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. 88281102 ONCOGUIDE(Standard Characters, see http://uspto.report/TM/88281102/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 001 for Chemical reagents and chemical preparations, other than for medical or veterinary use; biochemicals for scientific or research use; biochemical reagents for non-medical use; enzymes for scientific and research use; testing reagents and preparations; reagents for genetic test for non-medical use; diluents, other than for medical or veterinary use; buffer solutions; surfactants; chemical reference materials for scientific or research use; quality control materials used for testing and calibrating scientific or laboratory apparatus; emulsifying agents; chemical products for forming emulsion; chemical products for breaking emulsion; magnetic beads for use in scientific or research analysis; DNA polymerase; chemical preparations containing DNA fragments; reagents for cell analysis tests for non-medical use; reagents for protein analysis tests for non-medical use
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Japan application number 2018-109296 filed 08/30/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Chemical reagents and chemical preparations, other than for medical or veterinary use; Chemical reagents, other than for medical or veterinary use; biochemicals for scientific or research use; chemical preparations, for scientific purposes, other than for medical or veterinary use; Biochemicals for scientific or research use, namely, reagents for testing biological samples; biochemical reagents for non-medical use; testing reagents and preparations; enzymes for scientific and research use; reagents for genetic test for non-medical use; Testing reagents and preparations, namely, biological sample testing reagents used for non-medical purposes; diluents, other than for medical or veterinary use; Reagents for genetic test, namely, gene mutation tests comprised of reagents for non-medical use; buffer solutions; diluents for diluting samples or reagents, other than for medical or veterinary use; surfactants; Buffer solutions used for testing of biological samples other than for medical or veterinary use; Surfactants for pretreatment of samples for genetic testing; quality control materials used for testing and calibrating scientific or laboratory apparatus; chemical reference materials for scientific or research use; emulsifying agents; Quality control materials, namely, fluids, frozen or lyophilized one for testing and calibrating scientific or laboratory apparatus; Emulsifying agents used for preparing emulsion for genetic testing for non-medical purposes; chemical products for forming emulsion; magnetic beads for use in scientific or research analysis; chemical products for breaking emulsion; DNA polymerase; magnetic beads for use in scientific or research analysis for nucleic acid isolation and/or purification; chemical preparations containing DNA fragments; DNA polymerase for scientific research purposes; reagents for cell analysis tests for non-medical use; Chemical preparations containing DNA fragments for scientific purposes; reagents for protein analysis tests for non-medical use; Chemical reagents for cell analysis tests for non-medical use; Chemical reagents for protein analysis tests for non-medical use; Detergents for laboratory use; Detergents for apparatus and instruments used in laboratoriesClass 001 for Chemical reagents, other than for medical or veterinary use; chemical preparations, for scientific purposes, other than for medical or veterinary use; Biochemicals for scientific or research use, namely, reagents for testing biological samples; biochemical reagents for non-medical use; enzymes for scientific and research use; Testing reagents and preparations, namely, biological sample testing reagents used for non-medical purposes; Reagents for genetic test, namely, gene mutation tests comprised of reagents for non-medical use; diluents for diluting samples or reagents, other than for medical or veterinary use; Buffer solutions used for testing of biological samples other than for medical or veterinary use; Surfactants for pretreatment of samples for genetic testing; chemical reference materials for scientific or research use; Quality control materials, namely, fluids, frozen or lyophilized one for testing and calibrating scientific or laboratory apparatus; Emulsifying agents used for preparing emulsion for genetic testing for non-medical purposes; chemical products for forming emulsion; chemical products for breaking emulsion; magnetic beads for use in scientific or research analysis for nucleic acid isolation and/or purification; DNA polymerase for scientific research purposes; Chemical preparations containing DNA fragments for scientific purposes; Chemical reagents for cell analysis tests for non-medical use; Chemical reagents for protein analysis tests for non-medical use; Detergents for laboratory use; Detergents for apparatus and instruments used in laboratories
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Japan application number 2018-109296 filed 08/30/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 003 for Detergents; cleaning solutions; cleaning preparations; detergents for apparatus and instruments; cleaning solutions for apparatus and instruments; cleaning preparations for apparatus and instruments
