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)

---

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. 88296351 E (Stylized and/or with Design, see http://uspto.report/TM/88296351/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 042 for Medical and scientific research, namely, cell detection and profiling in bodily fluids; medical testing, namely, cell detection and profiling in bodily fluids; medical diagnostic testing, namely, cell detection and profiling in bodily fluids
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: Medical and scientific research, namely, cell detection and profiling in bodily fluids; Medical and scientific research, namely, cell detection and profiling in bodily fluids in the field of cancer for discovery, diagnosis, prognosis and guiding treatment regimen; medical testing, namely, cell detection and profiling in bodily fluids; medical diagnostic testing, namely, cell detection and profiling in bodily fluidsClass 042 for Medical and scientific research, namely, cell detection and profiling in bodily fluids in the field of cancer for discovery, diagnosis, prognosis and guiding treatment regimen
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant hereby adds the following class of goods/services to the application:
New: Class 044 for Medical testing, namely, cell detection and profiling in bodily fluids; medical testing for diagnostic purposes, namely, cell detection and profiling in bodily fluids for personalized medical treatment purposes
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: Keith W. Medansky. Keith W. Medansky of DLA PIPER LLP (US), is located at

      P.O. BOX 64807
      CHICAGO, Illinois 60664-0807
      US
The docket/reference number is 369611-15.

The phone number is 312-368-4000.

The fax number is 312-236-7516.

The email address is ch.tm@dlapiper.com

The applicants proposed attorney information: Keith W. Medansky. Other appointed attorneys are Hilary H. Remijas, Michael A. Geller, Nicole A. Chaudhari and Eugenia Schontag. Keith W. Medansky of DLA PIPER LLP (US), is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      P.O. BOX 64807
      CHICAGO, Illinois 60664-0807
      United States
The docket/reference number is 369611-15.

The phone number is 312-368-4000.

The fax number is 312-236-7516.

The email address is ch.tm@dlapiper.com

Keith W. Medansky submitted the following statement: I attest that I am an 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).
The applicant's current correspondence information: KEITH W. MEDANSKY. KEITH W. MEDANSKY of DLA PIPER LLP (US), is located at

      P.O. BOX 64807
      CHICAGO, Illinois 60664-0807
      US
The docket/reference number is 369611-15.

The phone number is 312-368-4000.

The fax number is 312-236-7516.

The email address is ch.tm@dlapiper.com; deanne.vannatta@dlapiper.com

The applicants proposed correspondence information: Keith W. Medansky. Keith W. Medansky of DLA PIPER LLP (US), is located at

      P.O. BOX 64807
      CHICAGO, Illinois 60664-0807
      United States
The docket/reference number is 369611-15.

The phone number is 312-368-4000.

The fax number is 312-236-7516.

The email address is ch.tm@dlapiper.com; sheila.brown@dlapiper.com

FEE(S)
Fee(s) in the amount of $275 is being submitted.

SIGNATURE(S)
Declaration Signature
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice.
Response Signature
Signature: /MA Geller/     Date: 08/08/2019
Signatory's Name: Michael A. Geller
Signatory's Position: Attorney of record, Illinois bar member

Signatory's Phone Number: 312 368 2152

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:    KEITH W. MEDANSKY
   DLA PIPER LLP (US)
   
   P.O. BOX 64807
   CHICAGO, Illinois 60664-0807
Mailing Address:    Keith W. Medansky
   DLA PIPER LLP (US)
   P.O. BOX 64807
   CHICAGO, Illinois 60664-0807
        
RAM Sale Number: 88296351
RAM Accounting Date: 08/08/2019
        
Serial Number: 88296351
Internet Transmission Date: Thu Aug 08 18:09:56 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-201908081809561
42446-88296351-6107bda65f27e706b8691406e
a9203c628204d4998b6a196dfe7cac9512595-DA
-09556690-20190808140150669214