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. 88367584 TISSUE-TEK GENIE(Standard Characters, see http://uspto.report/TM/88367584/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 Research and laboratory instruments and supplies, namely, fluorescent in situ hybridization instruments and related reagents, and in situ hybridization instruments and related reagents
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: Research and laboratory instruments and supplies, namely, fluorescent in situ hybridization instruments and related reagents, and in situ hybridization instruments and related reagents; Research and laboratory instruments and supplies, namely, fluorescent in situ hybridization instruments and related reagents and stains, and in situ hybridization instruments and related reagents and stains for applying reagents and stains to tissue samples, applying reagents and stains to tissue samples, handling tissue samples, heating or cooling tissue samples and automated immunohistochemistryClass 009 for Research and laboratory instruments and supplies, namely, fluorescent in situ hybridization instruments and related reagents and stains, and in situ hybridization instruments and related reagents and stains for applying reagents and stains to tissue samples, applying reagents and stains to tissue samples, handling tissue samples, heating or cooling tissue samples and automated immunohistochemistry
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 laboratory, autopsy and pathology equipment, namely, fluorescent in situ hybridization instruments and related reagents, and in situ hybridization instruments and related reagents
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 laboratory, autopsy and pathology equipment, namely, fluorescent in situ hybridization instruments and related reagents, and in situ hybridization instruments and related reagents; Diagnostic medical laboratory, autopsy and pathology equipment, namely, fluorescent in situ hybridization instruments and related reagents, and in situ hybridization instruments for processing biological samples for subsequent testing or examination for medical purposes and related reagentsClass 010 for Diagnostic medical laboratory, autopsy and pathology equipment, namely, fluorescent in situ hybridization instruments and related reagents, and in situ hybridization instruments for processing biological samples for subsequent testing or examination for medical purposes and related reagents
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 001 for Diagnostic reagents for scientific and research use; diagnostic stains for scientific and 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 hereby adds the following class of goods/services to the application:
New: Class 005 for Diagnostic reagents for medical use; diagnostic stains for medical 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.

The applicant's current attorney information: Alan M. Kindred. Alan M. Kindred of LEECH TISHMAN FUSCALDO & LAMPL, INC., is located at

      SUITE 210
      200 S. LOS ROBLES AVE.
      PASADENA, California 91101-2419
      US
The docket/reference number is SakuraGenie.

The phone number is 818-636-5933.

The fax number is 626-795-6321.

The email address is akindred@leechtishman.com

The applicants proposed attorney information: Alan M. Kindred. Alan M. Kindred of LEECH TISHMAN FUSCALDO & LAMPL, INC., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      SUITE 210
      200 S. LOS ROBLES AVE.
      PASADENA, California 91101-2419
      United States
The docket/reference number is SakuraGenie.

The phone number is 818-636-5933.

The fax number is 626-795-6321.

The email address is akindred@leechtishman.com

Alan M. Kindred 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: ALAN M. KINDRED. ALAN M. KINDRED of LEECH TISHMAN FUSCALDO & LAMPL, INC., is located at

      SUITE 210
      200 S. LOS ROBLES AVE.
      PASADENA, California 91101-2419
      US
The docket/reference number is SakuraGenie.

The phone number is 818-636-5933.

The fax number is 626-795-6321.

The email address is akindred@leechtishman.com; ipdocket@leechtishman.com

The applicants proposed correspondence information: Alan M. Kindred. Alan M. Kindred of LEECH TISHMAN FUSCALDO & LAMPL, INC., is located at

      SUITE 210
      200 S. LOS ROBLES AVE.
      PASADENA, California 91101-2419
      United States
The docket/reference number is SakuraGenie.

The phone number is 818-636-5933.

The fax number is 626-795-6321.

The email address is akindred@leechtishman.com; ipdocket@leechtishman.com

FEE(S)
Fee(s) in the amount of $550 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: /amkindred/     Date: 10/28/2019
Signatory's Name: Alan M. Kindred
Signatory's Position: Attorney of record, California Bar member

Signatory's Phone Number: 818-636-5933

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:    ALAN M. KINDRED
   LEECH TISHMAN FUSCALDO & LAMPL, INC.
   SUITE 210
   200 S. LOS ROBLES AVE.
   PASADENA, California 91101-2419
Mailing Address:    Alan M. Kindred
   LEECH TISHMAN FUSCALDO & LAMPL, INC.
   SUITE 210
   200 S. LOS ROBLES AVE.
   PASADENA, California 91101-2419
        
RAM Sale Number: 88367584
RAM Accounting Date: 10/28/2019
        
Serial Number: 88367584
Internet Transmission Date: Mon Oct 28 18:57:01 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201910281857018
41113-88367584-70043945637e48fdd1b4f6bd6
64ffe9b53ef21a48b6688cc8b6f666be39bb1632
-DA-57016813-20191028182009996468