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. 88274983 FMI(Standard Characters, see http://uspto.report/TM/88274983/mark.png) has been amended as follows:

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

Identification of Services

The Examining Attorney has refused registration of the application on the ground that portions of the identification of services are vague.  Applicant has amended the identification substantially as suggested by the Examining Attorney, thus obviating the refusal.  The amended identification is within the scope of the application as filed.  Accordingly, withdrawal of the refusal is respectfully requested.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for providing an online Internet website portal featuring links to scientific research featuring collected and analyzed medical information in the field of cancer treatment and diagnosis and clinical trials information; providing collected and analyzed medical information in the field of cancer genomics and treatment information for cancer for scientific 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: providing an online Internet website portal featuring links to scientific research featuring collected and analyzed medical information in the field of cancer treatment and diagnosis and clinical trials information; providing an online Internet website portal featuring links to scientific research data and information in the field of cancer treatment and diagnosis and clinical trials; providing collected and analyzed medical information in the field of cancer genomics and treatment information for cancer for scientific research purposes; providing collected and analyzed medical and scientific research information in the field of cancer genomics and cancer treatmentClass 042 for providing an online Internet website portal featuring links to scientific research data and information in the field of cancer treatment and diagnosis and clinical trials; providing collected and analyzed medical and scientific research information in the field of cancer genomics and cancer treatment
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 044 for online portal featuring patient medical test results from medical testing for diagnosis or treatment purposes and links to medical information; genomic and genetic and molecular medical testing for cancer diagnostic or treatment purposes; providing collected and analyzed medical information in the field of cancer genomics and treatment; providing collected and analyzed medical information featuring cancer genomics and treatment information and data for cancer for diagnostic and treatment purposes; medical testing for cancer diagnostic or treatment purposes; providing medical information and data on cancer genomics and treatment and clinical trials to healthcare professionals; providing medical information featuring collected and analyzed cancer-associated genetic and treatment information; providing medical data on cancer genomics and treatment and clinical trials to healthcare professionals
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: online portal featuring patient medical test results from medical testing for diagnosis or treatment purposes and links to medical information; providing an Internet website portal featuring information on patient medical test results from medical testing for diagnosis or treatment purposes; providing an Internet website portal featuring links to medical information; providing collected and analyzed medical information in the field of cancer genomics and treatment; genomic and genetic and molecular medical testing for cancer diagnostic or treatment purposes; providing collected and analyzed medical information featuring cancer genomics and treatment information and data for cancer for diagnostic and treatment purposes; providing collected and analyzed medical information on cancer genomics and treatment; providing collected and analyzed medical information on cancer genomics and treatment, for diagnostic and treatment purposes; providing medical information and data on cancer genomics and treatment and clinical trials to healthcare professionals; medical testing for cancer diagnostic or treatment purposes; providing medical information featuring collected and analyzed cancer-associated genetic and treatment information; providing medical information and data to healthcare professionals on cancer genomics and treatment and clinical trials; providing medical data on cancer genomics and treatment and clinical trials to healthcare professionals; providing medical information featuring the collection and analysis of cancer-associated genetics and treatments; providing medical data to healthcare professionals on cancer genomics and treatments and clinical trialsClass 044 for providing an Internet website portal featuring information on patient medical test results from medical testing for diagnosis or treatment purposes; providing an Internet website portal featuring links to medical information; genomic and genetic and molecular medical testing for cancer diagnostic or treatment purposes; providing collected and analyzed medical information on cancer genomics and treatment; providing collected and analyzed medical information on cancer genomics and treatment, for diagnostic and treatment purposes; medical testing for cancer diagnostic or treatment purposes; providing medical information and data to healthcare professionals on cancer genomics and treatment and clinical trials; providing medical information featuring the collection and analysis of cancer-associated genetics and treatments; providing medical data to healthcare professionals on cancer genomics and treatments and clinical trials
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.

ADDITIONAL STATEMENTS
Miscellaneous Statement
Applicant is filing an allegation of use declaration and requisite specimen concurrently herewith. If it is convenient for the Examining Attorney and if it is believed a telephone conference will further the prosecution of this application, Applicant's undersigned counsel encourages a telephone call from the Examining Attorney. In view of the foregoing, Applicant submits that the application is in condition for publication. Favorable action is hereby solicited.


SIGNATURE(S)
Request for Reconsideration Signature
Signature: /sgs/     Date: 07/23/2019
Signatory's Name: Stephanie G. Stella
Signatory's Position: Attorney of Record, VA Bar Member

Signatory's Phone Number: 617-646-8000

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; 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. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder's appointed U.S. attorney or Canadian attorney/agent 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.

        
Serial Number: 88274983
Internet Transmission Date: Tue Jul 23 16:13:18 EDT 2019
TEAS Stamp: USPTO/RFR-XX.XXX.XX.X-201907231613188120
54-88274983-620a1682aafeef2da385b6f9233e
a67335f367d801e31144fc65fe758c63963bd64-
N/A-N/A-20190723160539270057