NOTE TO THE FILE
Sent to TICRS as Serial Number: 88249835SERIAL NUMBER: 88255153
DATE: 05/17/2019
NAME: ekon
NOTE:
From: Julian Gonzalez [mailto:julian_gonzalez@essenlix.com]
Sent: Friday, May 17, 2019 5:07 PM
To: Kon, Elissa Garber <ElissaGarber.Kon@USPTO.GOV>
Subject: Re: Re Trademark Applications for LAB TEST AT FINGET TIPS #88249835 and INSTANT MOBILE HEALTH SELF-TEST AT FINGET TIPS #88251121
Hi Elissa,
Okay great thank you for that, we'll revert it back to how it was originally, so your proposed amendment to class 44 as indicated in your email is acceptable. Thank you.
- Julian
On Fri, May 17, 2019 at 4:47 PM Kon, Elissa Garber <ElissaGarber.Kon@uspto.gov> wrote:
They are acceptable. Upon further review, in Class 44, the applicant does not have to amend “healthcare services” to state the type. Therefore, if you prefer, you can amend Class 44 to the following, with my proposed change noted with a line through wording that is no necessary, or you can keep the wording, either way is acceptable. This would apply to all of the applications with this wording:
Class 44: Medical services; Medical assistance; Medical consultations; Medical counseling; Medical information; Healthcare services
in the fields of cancer, blood abnormalities, immune diseases, neurological diseases, cardiovascular diseases, infectious diseases, viral diseases, genetic diseases, and other tissue-based diagnostic testing, cytology, and cell-based testing; diagnostic services, namely, medical testing for diagnostic purposes; Wellness services, namely, providing health and wellness information; Medical services, medical assistance, medical consultations, medical counseling, medical information, healthcare testing, diagnostic testing, and wellness services, namely, all in the fields of cancer, blood abnormalities, immune diseases, neurological diseases, cardiovascular diseases, infectious diseases, viral diseases, genetic diseases, and other tissue-based diagnostic testing, cytology, and cell-based testing; Medical testing services for the detection and identification of cells, proteins, small molecules, and nucleic acids in a sample
/Elissa Garber Kon/
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 106
phone: (571) 272-9181
email: elissagarber.kon@uspto.gov
Notice to applicants and attorneys: relevant e-mail communications will be uploaded to the official application record in accordance with 37 C.F.R. §2.191 and TMEP §§709.04 - .05.
From: Julian Gonzalez [mailto:julian_gonzalez@essenlix.com]
Sent: Friday, May 17, 2019 2:08 PM
To: Kon, Elissa Garber <ElissaGarber.Kon@USPTO.GOV>
Subject: Re: Re Trademark Applications for LAB TEST AT FINGET TIPS #88249835 and INSTANT MOBILE HEALTH SELF-TEST AT FINGET TIPS #88251121
Hi Elissa,
Thank you for your call. With regards to the italicized portions please see below. Let me know if these work. If they do go ahead and put them through on an Examiner's Amendment for all marks. Thanks.
Class 1: Assays for research purposes; Biological and chemical reagents used for non-medical purposes, in vitro and in vivo scientific use, the testing of bodily fluids, and the detecting and analyzing of cells, proteins, small molecules, and nucleotides; Biological and chemical test kits for laboratory or research use in the field of personal wellness; Biological and chemical test kits for laboratory or research use for the detection and identification of nucleic acids, namely, DNA and RNA in a sample
Class 10: Medical diagnostic apparatus for testing cells, tissue, biomolecules, proteins, small molecules, and nucleotides; Medical devices for obtaining bodily fluid samples; Medical diagnostic instruments for the analysis of bodily fluids; Medical apparatus for diagnostic use,
including, namely, medical apparatus for diagnostic testing of health conditions, diseases, or abnormalities, namely,in the fields of cancer, blood abnormalities, immune diseases, neurological diseases, cardiovascular diseases, infectious diseases, viral diseases, genetic diseases, and endocrine diseases, and other tissue-based diagnostic testing, cytology, and cell based testing; Medical apparatus, devices, and instruments for wellness testing, health condition testing, and healthcare testing, namely, point-of-care diagnostic devices, at-home diagnostic devices, and portable health monitoring devices that detect health conditions and diseases in the nature of cancers, blood abnormalities, immune diseases, neurological diseases, cardiovascular diseases, infectious diseases, viral diseases and genetic diseases; Medical apparatus, devices, and instruments for the detection and identification of nucleic acids, namely, DNA and RNA in a sample
Class 44: Medical services; Medical assistance; Medical consultations; Medical counseling; Medical information; Healthcare services in the fields of cancer, blood abnormalities, immune diseases, neurological diseases, cardiovascular diseases, infectious diseases, viral diseases, genetic diseases, and other tissue-based diagnostic testing, cytology, and cell-based testing; diagnostic services, namely, medical testing for diagnostic purposes; Wellness services, namely, providing health and wellness information; Medical services, medical assistance, medical consultations, medical counseling, medical information, healthcare testing, diagnostic testing, and wellness services
, namely, all in the fields of cancer, blood abnormalities, immune diseases, neurological diseases, cardiovascular diseases, infectious diseases, viral diseases, genetic diseases, and other tissue-based diagnostic testing, cytology, and cell-based testing; Medical testing services for the detection and identification of cells, proteins, small molecules, and nucleic acids in a sample
- Julian
On Tue, Mar 26, 2019 at 5:58 PM Kon, Elissa Garber <ElissaGarber.Kon@uspto.gov> wrote:
Hi, Julian, I am checking in to see whether you have heard back from your client regarding any of the trademarks about which we have been emailing. Thank you!
