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. 88294168 MYBLUEPRINT(Standard Characters, see http://uspto.report/TM/88294168/mark.png) has been amended as follows:

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

Please see the actual argument text attached within the Evidence section.

EVIDENCE
Evidence in the nature of Applicant's arguments. has been attached.
Original PDF file:
evi_97107162130-20191028182534858500_._MYBLUEPRINT__Class_042__-_Office_Action_Response_-_FINAL.pdf
Converted PDF file(s) ( 13 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for DNA analysis services for scientific research purposes; Computer services, namely, hosting and maintaining an on-line web site for others for DNA testing results; Providing scientific analysis in the field of genetics; reporting services based upon the results of laboratory testing in the field of genetics and DNA; providing online computer databases featuring information based on the results of genetic testing for research purposes; scientific research in the field of genetics; DNA testing services for non-medical use, namely, DNA testing for investigating and learning about genealogical and family history; Providing scientific analysis and informational reports based upon results of laboratory testing in the field of genetics; providing online computer databases that contain aggregated results of DNA testing; scientific research in the field of DNA testing; Providing scientific research analysis featuring informational reports based upon results of laboratory testing in the field of genetics; Application Service Provider featuring software for use in data management, data storage, data analysis, report generation, user identification, and membership identification, all in the fields of genetics and genetic testing; scientific research in the fields of genetics, genetic testing, genetic screening, genotyping, phenotyping, molecular analytics, and ancestry; providing online non-downloadable software allowing website users to generate information and conduct analyses based upon results of genetic testing
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: DNA analysis services for scientific research purposes; Computer services, namely, hosting and maintaining an on-line web site for others for DNA testing results; Providing scientific analysis in the field of genetics; reporting services based upon the results of laboratory testing in the field of genetics and DNA; providing online computer databases featuring information based on the results of genetic testing for research purposes; scientific research in the field of genetics; DNA testing services for non-medical use, namely, DNA testing for investigating and learning about genealogical and family history; Providing scientific analysis and informational reports based upon results of laboratory testing in the field of genetics; providing online computer databases that contain aggregated results of DNA testing; providing online computer databases that contain aggregated results of DNA testing for scientific purposes; scientific research in the field of DNA testing; Providing scientific research analysis featuring informational reports based upon results of laboratory testing in the field of genetics; Application Service Provider featuring software for use in data management, data storage, data analysis, report generation, user identification, and membership identification, all in the fields of genetics and genetic testing; scientific research in the fields of genetics, genetic testing, genetic screening, genotyping, phenotyping, molecular analytics, and ancestry; providing online non-downloadable software allowing website users to generate information and conduct analyses based upon results of genetic testingClass 042 for DNA analysis services for scientific research purposes; Computer services, namely, hosting and maintaining an on-line web site for others for DNA testing results; Providing scientific analysis in the field of genetics; reporting services based upon the results of laboratory testing in the field of genetics and DNA; providing online computer databases featuring information based on the results of genetic testing for research purposes; scientific research in the field of genetics; DNA testing services for non-medical use, namely, DNA testing for investigating and learning about genealogical and family history; Providing scientific analysis and informational reports based upon results of laboratory testing in the field of genetics; providing online computer databases that contain aggregated results of DNA testing for scientific purposes; scientific research in the field of DNA testing; Providing scientific research analysis featuring informational reports based upon results of laboratory testing in the field of genetics; Application Service Provider featuring software for use in data management, data storage, data analysis, report generation, user identification, and membership identification, all in the fields of genetics and genetic testing; scientific research in the fields of genetics, genetic testing, genetic screening, genotyping, phenotyping, molecular analytics, and ancestry; providing online non-downloadable software allowing website users to generate information and conduct analyses based upon results of genetic testing
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.

The applicant's current attorney information: Craig M. Spierer. Craig M. Spierer of HARRIS BEACH PLLC, is located at

      333 EARLE OVINGTON BLVD., SUITE 901
      UNIONDALE, New York 11553
      US

The phone number is 516-880-8379.

The fax number is 516-880-8483.

The email address is cspierer@harrisbeach.com

The applicants proposed attorney information: Craig M. Spierer. Other appointed attorneys are Hillary G. Link. Craig M. Spierer of HARRIS BEACH PLLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      333 EARLE OVINGTON BLVD., SUITE 901
      UNIONDALE, New York 11553
      United States

The phone number is 516-880-8379.

The fax number is 516-880-8483.

The email address is cspierer@harrisbeach.com

Craig M. Spierer 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: CRAIG M. SPIERER. CRAIG M. SPIERER of HARRIS BEACH PLLC, is located at

      333 EARLE OVINGTON BLVD., SUITE 901
      UNIONDALE, New York 11553
      US

The phone number is 516-880-8379.

The fax number is 516-880-8483.

The email address is cspierer@harrisbeach.com; ktangney@harrisbeach.com

The applicants proposed correspondence information: Craig M. Spierer. Craig M. Spierer of HARRIS BEACH PLLC, is located at

      333 EARLE OVINGTON BLVD., SUITE 901
      UNIONDALE, New York 11553
      United States

The phone number is 516-880-8379.

The fax number is 516-880-8483.

The email address is cspierer@harrisbeach.com; ktangney@harrisbeach.com; hlink@harrisbeach.com

SIGNATURE(S)
Response Signature
Signature: /Craig M. Spierer/     Date: 10/28/2019
Signatory's Name: Craig M. Spierer
Signatory's Position: Attorney of Record, NYS Bar Member

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:    CRAIG M. SPIERER
   HARRIS BEACH PLLC
   
   333 EARLE OVINGTON BLVD., SUITE 901
   UNIONDALE, New York 11553
Mailing Address:    Craig M. Spierer
   HARRIS BEACH PLLC
   333 EARLE OVINGTON BLVD., SUITE 901
   UNIONDALE, New York 11553
        
Serial Number: 88294168
Internet Transmission Date: Mon Oct 28 18:35:33 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201910281835338
16749-88294168-7004980b67a77fd75b8a09420
3cfce82294634437ed2877d9899cc7b768fac73e
d6-N/A-N/A-20191028182534858500