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. 88298187 IAP(Standard Characters, see http://uspto.report/TM/88298187/mark.png) has been amended as follows:

EVIDENCE
Evidence in the nature of The evidence consists of Applicant's response to the Office Action of April 10, 2019. has been attached.
Original PDF file:
evi_502421257-20191010121243538332_._ESX-T090_Response_Non-Final_OA_FINAL.pdf
Converted PDF file(s) ( 7 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 001 for Assays for research purposes; Biological and chemical reagents used for non-medical purposes, in vitro and in vivo scientific use, the testing of bodily fluids, and the detecting and analyzing of cells, proteins, small molecules, and nucleotides; Biological and chemical test kits for personal wellness; Biological and chemical test kits for the detection and identification of nucleic acids, namely, DNA and RNA in a sample
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: Assays for research purposes; Biological and chemical reagents used for non-medical purposes, in vitro and in vivo scientific use, the testing of bodily fluids, and the detecting and analyzing of cells, proteins, small molecules, and nucleotides; Biological and chemical reagents used for non-medical research or laboratory purposes, namely, in vitro and in vivo scientific use, the testing of bodily fluids, and the detecting and analyzing of cells, proteins, small molecules, and nucleotides; Biological and chemical test kits for personal wellness; Biological and chemical test kits comprised of biological, chemical, and diagnostic reagents for the detection and identification of nucleic acids, namely, DNA and RNA in a sample, for laboratory or research use; Biological and chemical test kits for the detection and identification of nucleic acids, namely, DNA and RNA in a sampleClass 001 for Assays for research purposes; Biological and chemical reagents used for non-medical research or laboratory purposes, namely, in vitro and in vivo scientific use, the testing of bodily fluids, and the detecting and analyzing of cells, proteins, small molecules, and nucleotides; Biological and chemical test kits comprised of biological, chemical, and diagnostic reagents for the detection and identification of nucleic acids, namely, DNA and RNA in a sample, for laboratory or research use
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 010 for Medical diagnostic apparatus for testing cells, tissue, biomolecules, proteins, small molecules, and nucleotides; Medical devices for obtaining bodily fluid samples; Medical diagnostic instruments for the analysis of bodily fluids; Medical apparatus for diagnostic use, including, medical apparatus for diagnostic testing of health conditions, diseases, or abnormalities, namely, in the fields of cancer, blood abnormalities, immune diseases, neurological diseases, cardiovascular diseases, infectious diseases, viral diseases, genetic diseases, and endocrine diseases, and other tissue-based diagnostic testing, cytology, and cell based testing; Medical apparatus, devices, and instruments for wellness testing, health condition testing, and healthcare testing, namely, point-of-care diagnostic devices, at-home diagnostic devices, and portable health monitoring devices that detect health conditions and diseases in the nature of cancers, blood abnormalities, immune diseases, neurological diseases, cardiovascular diseases, infectious diseases, viral diseases and genetic diseases; Medical apparatus, devices, and instruments for the detection and identification of nucleic acids, namely, DNA and RNA in a sample
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 diagnostic apparatus for testing cells, tissue, biomolecules, proteins, small molecules, and nucleotides; Medical devices for obtaining bodily fluid samples; Medical diagnostic instruments for the analysis of bodily fluids; Medical apparatus for diagnostic use, including, medical apparatus for diagnostic testing of health conditions, diseases, or abnormalities, namely, in the fields of cancer, blood abnormalities, immune diseases, neurological diseases, cardiovascular diseases, infectious diseases, viral diseases, genetic diseases, and endocrine diseases, and other tissue-based diagnostic testing, cytology, and cell based testing; Medical apparatus for diagnostic use, namely, medical apparatus for diagnostic testing of health conditions, diseases, or abnormalities, namely, cancer, blood abnormalities, immune diseases, neurological diseases, cardiovascular diseases, infectious diseases, viral diseases, genetic diseases, and endocrine diseases, and other tissue-based diagnostic testing, cytology, and cell based testing; Medical apparatus, devices, and instruments for wellness testing, health condition testing, and healthcare testing, namely, point-of-care diagnostic devices, at-home diagnostic devices, and portable health monitoring devices that detect health conditions and diseases in the nature of cancers, blood abnormalities, immune diseases, neurological diseases, cardiovascular diseases, infectious diseases, viral diseases and genetic diseases; Medical apparatus, devices, and instruments for the detection and identification of nucleic acids, namely, DNA and RNA in a sample; Medical apparatus, devices, and instruments for the detection and identification of nucleic acids, namely, DNA and RNA in a sample, in the nature of apparatus for DNA and RNA testing for medical purposes; Biological and chemical testing kits for personal wellness in the nature of diagnostic test kits consisting primarily of medical diagnostic reagents and assays for the detection of cancer, blood abnormalities, immune diseases, neurological diseases, cardiovascular diseases, infectious diseases, viral diseases, and genetic diseases; Medical diagnostic instruments for the analysis of body fluids in the nature of biological and chemical test kits for the detection and identification of nucleic acids, namely DNA and RNA in a sampleClass 010 for Medical diagnostic apparatus for testing cells, tissue, biomolecules, proteins, small molecules, and nucleotides; Medical devices for obtaining bodily fluid samples; Medical diagnostic instruments for the analysis of bodily fluids; Medical apparatus for diagnostic use, namely, medical apparatus for diagnostic testing of health conditions, diseases, or abnormalities, namely, cancer, blood abnormalities, immune diseases, neurological diseases, cardiovascular diseases, infectious diseases, viral diseases, genetic diseases, and endocrine diseases, and other tissue-based diagnostic testing, cytology, and cell based testing; Medical apparatus, devices, and instruments for wellness testing, health condition testing, and healthcare testing, namely, point-of-care diagnostic devices, at-home diagnostic devices, and portable health monitoring devices that detect health conditions and diseases in the nature of cancers, blood abnormalities, immune diseases, neurological diseases, cardiovascular diseases, infectious diseases, viral diseases and genetic diseases; Medical apparatus, devices, and instruments for the detection and identification of nucleic acids, namely, DNA and RNA in a sample, in the nature of apparatus for DNA and RNA testing for medical purposes; Biological and chemical testing kits for personal wellness in the nature of diagnostic test kits consisting primarily of medical diagnostic reagents and assays for the detection of cancer, blood abnormalities, immune diseases, neurological diseases, cardiovascular diseases, infectious diseases, viral diseases, and genetic diseases; Medical diagnostic instruments for the analysis of body fluids in the nature of biological and chemical test kits for the detection and identification of nucleic acids, namely DNA and RNA in a sample
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 proposes to amend the following class of goods/services in the application:
Current: Class 044 for Medical services; Medical assistance; Medical consultations; Medical counseling; Medical information; Healthcare services; Diagnostic services; Wellness services; Medical services, medical assistance, medical consultations, medical counseling, medical information, healthcare testing, diagnostic testing, and wellness services, namely, in the fields of cancer, blood abnormalities, immune diseases, neurological diseases, cardiovascular diseases, infectious diseases, viral diseases, genetic diseases, and other tissue-based diagnostic testing, cytology, and cell-based testing; Medical services for the detection and identification of cells, proteins, small molecules, and nucleic acids in a sample
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 services; Medical assistance; Medical consultations; Medical counseling; Medical information; Healthcare services; Healthcare services in the field of digital healthcare services; Diagnostic services; Diagnostic services, namely, medical testing for diagnostic purposes; Wellness services; Wellness services, namely, providing wellness information; Medical services, medical assistance, medical consultations, medical counseling, medical information, healthcare testing, diagnostic testing, and wellness services, namely, in the fields of cancer, blood abnormalities, immune diseases, neurological diseases, cardiovascular diseases, infectious diseases, viral diseases, genetic diseases, and other tissue-based diagnostic testing, cytology, and cell-based testing; Medical services, medical assistance, medical consultations, medical counseling, medical information, healthcare testing, diagnostic testing, and wellness services, all in the fields of cancer, blood abnormalities, immune diseases, neurological diseases, cardiovascular diseases, infectious diseases, viral diseases, genetic diseases, and other tissue-based diagnostic testing, cytology, and cell-based testing; Medical services for the detection and identification of cells, proteins, small molecules, and nucleic acids in a sample; Medical testing services for the detection and identification of cells, proteins, small molecules, and nucleic acids in a sampleClass 044 for Medical services; Medical assistance; Medical consultations; Medical counseling; Medical information; Healthcare services in the field of digital healthcare services; Diagnostic services, namely, medical testing for diagnostic purposes; Wellness services, namely, providing wellness information; Medical services, medical assistance, medical consultations, medical counseling, medical information, healthcare testing, diagnostic testing, and wellness services, all in the fields of cancer, blood abnormalities, immune diseases, neurological diseases, cardiovascular diseases, infectious diseases, viral diseases, genetic diseases, and other tissue-based diagnostic testing, cytology, and cell-based testing; Medical testing services for the detection and identification of cells, proteins, small molecules, and nucleic acids in a sample
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: Julian D. Gonzalez. Julian D. Gonzalez, is located at