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Japan application number 2018-109296 filed 08/30/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Detergents; Detergents for cleaning apparatus and instruments for genetic testing; cleaning solutions; Chemical cleaning solutions for genetic testing; cleaning preparations; detergents for apparatus and instruments; Cleaning solutions for apparatus and instruments for genetic testing; cleaning solutions for apparatus and instruments; cleaning preparations for apparatus and instrumentsClass 003 for Detergents for cleaning apparatus and instruments for genetic testing; Chemical cleaning solutions for genetic testing; cleaning preparations; Cleaning solutions for apparatus and instruments for genetic testing; cleaning preparations for apparatus and instruments
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Japan application number 2018-109296 filed 08/30/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 005 for Diagnostic reagents and diagnostic preparations for medical or veterinary use; chemical reagents and chemical preparations for medical or veterinary use; biochemical reagents for medical use; enzymes for use in medical analysis; testing reagents and preparations for medical or veterinary use; reagents for genetic test for medical or veterinary purposes; preparations for detecting mutations in genes for medical or veterinary purposes; diagnostic biomarker reagents for medical or veterinary use; diluents for medical or veterinary use; quality control materials for medical or veterinary use; quality control standard solutions and quality control materials for testing and calibrating medical or veterinary apparatus; detergents for medical or veterinary use; cleaning solutions for medical or veterinary use; cleaning preparations for medical or veterinary use; sheath solutions for use in medical analysis; magnetic beads for use in medical analysis; DNA polymerase for use in medical analysis; chemical preparations containing DNA fragments for use in medical analysis; reagents for cell analysis tests for medical or clinical use; reagents for protein analysis tests for medical or clinical use
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Japan application number 2018-109296 filed 08/30/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Diagnostic reagents and diagnostic preparations for medical or veterinary use; chemical reagents and chemical preparations for medical or veterinary use; Chemical reagents for medical or veterinary use; biochemical reagents for medical use; chemical preparations for medical or veterinary purposes, namely, for testing of biological samples; Biochemical reagents for medical use, namely, diagnostic reagents for medicinal use; testing reagents and preparations for medical or veterinary use; enzymes for use in medical analysis; reagents for genetic test for medical or veterinary purposes; Testing reagents and preparations for medical or veterinary use, namely, medical diagnostic reagents and assays for testing of body fluids including blood and/or tissues; reagents for genetic testing for medical or veterinary purposes; preparations for detecting mutations in genes for medical or veterinary purposes; diluents for medical or veterinary use; diagnostic biomarker reagents for medical or veterinary use; quality control materials for medical or veterinary use; Diluents for medical or veterinary use, namely, for diluting samples or reagents used in genetic testing; quality control standard solutions and quality control materials for testing and calibrating medical or veterinary apparatus; Quality control materials, namely, fluids, frozen or lyophilized one for testing and calibrating genetic testing analyzers for medical or veterinary use; Quality control standard solutions and materials for testing and calibrating medical or veterinary apparatus, namely, artificial DNA or synthetic nucleic acid; cleaning solutions for medical or veterinary use; detergents for medical or veterinary use; cleaning preparations for medical or veterinary use; Cleaning solutions for medical or veterinary use, namely, for cleaning medical apparatus and instruments; sheath solutions for use in medical analysis; Cleaning preparations for medical or veterinary use, namely, for cleaning medical apparatus and instruments; magnetic beads for use in medical analysis; Medical diagnostic solutions, namely, sheath solutions for use in medical analysis; magnetic beads for use in medical analysis for nucleic acid isolation and/or purification; chemical preparations containing DNA fragments for use in medical analysis; DNA polymerase for use in medical analysis; reagents for cell analysis tests for medical or clinical use; Chemical preparations containing DNA fragments for use in medical analysis for genetic testing; reagents for protein analysis tests for medical or clinical use; Chemical reagents for cell analysis tests for medical or clinical use; Chemical reagents for protein analysis tests for medical or clinical useClass 005 for Diagnostic reagents and diagnostic preparations for medical or veterinary use; Chemical reagents for medical or veterinary use; chemical preparations for medical or veterinary purposes, namely, for testing of biological samples; Biochemical reagents for medical use, namely, diagnostic reagents for medicinal use; enzymes for use in medical analysis; Testing reagents and preparations for medical or veterinary use, namely, medical diagnostic reagents and assays for testing of body fluids including blood and/or tissues; reagents for genetic testing for medical or veterinary purposes; preparations for detecting mutations in genes for medical or veterinary purposes; diagnostic biomarker reagents for medical or veterinary use; Diluents for medical or veterinary use, namely, for diluting samples or reagents used in genetic testing; Quality control materials, namely, fluids, frozen or lyophilized one for testing and calibrating genetic testing analyzers for medical or veterinary use; Quality control standard solutions and materials for testing and calibrating medical or veterinary apparatus, namely, artificial DNA or synthetic nucleic acid; detergents for medical or veterinary use; Cleaning solutions for medical or veterinary use, namely, for cleaning medical apparatus and instruments; Cleaning preparations for medical or veterinary use, namely, for cleaning medical apparatus and instruments; Medical diagnostic solutions, namely, sheath solutions for use in medical analysis; magnetic beads for use in medical analysis for nucleic acid isolation and/or purification; DNA polymerase for use in medical analysis; Chemical preparations containing DNA fragments for use in medical analysis for genetic testing; Chemical reagents for cell analysis tests for medical or clinical use; Chemical reagents for protein analysis tests for medical or clinical use
