TEAS Response to Suspension Inquiry

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 1822 (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 1822 (Rev 10/2011)

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

Response to Suspension Inquiry or Letter of Suspension

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:
FOREIGN REGISTRATION
The applicant herein submits a digitized image of a copy, a certification, or a certified copy of a registration in the applicant's country of origin showing that the mark has been registered in that country, and that the registration is in full force and effect. If the foreign registration is not in English, an English translation thereof is being submitted. The applicant hereby requests removal of this application from suspension for further action by the examining attorney.

Filing Basis: Section 44(e), Based on Foreign Registration: A copy of Japan registration number 6200793 registered 11/22/2019, with a renewal date of __________ and an expiration date of __________ , and translation thereof (if appropriate), is attached in accordance with 15 U.S.C. Section 1126(e), as amended.
Original PDF file:
FR_98243208152-143458063_ ._1_CertificateRegistrati on_JP_6200793.pdf
Converted PDF file(s) (11 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5
Foreign Registration-6
Foreign Registration-7
Foreign Registration-8
Foreign Registration-9
Foreign Registration-10
Foreign Registration-11

The foreign registration that is the basis of the U.S. application under Section 44(e) of the Trademark Act (15 U.S.C. Section 1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.
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, 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
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Japan application number 2018-109296 filed 08/30/2018]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [ Japan registration number __________ registered __________ with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.

Proposed: Class 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: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority 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.

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [ Japan registration number 6200793 registered 11/22/2019 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.
Original PDF file:
FRU0-98243208152-14345806 3_._1_CertificateRegistra tion_JP_6200793.pdf
Converted PDF file(s) (11 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5
Foreign Registration-6
Foreign Registration-7
Foreign Registration-8
Foreign Registration-9
Foreign Registration-10
Foreign Registration-11

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 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
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Japan application number 2018-109296 filed 08/30/2018]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [ Japan registration number __________ registered __________ with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.

Proposed: Class 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: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority 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.

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [ Japan registration number 6200793 registered 11/22/2019 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.
Original PDF file:
FRU1-98243208152-14345806 3_._1_CertificateRegistra tion_JP_6200793.pdf
Converted PDF file(s) (11 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5
Foreign Registration-6
Foreign Registration-7
Foreign Registration-8
Foreign Registration-9
Foreign Registration-10
Foreign Registration-11

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

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 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
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Japan application number 2018-109296 filed 08/30/2018]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [ Japan registration number __________ registered __________ with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.

Proposed: Class 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: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority 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.

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and will submit a copy of [ Japan registration number 6200793 registered 11/22/2019 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate, before the application may proceed to registration. 15 U.S.C. Section 1126(e), as amended.

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

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, 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
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Japan application number 2018-109296 filed 08/30/2018]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [ Japan registration number __________ registered __________ with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.

Proposed: Class 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: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority 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.

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [ Japan registration number 6200793 registered 11/22/2019 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.
Original PDF file:
FRU3-98243208152-14345806 3_._1_CertificateRegistra tion_JP_6200793.pdf
Converted PDF file(s) (11 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5
Foreign Registration-6
Foreign Registration-7
Foreign Registration-8
Foreign Registration-9
Foreign Registration-10
Foreign Registration-11

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 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
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Japan application number 2018-109296 filed 08/30/2018]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [ Japan registration number __________ registered __________ with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.

Proposed: Class 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: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority 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.

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [ Japan registration number 6200793 registered 11/22/2019 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.
Original PDF file:
FRU4-98243208152-14345806 3_._1_CertificateRegistra tion_JP_6200793.pdf
Converted PDF file(s) (11 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5
Foreign Registration-6
Foreign Registration-7
Foreign Registration-8
Foreign Registration-9
Foreign Registration-10
Foreign Registration-11

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 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
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Japan application number 2018-109296 filed 08/30/2018]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [ Japan registration number __________ registered __________ with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.

Proposed: Class 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: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority 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.

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [ Japan registration number 6200793 registered 11/22/2019 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.
Original PDF file:
FRU5-98243208152-14345806 3_._1_CertificateRegistra tion_JP_6200793.pdf
Converted PDF file(s) (11 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5
Foreign Registration-6
Foreign Registration-7
Foreign Registration-8
Foreign Registration-9
Foreign Registration-10
Foreign Registration-11

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

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 for medical purposes; diagnostic services, namely, medical diagnostic testing for diseases and disorders
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Japan application number 2018-109296 filed 08/30/2018]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [ Japan registration number __________ registered __________ with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.

Proposed: 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 for medical purposes; diagnostic services, namely, medical diagnostic testing for diseases and disorders
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority 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.

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [ Japan registration number 6200793 registered 11/22/2019 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.
Original PDF file:
FRU6-98243208152-14345806 3_._1_CertificateRegistra tion_JP_6200793.pdf
Converted PDF file(s) (11 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5
Foreign Registration-6
Foreign Registration-7
Foreign Registration-8
Foreign Registration-9
Foreign Registration-10
Foreign Registration-11

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.


APPLICANT AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Sysmex Corporation, a corporation of Japan, having an address of
      1-5-1, Wakinohama-Kaigandori, Chuo-ku
      Kobe, 651-0073
      Japan
Proposed: Sysmex Corporation, a corporation of Japan, having an address of
      1-5-1, Wakinohama-Kaigandori, Chuo-ku
      Kobe, 651-0073
      Japan
      Email Address: XXXX
Correspondence Information (current):
      Jennifer J. Theis
      PRIMARY EMAIL FOR CORRESPONDENCE: officeactions@brinksgilson.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): vmarino@brinksgilson.com; mmillas@brinksgilson.com; jtheis@brinksgilson.com
Correspondence Information (proposed):
      Jennifer J. Theis
      PRIMARY EMAIL FOR CORRESPONDENCE: officeactions@brinksgilson.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): jtheis@brinksgilson.com; saholmes@brinksgilson.com

The docket/reference number is 11333-958.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the applicant owner/holder and the applicant owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

Response Suspension Inquiry Signature
Signature: /Jennifer J. Theis/     Date: 04/16/2020
Signatory's Name: Jennifer J. Theis
Signatory's Position: Attorney of record, Illinois bar member
Signatory's Phone Number: 312-321-4200

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
Mailing Address:    Jennifer J. Theis
   BRINKS GILSON & LIONE
   P.O. BOX 10395
   CHICAGO, Illinois 60610
        
Serial Number: 88281102
Internet Transmission Date: Thu Apr 16 14:58:41 ET 2020
TEAS Stamp: USPTO/RSI-XX.XXX.XXX.XXX-202004161458417
93167-88281102-710a0a9eaad2052ea9a3d4d2c
c38127564148d655d03dbb2ac2d18741c27d12a1
-N/A-N/A-20200416143458063433