/Elissa Garber Kon/
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 106
phone: (571) 272-9181
email: elissagarber.kon@uspto.gov
Notice to applicants and attorneys: relevant e-mail communications will be uploaded to the official application record in accordance with 37 C.F.R. §2.191 and TMEP §§709.04 - .05.
From: Julian Gonzalez [mailto:julian_gonzalez@essenlix.com]
Sent: Friday, March 22, 2019 12:10 PM
To: Kon, Elissa Garber <ElissaGarber.Kon@USPTO.GOV>
Subject: Re: Re Trademark Applications for LAB TEST AT FINGET TIPS #88249835 and INSTANT MOBILE HEALTH SELF-TEST AT FINGET TIPS #88251121
Hi Elissa,
I will try to. Yes, the IDs are the same throughout, so I'll keep on the look out for your emails. Thanks so much.
- Julian
On Fri, Mar 22, 2019 at 12:07 PM Kon, Elissa Garber <ElissaGarber.Kon@uspto.gov> wrote:
Thank you for your prompt reply. Do you think you can get an answer by next Wednesday or Thursday?
I also have several other sister applications, so if it is ok with you, I’ll send similar emails on the ones we can resolve by examiner’s amendment. If the ID issues are the same in all or most of them, then that can be a heads up that more will need to be amended in a similar fashion.
/Elissa Garber Kon/
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 106
phone: (571) 272-9181
email: elissagarber.kon@uspto.gov
Notice to applicants and attorneys: relevant e-mail communications will be uploaded to the official application record in accordance with 37 C.F.R. §2.191 and TMEP §§709.04 - .05.
From: Julian Gonzalez [mailto:julian_gonzalez@essenlix.com]
Sent: Friday, March 22, 2019 11:35 AM
To: Kon, Elissa Garber <ElissaGarber.Kon@USPTO.GOV>
Subject: Re: Re Trademark Applications for LAB TEST AT FINGET TIPS #88249835 and INSTANT MOBILE HEALTH SELF-TEST AT FINGET TIPS #88251121
Hi Elissa,
Thank you for your email. I will run your proposals by my supervisor ASAP and get back to you. Is their a deadline for responding as to whether we want to accept your proposals? Please advise. Thank you.
- Julian
On Fri, Mar 22, 2019 at 10:52 AM Kon, Elissa Garber <ElissaGarber.Kon@uspto.gov> wrote:
Dear Mr. Gonzalez
I am the trademark examining attorney to whom these applications have been assigned. There are minor issues concerning the description of goods/services and disclaimers that we can resolve by examiner’s amendment, based on your reply to this email or a phone call. If you prefer that I issue written priority Office actions, then please let me know.
For both applications, the applicant must disclaim the descriptive wording. For 88251121, the disclaimer should read as:
n No claim is made to the exclusive right to use “INSTANT MOBILE HEALTH SELF-TEST” apart from the mark as shown.
Please note that the applicant has disclaimed "MOBILE SELF TEST" in its earlier application Serial No. 87155012. The word INSTANT immediately tells consumers that the associated tests can produce results in a very short time.
For 88249835, the disclaimer should read as:
n No claim is made to the exclusive right to use “LAB TEST” apart from the mark as shown.
Second, the applicant must amend the description of goods/services in these applications.