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Japan application number 2018-109296 filed 08/30/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Testing apparatus and instruments for scientific, research or laboratory use; laboratory apparatus and instruments; measuring or testing machines and instruments; laboratory apparatus and furniture for use in genetic testing; flow cytometers for scientific or laboratory use; particle analyzers for scientific, research or laboratory use; genetic analyzer for scientific, research or laboratory use; particle counters for scientific, research or laboratory use; genetic testing apparatus and instruments for scientific, research or laboratory use; gene amplification analyzers for scientific, research or laboratory use; DNA sequencer for scientific, research or laboratory use; biological sample pretreatment apparatus and instruments for scientific, research or laboratory use; measurement sample preparation apparatus and instruments for scientific, research or laboratory use; pretreatment apparatus and instruments for genetic test for scientific, research or laboratory use; testing instruments for genetic test for scientific, research or laboratory use; laboratory instruments for extracting nucleic acid in a biological sample for scientific, research or laboratory use; microplates for laboratory experiment; test tubes for scientific, research or laboratory use; pipette tips for scientific, research or laboratory use; computers; computer programs for use in the field of scientific or laboratory analysis; computer program for use in the field of medical, clinical or diagnostic analysis; electronic publications; computer programs for genetic, cell and protein analysis; cell analysis apparatus and instruments for scientific, research or laboratory use; protein analysis apparatus and instruments for scientific, research or laboratory use
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Japan application number 2018-109296 filed 08/30/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Testing apparatus and instruments for scientific, research or laboratory use; Testing apparatus and instruments for scientific, research or laboratory use, namely, instruments for genetic analysis; laboratory apparatus and instruments; Laboratory apparatus and instruments, namely, instruments for genetic analysis; measuring or testing machines and instruments; Measuring or testing machines and instruments for use in genetic testing; laboratory apparatus and furniture for use in genetic testing; flow cytometers for scientific or laboratory use; Flow cytometers providing cell and particle analysis, detection, or counting for scientific and laboratory use; particle analyzers for scientific, research or laboratory use; genetic analyzer for scientific, research or laboratory use; particle counters for scientific, research or laboratory use; particle counters, namely, flow cytometers and image analyzers for scientific, research or laboratory use; genetic testing apparatus and instruments for scientific, research or laboratory use; Genetic testing apparatus and instruments for scientific, research or laboratory use, namely, computer software for scientific analysis of genetic sequences, and devices for detecting gene mutation; gene amplification analyzers for scientific, research or laboratory use; Gene amplification analyzers for scientific, research or laboratory use, namely for genetic analysis; DNA sequencer for scientific, research or laboratory use; DNA sequencer for scientific, research or laboratory use, namely,?devices and/or computer software reading DNA base sequencing; biological sample pretreatment apparatus and instruments for scientific, research or laboratory use; measurement sample preparation apparatus and instruments for scientific, research or laboratory use; pretreatment apparatus and instruments for genetic test for scientific, research or laboratory use; measurement sample preparation apparatus and instruments for scientific, research or laboratory use; testing instruments for genetic test for scientific, research or laboratory use; pretreatment apparatus and instruments for genetic testing for scientific, research or laboratory use; Testing instruments for genetic testing, namely, thermal cyclers and/or flow cytometers for scientific, research or laboratory use; laboratory instruments for extracting nucleic acid in a biological sample for scientific, research or laboratory use; microplates for laboratory experiment; test tubes for scientific, research or laboratory use; pipette tips for scientific, research or laboratory use; computer programs for use in the field of scientific or laboratory analysis; Computers; computer program for use in the field of medical, clinical or diagnostic analysis; Downloadable computer programs for use in the field of scientific and laboratory analysis; electronic publications; Downloadable computer program for use in the