      1 DEERPARK DRIVE, SUITE R
      MONMOUTH JUNCTION, New Jersey 08852
      US
The docket/reference number is ESX-T090.

The phone number is 732-274-1020.

The fax number is 732-274-1021.

The email address is esxip@essenlix.com

The applicants proposed attorney information: Julian D. Gonzalez. Julian D. Gonzalez, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      1 DEERPARK DRIVE, SUITE R
      MONMOUTH JUNCTION, New Jersey 08852
      United States
The docket/reference number is ESX-T090.

The phone number is 732-274-1020.

The fax number is 732-274-1021.

The email address is esxip@essenlix.com

Julian D. Gonzalez 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: JULIAN D. GONZALEZ. JULIAN D. GONZALEZ, is located at

      1 DEERPARK DRIVE, SUITE R
      MONMOUTH JUNCTION, New Jersey 08852
      US
The docket/reference number is ESX-T090.

The phone number is 732-274-1020.

The fax number is 732-274-1021.

The email address is esxip@essenlix.com; julian_gonzalez@essenlix.com

The applicants proposed correspondence information: Julian D. Gonzalez. Julian D. Gonzalez, is located at

      1 DEERPARK DRIVE, SUITE R
      MONMOUTH JUNCTION, New Jersey 08852
      United States
The docket/reference number is ESX-T090.

The phone number is 732-274-1020.

The fax number is 732-274-1021.

The email address is esxip@essenlix.com; julian_gonzalez@essenlix.com

SIGNATURE(S)
Response Signature
Signature: /Julian D. Gonzalez/     Date: 10/10/2019
Signatory's Name: Julian D. Gonzalez
Signatory's Position: Attorney of Record, New Jersey bar member

Signatory's Phone Number: 732-274-1020

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:    JULIAN D. GONZALEZ
   
   
   1 DEERPARK DRIVE, SUITE R
   MONMOUTH JUNCTION, New Jersey 08852
Mailing Address:    Julian D. Gonzalez
   1 DEERPARK DRIVE, SUITE R
   MONMOUTH JUNCTION, New Jersey 08852
        
Serial Number: 88298187
Internet Transmission Date: Thu Oct 10 12:18:08 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20191010121808644
651-88298187-610f8dc69f4767f24cdf7d18110
93cc25f361bfca55a9efc7f0cef260442193f9-N
/A-N/A-20191010121243538332