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. 88371898 VISBY(Standard Characters, see http://uspto.report/TM/88371898/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Applicant submits this Response to the Office Action dated June 22, 2019. In that Office Action, the Examiner required Applicant to clarify certain wording in the identification of goods. Applicant has amended the identification to clarify its goods, relying on ID manual entries 005-480, 010-737, and 010-1074 to address the Examiner's concerns. Applicant believes it has addressed all outstanding issues. Should the Examining Attorney have any questions, please contact the undersigned counsel.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 010 for Medical diagnostic devices; medical diagnostic devices for use in testing for infectious and non-infectious diseases and conditions; medical diagnostic devices for testing for bacterial infections, viral infections, sexually transmitted infections, and other types of infections and conditions; medical diagnostic devices for testing for non-infectious diseases and conditions
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 devices; Medical diagnostic devices for use in diagnosing infectious diseases, cancers, and neurological diseases and conditions; medical diagnostic devices for use in testing for infectious and non-infectious diseases and conditions; medical diagnostic devices for use in testing for infectious diseases, as well as non-infectious diseases and conditions in the nature of cancers and neurological diseases and conditions; medical diagnostic devices for testing for bacterial infections, viral infections, sexually transmitted infections, and other types of infections and conditions; medical diagnostic devices for testing for bacterial infections, viral infections, sexually transmitted infections, and infectious diseases; medical diagnostic devices for testing for non-infectious diseases and conditions; medical diagnostic devices for non-infectious diseases and conditions, namely, cancers and neurological diseases and conditionsClass 010 for Medical diagnostic devices for use in diagnosing infectious diseases, cancers, and neurological diseases and conditions; medical diagnostic devices for use in testing for infectious diseases, as well as non-infectious diseases and conditions in the nature of cancers and neurological diseases and conditions; medical diagnostic devices for testing for bacterial infections, viral infections, sexually transmitted infections, and infectious diseases; medical diagnostic devices for non-infectious diseases and conditions, namely, cancers and neurological diseases and conditions
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: Connie L. Ellerbach. Connie L. Ellerbach of FENWICK & WEST LLP, is located at

      SILICON VALLEY CENTER
      801 CALIFORNIA STREET
      MOUNTAIN VIEW, California 94041
      US

The email address is trademarks@fenwick.com

The applicants proposed attorney information: Connie L. Ellerbach. Other appointed attorneys are all other attorneys of Fenwick & West LLP. Connie L. Ellerbach of Fenwick & West LP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      Silicon Valley Center
      801 California Street
      Mountain View, California 94041
      United States

The phone number is (650) 988-8500.

The fax number is (650) 938-5200.

The email address is trademarks@fenwick.com

Connie L. Ellerbach 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: CONNIE L. ELLERBACH. CONNIE L. ELLERBACH of FENWICK & WEST LLP, is located at

      SILICON VALLEY CENTER
      801 CALIFORNIA STREET
      MOUNTAIN VIEW, California 94041
      US

The email address is trademarks@fenwick.com

The applicants proposed correspondence information: Connie L. Ellerbach. Connie L. Ellerbach of Fenwick & West LP, is located at

      Silicon Valley Center
      801 California Street
      Mountain View, California 94041
      United States

The phone number is (650) 988-8500.

The fax number is (650) 938-5200.

The email address is trademarks@fenwick.com

SIGNATURE(S)
Response Signature
Signature: /cle1087/     Date: 11/13/2019
Signatory's Name: Connie L. Ellerbach
Signatory's Position: Attorney of Record, California Bar member

Signatory's Phone Number: (650) 335-7663

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:    CONNIE L. ELLERBACH
   FENWICK & WEST LLP
   SILICON VALLEY CENTER
   801 CALIFORNIA STREET
   MOUNTAIN VIEW, California 94041
Mailing Address:    Connie L. Ellerbach
   Fenwick & West LP
   Silicon Valley Center
   801 California Street
   Mountain View, California 94041
        
Serial Number: 88371898
Internet Transmission Date: Wed Nov 13 18:45:35 EST 2019
TEAS Stamp: USPTO/ROA-X.XX.XXX.XXX-20191113184535377
039-88371898-700ebaca1ca113992b84f036fb5
e2c8cfc1d010ff32468e628480e5a4298e65-N/A
-N/A-20191113170254832883