field of medical, clinical or diagnostic analysis; computer programs for genetic, cell and protein analysis; Electronic downloadable publications in the nature of magazines and manuals in the field of genetic testing; cell analysis apparatus and instruments for scientific, research or laboratory use; Downloadable computer programs for genetic, cell and protein analysis; protein analysis apparatus and instruments for scientific, research or laboratory use; Cell analysis apparatus and instruments for scientific, research or laboratory use, namely, flow cytometers, flow-based analyzers and image analyzers; Protein analysis apparatus and instruments for scientific, research or laboratory use, namely, flow cytometers, flow-based analyzers and image analyzersClass 009 for Testing apparatus and instruments for scientific, research or laboratory use, namely, instruments for genetic analysis; Laboratory apparatus and instruments, namely, instruments for genetic analysis; Measuring or testing machines and instruments for use in genetic testing; laboratory apparatus and furniture for use in genetic testing; Flow cytometers providing cell and particle analysis, detection, or counting for scientific and laboratory use; particle analyzers for scientific, research or laboratory use; genetic analyzer for scientific, research or laboratory use; particle counters, namely, flow cytometers and image analyzers for scientific, research or laboratory use; Genetic testing apparatus and instruments for scientific, research or laboratory use, namely, computer software for scientific analysis of genetic sequences, and devices for detecting gene mutation; Gene amplification analyzers for scientific, research or laboratory use, namely for genetic analysis; DNA sequencer for scientific, research or laboratory use, namely,?devices and/or computer software reading DNA base sequencing; biological sample pretreatment apparatus and instruments for scientific, research or laboratory use; measurement sample preparation apparatus and instruments for scientific, research or laboratory use; measurement sample preparation apparatus and instruments for scientific, research or laboratory use; pretreatment apparatus and instruments for genetic testing for scientific, research or laboratory use; Testing instruments for genetic testing, namely, thermal cyclers and/or flow cytometers for scientific, research or laboratory use; laboratory instruments for extracting nucleic acid in a biological sample for scientific, research or laboratory use; microplates for laboratory experiment; test tubes for scientific, research or laboratory use; pipette tips for scientific, research or laboratory use; Computers; Downloadable computer programs for use in the field of scientific and laboratory analysis; Downloadable computer program for use in the field of medical, clinical or diagnostic analysis; Electronic downloadable publications in the nature of magazines and manuals in the field of genetic testing; Downloadable computer programs for genetic, cell and protein analysis; Cell analysis apparatus and instruments for scientific, research or laboratory use, namely, flow cytometers, flow-based analyzers and image analyzers; Protein analysis apparatus and instruments for scientific, research or laboratory use, namely, flow cytometers, flow-based analyzers and image analyzers
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Japan application number 2018-109296 filed 08/30/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 010 for Medical and veterinary apparatus and instruments; testing apparatus and instruments for medical or clinical use; diagnostic apparatus and instruments for medical or clinical use; flow cytometers for medical or clinical use; particle analyzers for medical or clinical use; particle counters for medical or clinical use; genetic testing apparatus and instruments for medical or clinical use; gene amplification analyzers for medical or clinical use; DNA sequencer for medical or clinical use; biological sample pretreatment apparatus and instruments for medical or clinical use; measurement sample preparation apparatus and instruments for medical or clinical use; pretreatment apparatus and instruments for genetic test for medical or clinical use; pipettes for use in medical analysis; measuring apparatus and instruments for use in medical analysis; containers for use with samples for in vitro diagnosis; sampling bottles for use in medical analysis; disposable beakers for use in medical analysis; cell analysis apparatus and instruments for medical or clinical use; protein analysis apparatus and instruments for medical or clinical use
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Japan application number 2018-109296 filed 08/30/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Medical and veterinary apparatus and instruments; Medical and veterinary apparatus and instruments for use in sample analysis procedures; testing apparatus and instruments for medical or clinical use; Testing apparatus and instruments for medical or clinical use for diagnostic use, namely, apparatus for medical diagnostic testing in the fields of genetic testing; diagnostic apparatus and instruments for medical or clinical use; diagnostic apparatus and instruments for medical or clinical use for diagnosing gene mutation; flow cytometers for medical or clinical use; Flow cytometers for diagnostic medical or clinical use; particle analyzers for medical or clinical use; flow-based particle analyzers providing cell and particle analysis, detection, or counting for medical or clinical use; particle counters for medical or clinical use; particle counters, namely, flow cytometers or flow-based analyzers, for medical or clinical use; genetic testing