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 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 gene 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 gene 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.

ADDITIONAL STATEMENTS
Miscellaneous Statement
Applicant is filing this response to follow up to its response filed on October 16, 2019, in order to correct the revised identifications of goods in Classes 9 and 10.


SIGNATURE(S)
Response Signature
Signature: /Virginia Wolk Marino/     Date: 10/17/2019
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.

        
Serial Number: 88281102
Internet Transmission Date: Thu Oct 17 09:15:40 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2019101709154078
1149-88281102-6108b90fdf784e6cd2f5c8a583
8b8ba01d52b4153c1ebaaee65f9dfaee67de5-N/
A-N/A-20191017090440983146