For both applications, I propose the following amendments to Classes 10 and 44:
Class 10: Medical diagnostic apparatus for testing cells, tissue, biomolecules, proteins, small molecules, and nucleotides; Medical devices for obtaining bodily fluid samples; Medical diagnostic instruments for the analysis of bodily fluids; Medical apparatus for diagnostic use,
including, namely, medical apparatus for diagnostic testing of health conditions, diseases, or abnormalities, namely,in the fields of cancer, blood abnormalities, immune diseases, neurological diseases, cardiovascular diseases, infectious diseases, viral diseases, genetic diseases, and endocrine diseases, and other tissue-based diagnostic testing, cytology, and cell based testing; Medical apparatus, devices, and instruments for wellness testing, health condition testing, and healthcare testing, namely, point-of-care diagnostic devices, at-home diagnostic devices, and portable health monitoring devices that detect health conditions and diseases in the nature of cancers, blood abnormalities, immune diseases, neurological diseases, cardiovascular diseases, infectious diseases, viral diseases and genetic diseases; Medical apparatus, devices, and instruments for the detection and identification of nucleic acids, namely, DNA and RNA in a sample
Class 44: Medical services; Medical assistance; Medical consultations; Medical counseling; Medical information; Healthcare services in the field of (specify type of service, e.g., mobile healthcare services); diagnostic services, namely, medical testing for diagnostic purposes; Wellness services, namely, (specify type, e.g., providing mental health and wellness information); Medical services, medical assistance, medical consultations, medical counseling, medical information, healthcare testing, diagnostic testing, and wellness services
, namely, all in the fields of cancer, blood abnormalities, immune diseases, neurological diseases, cardiovascular diseases, infectious diseases, viral diseases, genetic diseases, and other tissue-based diagnostic testing, cytology, and cell-based testing; Medical testing services for the detection and identification of cells, proteins, small molecules, and nucleic acids in a sample
For 88249835 (LAB TEST AT FINGER TIPS), the applicant must also amend Classes 1 as follows, if accurate:
Class 1: Assays for research purposes; Biological and chemical reagents used for non-medical purposes, in vitro and in vivo scientific use, the testing of bodily fluids, and the detecting and analyzing of cells, proteins, small molecules, and nucleotides; Biological and chemical test kits for (indicate purpose of the kit, e.g., for laboratory or research use) in the field of personal wellness; Biological and chemical test kits for laboratory or research use for the detection and identification of nucleic acids, namely, DNA and RNA in a sample
Class 5: no changes required -- Medical diagnostic reagents and assays for testing of body fluids; Medical diagnostic reagents and assays for testing cells, proteins, small molecules, nucleotides, and nucleic acids; Medical diagnostic reagents; Diagnostic kits comprised of medical diagnostic reagents and assays for testing of bodily fluids for use in disease detection, namely, cancers, blood abnormalities, immune diseases, neurological diseases, cardiovascular diseases, infectious diseases, viral diseases, and genetic diseases; Diagnostic biomarker reagents for medical purposes
Once we have agreed upon changes, I will enter them, along with the disclaimers, via examiner’s amendment and move the applications forward. Please tell me how you want to proceed, or if you have questions. Thank you.
/Elissa Garber Kon/
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 106
phone: (571) 272-9181
email: elissagarber.kon@uspto.gov
Notice to applicants and attorneys: relevant e-mail communications will be uploaded to the official application record in accordance with 37 C.F.R. §2.191 and TMEP §§709.04 - .05.
--Julian D. Gonzalez, Esq.
Essenlix Corporation
1 Deerpark Drive, Suite R
Monmouth Junction, NJ 08852
(C): (201) 563-3374
This email and any attachments thereto may contain private, confidential, and privileged material for the sole use of the intended recipient. Any review, copying, or distribution of this email (or any attachments thereto) by others is strictly prohibited. If you are not the intended recipient, please contact the sender immediately and permanently delete the original and any copies of this email and any attachments thereto.
--Julian D. Gonzalez, Esq.
Essenlix Corporation
1 Deerpark Drive, Suite R
Monmouth Junction, NJ 08852
(C): (201) 563-3374
This email and any attachments thereto may contain private, confidential, and privileged material for the sole use of the intended recipient. Any review, copying, or distribution of this email (or any attachments thereto) by others is strictly prohibited. If you are not the intended recipient, please contact the sender immediately and permanently delete the original and any copies of this email and any attachments thereto.
--Julian D. Gonzalez, Esq.
Essenlix Corporation
1 Deerpark Drive, Suite R
Monmouth Junction, NJ 08852
(D): (732) 823-1631
(C): (201) 563-3374
This email and any attachments thereto may contain private, confidential, and privileged material for the sole use of the intended recipient. Any review, copying, or distribution of this email (or any attachments thereto) by others is strictly prohibited. If you are not the intended recipient, please contact the sender immediately and permanently delete the original and any copies of this email and any attachments thereto.
--Julian D. Gonzalez, Esq.
Essenlix Corporation
1 Deerpark Drive, Suite R
Monmouth Junction, NJ 08852
(D): (732) 823-1631
(C): (201) 563-3374