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. 88316854 FRANKLIN(Standard Characters, see http://uspto.report/TM/88316854/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 Molecular diagnostics apparatus, namely, computer software, computer programs, computer firmware, mobile device applications, web applications and associated instruction manuals all for use in controlling processes, inputting, amplifying, detecting, identifying, analyzing, modifying, transferring, classifying, evaluating, monitoring, displaying, mapping, reporting and storing molecular diagnostic and surveillance data and results for scientific and research purposes
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: Molecular diagnostics apparatus, namely, computer software, computer programs, computer firmware, mobile device applications, web applications and associated instruction manuals all for use in controlling processes, inputting, amplifying, detecting, identifying, analyzing, modifying, transferring, classifying, evaluating, monitoring, displaying, mapping, reporting and storing molecular diagnostic and surveillance data and results for scientific and research purposes; Molecular diagnostic apparatus, namely, downloadable and recorded computer software for controlling medical equipment used in molecular diagnostic testing processes and inputting, amplifying, detecting, identifying, analyzing, modifying, transferring, classifying, evaluating, monitoring, displaying, mapping, reporting and storing molecular diagnostic testing data for scientific and research purposes and printed instructional user manuals sold as a unitClass 009 for Molecular diagnostic apparatus, namely, downloadable and recorded computer software for controlling medical equipment used in molecular diagnostic testing processes and inputting, amplifying, detecting, identifying, analyzing, modifying, transferring, classifying, evaluating, monitoring, displaying, mapping, reporting and storing molecular diagnostic testing data for scientific and research purposes and printed instructional user manuals sold as a unit
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 Molecular diagnostic apparatus for medical, clinical and diagnostic purposes in the nature of detecting, identifying, classifying, analyzing, evaluating, monitoring, preparing, testing, mixing, heating and cooling nucleic acid, cells, genes and chemical, biochemical, biological, genetic, pathological, toxic materials and samples, whether naturally occurring and/or synthetically generated; diagnostic kits consisting primarily of probes, buffers and reagents for use in the identification, detection, classification, and analysis of diseases, toxic materials, and/or other microorganism targets along with the computer software for the sample preparation, amplification, detection and analysis of the targets
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: Molecular diagnostic apparatus for medical, clinical and diagnostic purposes in the nature of detecting, identifying, classifying, analyzing, evaluating, monitoring, preparing, testing, mixing, heating and cooling nucleic acid, cells, genes and chemical, biochemical, biological, genetic, pathological, toxic materials and samples, whether naturally occurring and/or synthetically generated; Medical molecular diagnostic apparatus for testing naturally-occurring and synthetically-generated nucleic acid, cells, genes and samples thereof; diagnostic kits consisting primarily of probes, buffers and reagents for use in the identification, detection, classification, and analysis of diseases, toxic materials, and/or other microorganism targets along with the computer software for the sample preparation, amplification, detection and analysis of the targets; diagnostic kits consisting primarily of probes, buffers and reagents for use in disease testing and also featuring downloadable and recorded computer software for preparing, amplifying, detecting and analyzing target samples of naturally-occurring and synthetically-generated nucleic acid, cells and genes associated with disease testingClass 010 for Medical molecular diagnostic apparatus for testing naturally-occurring and synthetically-generated nucleic acid, cells, genes and samples thereof; diagnostic kits consisting primarily of probes, buffers and reagents for use in disease testing and also featuring downloadable and recorded computer software for preparing, amplifying, detecting and analyzing target samples of naturally-occurring and synthetically-generated nucleic acid, cells and genes associated with disease 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.

Applicant hereby adds the following class of goods/services to the application:
New: Class 042 for Providing temporary use of on-line non-downloadable software for controlling medical equipment used in molecular diagnostic testing processes and inputting, amplifying, detecting, identifying, analyzing, modifying, transferring, classifying, evaluating, monitoring, displaying, mapping, reporting and storing molecular diagnostic testing data for scientific and research 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: Chelsea E. Carbone. Chelsea E. Carbone of WILSON SONSINI GOODRICH & ROSATI, is located at

      650 PAGE MILL ROAD
      PALO ALTO, California 94304-1050
      US
The docket/reference number is 52459-TM1002.

The phone number is 650-493-9300.

The fax number is 650-493-6811.

The email address is trademarks@wsgr.com

The applicants proposed attorney information: Chelsea E. Carbone. Other appointed attorneys are John L. Slafsky, Aaron D. Hendelman, Alyssa M. Worsham, Christine K. Au-Yeung, Brandon P. Leahy, Susanna P. Lichter, Ava R. Miller. Chelsea E. Carbone of WILSON SONSINI GOODRICH & ROSATI, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      650 PAGE MILL ROAD
      PALO ALTO, California 94304-1050
      United States
The docket/reference number is 52459-TM1002.

The phone number is 650-493-9300.

The fax number is 650-493-6811.

The email address is trademarks@wsgr.com

Chelsea E. Carbone 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: CHELSEA E. CARBONE. CHELSEA E. CARBONE of WILSON SONSINI GOODRICH & ROSATI, is located at

      650 PAGE MILL ROAD
      PALO ALTO, California 94304-1050
      US
The docket/reference number is 52459-TM1002.

The phone number is 650-493-9300.

The fax number is 650-493-6811.

The email address is trademarks@wsgr.com

The applicants proposed correspondence information: Chelsea E. Carbone. Chelsea E. Carbone of WILSON SONSINI GOODRICH & ROSATI, is located at

      650 PAGE MILL ROAD
      PALO ALTO, California 94304-1050
      United States
The docket/reference number is 52459-TM1002.

The phone number is 650-493-9300.

The fax number is 650-493-6811.

The email address is trademarks@wsgr.com

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

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Max Perelman/      Date: 10/09/2019
Signatory's Name: Max Perelman
Signatory's Position: Co-Founder / Business Lead
Signatory's Phone Number: Not Required


Response Signature
Signature: /Chelsea E. Carbone/     Date: 10/09/2019
Signatory's Name: Chelsea E. Carbone
Signatory's Position: Attorney of record, Washington 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:    CHELSEA E. CARBONE
   WILSON SONSINI GOODRICH & ROSATI
   
   650 PAGE MILL ROAD
   PALO ALTO, California 94304-1050
Mailing Address:    Chelsea E. Carbone
   WILSON SONSINI GOODRICH & ROSATI
   650 PAGE MILL ROAD
   PALO ALTO, California 94304-1050
        
RAM Sale Number: 88316854
RAM Accounting Date: 10/09/2019
        
Serial Number: 88316854
Internet Transmission Date: Wed Oct 09 21:34:30 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.X-20191009213430067
715-88316854-6104af06773d2ec286c761ecd1f
3f71ce71aadd115359cba1b5d4c68236f7cd9ff-
DA-34293449-20191003164348084092