX.X-2019082112564387559
7-88215881-610c9644786fd08610557f4740c15
ac33f77f591582316e9f83e3bcfad46d5c8-N/A-
N/A-20190821121451980698