apparatus and instruments for medical or clinical use; genetic testing apparatus and instruments for medical or clinical diagnostic use, namely, apparatus for medical diagnostic testing in the field of oncologygene analysis; gene amplification analyzers for medical or clinical use; gene amplification analyzers for detecting gene mutation for medical or clinical use; DNA sequencer for medical or clinical use; DNA sequencer for medical or clinical use, namely, for gene analysis; biological sample pretreatment apparatus and instruments for medical or clinical use; measurement sample preparation apparatus and instruments for medical or clinical use; pretreatment apparatus and instruments for genetic test for medical or clinical use; pretreatment apparatus and instruments for genetic testing for medical or clinical use, namely, body fluids including blood and/or tissue pretreatment apparatus and instruments for medical use; pipettes for use in medical analysis; Dropping pipettes for medical purposes; measuring apparatus and instruments for use in medical analysis; measuring apparatus and instruments for use in medical analysis for detecting gene mutation; containers for use with samples for in vitro diagnosis; medical containers especially adapted and designed for use with samples for in vitro diagnosis sold empty; sampling bottles for use in medical analysis; medical sampling bottles especially designed for use in medical analysis, namely, for collecting and/or preserving biological samples; disposable beakers for use in medical analysis; medical devices, namely, disposable beakers especially designed for use in medical analysis, namely, blood or tissue analysis, not for laboratory use; cell analysis apparatus and instruments for medical or clinical use; cell analysis apparatus and instruments for medical or clinical use, namely, flow cytometers, flow-based analyzers; protein analysis apparatus and instruments for medical or clinical use; protein analysis apparatus and instruments for medical or clinical use, namely, flow cytometers, flow-based analyzersClass 010 for Medical and veterinary apparatus and instruments for use in sample analysis procedures; Testing apparatus and instruments for medical or clinical use for diagnostic use, namely, apparatus for medical diagnostic testing in the fields of genetic testing; diagnostic apparatus and instruments for medical or clinical use for diagnosing gene mutation; Flow cytometers for diagnostic medical or clinical use; flow-based particle analyzers providing cell and particle analysis, detection, or counting for medical or clinical use; particle counters, namely, flow cytometers or flow-based analyzers, for medical or clinical use; genetic testing apparatus and instruments for medical or clinical diagnostic use, namely, apparatus for medical diagnostic testing in the field of oncologygene analysis; gene amplification analyzers for detecting gene mutation for medical or clinical use; DNA sequencer for medical or clinical use, namely, for gene analysis; biological sample pretreatment apparatus and instruments for medical or clinical use; measurement sample preparation apparatus and instruments for medical or clinical use; pretreatment apparatus and instruments for genetic testing for medical or clinical use, namely, body fluids including blood and/or tissue pretreatment apparatus and instruments for medical use; Dropping pipettes for medical purposes; measuring apparatus and instruments for use in medical analysis for detecting gene mutation; medical containers especially adapted and designed for use with samples for in vitro diagnosis sold empty; medical sampling bottles especially designed for use in medical analysis, namely, for collecting and/or preserving biological samples; medical devices, namely, disposable beakers especially designed for use in medical analysis, namely, blood or tissue analysis, not for laboratory use; cell analysis apparatus and instruments for medical or clinical use, namely, flow cytometers, flow-based analyzers; protein analysis apparatus and instruments for medical or clinical use, namely, flow cytometers, flow-based analyzers
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Japan application number 2018-109296 filed 08/30/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Scientific and technological research; scientific research, scientific analysis, and design relating thereto; design and development of diagnostic products and service; diagnostic and analytical testing services for others; clinical trial services; testing services to detect or quantify gene mutations, gene variations, gene amplification, gene loss and gene fusion; molecular biomarker testing services; DNA sequencing services; scientific and technological research to assist in the design, development and management of in-vitro diagnostic tests; testing services for research in gene analysis; testing services to assist in treatment decision-making in diseases; testing services for companion diagnostics; testing and research relating to cell analysis; testing and research relating to protein analysis; clinical laboratory testing services and reporting of results
