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. 88361397 SPINIT(Standard Characters, see http://uspto.report/TM/88361397/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 005 for Diagnostic preparations for medical purposes; diagnostic preparations for medical and veterinary purposes; medical diagnostic reagents for in-vitro use
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.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 008316812 registered 01/21/2010 with a renewal date of __________ and an expiration date of 05/22/2019 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed: Class 005 for Diagnostic preparations for medical purposes; diagnostic preparations for medical and veterinary purposes; medical diagnostic reagents for in-vitro 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.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 008316812 registered 01/21/2010 with a renewal date of 05/23/2019 and an expiration date of 05/22/2029 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU0-4162356-143706214_._EU_Renewal_-_SpinIT.PDF
Converted PDF file(s) ( 1 page)
Foreign Registration-1

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 In-vitro diagnostic testing apparatus for testing blood and other bodily fluids and tissues; medical apparatus for diagnostic purposes for testing blood and other bodily fluids and tissues; apparatus for medical diagnostic purposes for testing blood and other bodily fluids and tissues; medical apparatus for performing in-vitro diagnostic tests for testing blood and other bodily fluids and tissues; biosensors for use in medical diagnostic tests of biological samples for detecting infectious diseases; testing apparatus for medical and diagnostic purposes for testing blood and other bodily fluids and tissues; disposable microfludic cartridges for medical use; test plates for use in medical diagnostic tests of biological samples; parts and fittings
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.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 008316812 registered 01/21/2010 with a renewal date of __________ and an expiration date of 05/22/2019 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: In-vitro diagnostic testing apparatus for testing blood and other bodily fluids and tissues; medical apparatus for diagnostic purposes for testing blood and other bodily fluids and tissues; apparatus for medical diagnostic purposes for testing blood and other bodily fluids and tissues; medical apparatus for performing in-vitro diagnostic tests for testing blood and other bodily fluids and tissues; biosensors for use in medical diagnostic tests of biological samples for detecting infectious diseases; testing apparatus for medical and diagnostic purposes for testing blood and other bodily fluids and tissues; disposable microfludic cartridges for medical use; disposable microfludic cartridges for analysis of blood and other bodily fluids and tissues for medical use; test plates for use in medical diagnostic tests of biological samples; parts and fittings; structural parts and fittingsClass 010 for In-vitro diagnostic testing apparatus for testing blood and other bodily fluids and tissues; medical apparatus for diagnostic purposes for testing blood and other bodily fluids and tissues; apparatus for medical diagnostic purposes for testing blood and other bodily fluids and tissues; medical apparatus for performing in-vitro diagnostic tests for testing blood and other bodily fluids and tissues; biosensors for use in medical diagnostic tests of biological samples for detecting infectious diseases; testing apparatus for medical and diagnostic purposes for testing blood and other bodily fluids and tissues; disposable microfludic cartridges for analysis of blood and other bodily fluids and tissues for medical use; test plates for use in medical diagnostic tests of biological samples; structural parts and fittings
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.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 008316812 registered 01/21/2010 with a renewal date of 05/23/2019 and an expiration date of 05/22/2029 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU1-4162356-143706214_._EU_Renewal_-_SpinIT.PDF
Converted PDF file(s) ( 1 page)
Foreign Registration-1

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.

The applicant's current attorney information: David A. Bell. David A. Bell of HAYNES AND BOONE, LLP, is located at

      2323 VICTORY AVENUE, SUITE 700
      DALLAS, Texas 75219
      US
The docket/reference number is 21573.

The phone number is 214-651-5248.

The fax number is 214-200-0853.

The email address is ipdocketing@haynesboone.com

The applicants proposed attorney information: David A. Bell. Other appointed attorneys are Purvi Patel Albers, Rob LeBlanc, Jeff Becker, Tiffany Ferris, Mike McArthur, Katharyn Zagorin, Ellie Sowanick. David A. Bell of HAYNES AND BOONE, LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      2323 VICTORY AVENUE, SUITE 700
      DALLAS, Texas 75219
      United States
The docket/reference number is 21573.129.

The phone number is 214-651-5248.

The fax number is 214-200-0853.

The email address is ipdocketing@haynesboone.com

David A. Bell 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: DAVID A. BELL. DAVID A. BELL of HAYNES AND BOONE, LLP, is located at

      2323 VICTORY AVENUE, SUITE 700
      DALLAS, Texas 75219
      US
The docket/reference number is 21573.

The phone number is 214-651-5248.

The fax number is 214-200-0853.

The email address is ipdocketing@haynesboone.com

The applicants proposed correspondence information: David A. Bell. David A. Bell of HAYNES AND BOONE, LLP, is located at

      2323 VICTORY AVENUE, SUITE 700
      DALLAS, Texas 75219
      United States
The docket/reference number is 21573.129.

The phone number is 214-651-5248.

The fax number is 214-200-0853.

The email address is ipdocketing@haynesboone.com; david.bell@haynesboone.com; laura.johnson@haynesboone.com

SIGNATURE(S)
Declaration Signature
Original PDF file:
HS_4162356-143706214_._spinit_trademark_in_the_US_bona_fide_declaration.pdf
Converted PDF file(s) (1 page)
Signature File1
Signatory's Name: Daniel Neves
Signatory's Position: Chief Marketing Officer

Response Signature
Signature: /David A. Bell/     Date: 12/16/2019
Signatory's Name: David Bell
Signatory's Position: Attorney of record, Texas Bar member

Signatory's Phone Number: 214-651-5248

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:    DAVID A. BELL
   HAYNES AND BOONE, LLP
   
   2323 VICTORY AVENUE, SUITE 700
   DALLAS, Texas 75219
Mailing Address:    David A. Bell
   HAYNES AND BOONE, LLP
   2323 VICTORY AVENUE, SUITE 700
   DALLAS, Texas 75219
        
Serial Number: 88361397
Internet Transmission Date: Mon Dec 16 16:08:15 EST 2019
TEAS Stamp: USPTO/ROA-X.XX.XXX.X-2019121616081565287
8-88361397-7000fb978a6c226fa462252ca750d
8d59ab6c2cf7058c58cab5516341ff8538-N/A-N
/A-20191216143706214431