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Japan application number 2018-109296 filed 08/30/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Scientific and technological research; Scientific and technological research in the fields of genetic testing and oncology; scientific research, scientific analysis, and design relating thereto; scientific research, scientific analysis, and design relating thereto in the field of genetic testing and oncology; design and development of diagnostic products and service; diagnostic and analytical testing services for others; diagnostic and analytical testing services for others, namely, performing genetic testing and diagnostic testing in the field of oncology; clinical trial services; testing services to detect or quantify gene mutations, gene variations, gene amplification, gene loss and gene fusion; testing services to detect or quantify gene mutations, gene variations, gene amplification, gene loss and gene fusion for scientific and research purposes; molecular biomarker testing services; molecular biomarker testing services for scientific and research purposes; DNA sequencing services; DNA sequencing services for scientific and research purposes; scientific and technological research to assist in the design, development and management of in-vitro diagnostic tests; scientific and technological research to assist in the design, development and management of in-vitro diagnostic tests for scientific and research purposes; testing services for research in gene analysis; testing services to assist in treatment decision-making in diseases; testing services to assist in treatment decision-making in diseases for scientific and research purposes; testing services for companion diagnostics; testing services for companion diagnostics for scientific and research purposes; testing and research relating to cell analysis; testing and research relating to cell analysis for scientific purposes; testing and research relating to protein analysis; Testing and research relating to protein analysis for scientific purposes; clinical laboratory testing services and reporting of results; clinical laboratory testing services and reporting of results for scientific and research purposes; providing online non-downloadable computer programs for use in the field of scientific and laboratory analysis; providing online non-downloadable computer program for use in the field of medical, clinical or diagnostic analysis; providing online non-downloadable computer programs for genetic, cell and protein analysisClass 042 for Scientific and technological research in the fields of genetic testing and oncology; scientific research, scientific analysis, and design relating thereto in the field of genetic testing and oncology; design and development of diagnostic products and service; diagnostic and analytical testing services for others, namely, performing genetic testing and diagnostic testing in the field of oncology; clinical trial services; testing services to detect or quantify gene mutations, gene variations, gene amplification, gene loss and gene fusion for scientific and research purposes; molecular biomarker testing services for scientific and research purposes; DNA sequencing services for scientific and research purposes; scientific and technological research to assist in the design, development and management of in-vitro diagnostic tests for scientific and research purposes; testing services for research in gene analysis; testing services to assist in treatment decision-making in diseases for scientific and research purposes; testing services for companion diagnostics for scientific and research purposes; testing and research relating to cell analysis for scientific purposes; Testing and research relating to protein analysis for scientific purposes; clinical laboratory testing services and reporting of results for scientific and research purposes; providing online non-downloadable computer programs for use in the field of scientific and laboratory analysis; providing online non-downloadable computer program for use in the field of medical, clinical or diagnostic analysis; providing online non-downloadable computer programs for genetic, cell and protein analysis
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Japan application number 2018-109296 filed 08/30/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 044 for Providing medical information; medical diagnostic testing and reporting services pertaining to the monitoring, diagnosis and treatment of disease; medical diagnostic services to assist in the design, development and management of in-vitro diagnostic tests; providing medical data/information to healthcare professionals; testing services to provide information regarding disease conditions and disease prevention; diagnostic services, namely, medical diagnostic testing for diseases and disorders
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Japan application number 2018-109296 filed 08/30/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Providing medical information; medical diagnostic testing and reporting services pertaining to the monitoring, diagnosis and treatment of disease; medical diagnostic services to assist in the design, development and management of in-vitro diagnostic tests; providing medical data/information to healthcare professionals; testing services to provide information regarding disease conditions and disease prevention; testing services to provide information regarding disease conditions and disease prevention for medical purposes; diagnostic services, namely, medical diagnostic testing for diseases and disordersClass 044 for Providing medical information; medical diagnostic testing and reporting services pertaining to the monitoring, diagnosis and treatment of disease; medical diagnostic services to assist in the design, development and management of in-vitro diagnostic tests; providing medical data/information to healthcare professionals; testing services to provide information regarding disease conditions and disease prevention for medical purposes; diagnostic services, namely, medical diagnostic testing for diseases and disorders
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Japan application number 2018-109296 filed 08/30/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

The applicant's current attorney information: Jennifer J. Theis. Jennifer J. Theis of BRINKS GILSON & LIONE, is located at

      P.O. BOX 10395
      CHICAGO, Illinois 60610
      US
The docket/reference number is 11333-958.

The phone number is 312-321-4200.

The fax number is 312-321-4299.

The email address is officeactions@brinksgilson.com

The applicants proposed attorney information: Jennifer J. Theis. Jennifer J. Theis of BRINKS GILSON & LIONE, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      P.O. BOX 10395
      CHICAGO, Illinois 60610
      United States
The docket/reference number is 11333-958.

The phone number is 312-321-4200.

The fax number is 312-321-4299.

The email address is officeactions@brinksgilson.com

Jennifer J. Theis 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: JENNIFER J. THEIS. JENNIFER J. THEIS of BRINKS GILSON & LIONE, is located at

      P.O. BOX 10395
      CHICAGO, Illinois 60610
      US
The docket/reference number is 11333-958.

The phone number is 312-321-4200.

The fax number is 312-321-4299.

The email address is officeactions@brinksgilson.com

The applicants proposed correspondence information: Jennifer J. Theis. Jennifer J. Theis of BRINKS GILSON & LIONE, is located at

      P.O. BOX 10395
      CHICAGO, Illinois 60610
      United States
The docket/reference number is 11333-958.

The phone number is 312-321-4200.

The fax number is 312-321-4299.

The email address is officeactions@brinksgilson.com; vmarino@brinksgilson.com; mmillas@brinksgilson.com; jtheis@brinksgilson.com

ADDITIONAL STATEMENTS
Miscellaneous Statement
Applicant respectfully informs the Examiner that the registration certificate associated with Japan Appln. No. 2018-109296 has not yet issued. Applicant requests that its application be suspended until a copy of the foreign registration certificate is available.


SIGNATURE(S)
Response Signature
Signature: /Virginia Wolk Marino/     Date: 10/16/2019
Signatory's Name: Virginia Wolk Marino
Signatory's Position: Attorney of record, Illinois bar member

Signatory's Phone Number: 3128403228

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:    JENNIFER J. THEIS
   BRINKS GILSON & LIONE
   
   P.O. BOX 10395
   CHICAGO, Illinois 60610
Mailing Address:    Jennifer J. Theis
   BRINKS GILSON & LIONE
   P.O. BOX 10395
   CHICAGO, Illinois 60610
        
Serial Number: 88281102
Internet Transmission Date: Wed Oct 16 10:57:56 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2019101610575683
0369-88281102-61020c16cc43091f20cdb5e864
4c603f3cb03afdeddd676ff6e138952532fa7c9-
N/A-N/A-20191016104102707488