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. 88471422 CASTLE BIOSCIENCES(Standard Characters, see http://uspto.report/TM/88471422/mark.png) has been amended as follows:

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

Applicant has more specifically identified the services as being for testing using genetic expression profiling and gene sequencing and narrowed the broader description of ?providing medical information? and tailored the description to the specific kind of information relating to metastasis and diagnosis support that affect treatment plans by doctors. Further, the description makes clear that it is restricted to a channel of trade and class of user, namely doctors, and not for end user patients or consumers. The cited references are for services that are not similar to the subject application and are provided to a different channel of commerce. Applicants services are directed to doctors and oncologists, whereas the cited marks are for services directly to individual consumers and patients. ?CASTLE DENTAL? and ?CASTLE DENTAL CENTERS? are dental group practices. There is no indication that they provide genetic test services for risk of metastasis or diagnostic support services for cancer based on gene expression profiling and gene sequencing. Rather, they provide traditional dental services such as oral exams, cleaning, bridges, fillings crowns, teeth straightening devices. See Castledental.com Castle Dental provide services directly to end user consumers as dental patients. ?CASTLE OF CARE? is the name of the Sanford Hospital systems? children?s hospital in Sioux Falls, SD. It is a physical facility that was recently built with a castle theme (turrets, etc). They provide traditional medical services but do not offer genetic tests under this mark for adult skin or other cancers. ?CASTLE CONNOLLY TOP DOCTORS? and ?CASTLE CONNOLLY? are an on-line website collection group ? similar to HealthGrades or other on-line websites / media groups that consolidate web information. They offer broad medical information but do not offer genetic expression profiling and gene sequencing testing for dermatologic cancers to oncologists and other physicians under this mark. There is no likelihood of confusion given the disparity of the services being offered and considering the target for those services. Although disclaimer is required, the addition of Biosciences to the mark is relevant as it communicates more than a generic reference to biology, but rather to an entity that is involved in a scientifically derived service, rather than patient oriented services.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 044 for Providing medical diagnostic testing services for diagnostic and prognostic purposes; and providing medical information
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 11/15/2008 and first used in commerce at least as early as 11/15/2008 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Providing medical diagnostic testing services for diagnostic and prognostic purposes; Providing medical diagnostic testing services to dermatologists, surgeons, and oncologists for diagnostic and prognostic purposes for dermatologic cancers, namely genetic expression profiling and gene sequencing; and providing medical information; and providing information for risk of metastasis and diagnostic support thereby effecting changes in treatment plansClass 044 for Providing medical diagnostic testing services to dermatologists, surgeons, and oncologists for diagnostic and prognostic purposes for dermatologic cancers, namely genetic expression profiling and gene sequencing; and providing information for risk of metastasis and diagnostic support thereby effecting changes in treatment plans
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 11/15/2008 and first used in commerce at least as early as 11/15/2008 , and is now in use in such commerce.
The applicant's current attorney information: James D. Petruzzi. James D. Petruzzi of THE PETRUZZI LAW FIRM, is located at

      4900 WOODWAY DR., STE 745
      HOUSTON, Texas 77056
      US

The phone number is 713-840-9993.

The fax number is 7138779100.

The email address is jdpetruzzi@gmail.com

The applicants proposed attorney information: James D. Petruzzi. James D. Petruzzi of THE PETRUZZI LAW FIRM, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      4900 WOODWAY DR., STE 745
      HOUSTON, Texas 77056
      United States

The phone number is 713-840-9993.

The fax number is 7138779100.

The email address is jdpetruzzi@gmail.com

James D. Petruzzi 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: JAMES D. PETRUZZI. JAMES D. PETRUZZI of THE PETRUZZI LAW FIRM, is located at

      4900 WOODWAY DR., STE 745
      HOUSTON, Texas 77056
      US

The phone number is 713-840-9993.

The fax number is 7138779100.

The email address is jdpetruzzi@gmail.com; jim@petruzzi.com

The applicants proposed correspondence information: James D. Petruzzi. James D. Petruzzi of THE PETRUZZI LAW FIRM, is located at

      4900 WOODWAY DR., STE 745
      HOUSTON, Texas 77056
      United States

The phone number is 713-840-9993.

The fax number is 7138779100.

The email address is jdpetruzzi@gmail.com; jim@petruzzi.com

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use BIOSCIENCES apart from the mark as shown.


SIGNATURE(S)
Response Signature
Signature: /James D. Petruzzi/     Date: 09/24/2019
Signatory's Name: James D. Petruzzi
Signatory's Position: Attorney of record, Texas 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:    JAMES D. PETRUZZI
   THE PETRUZZI LAW FIRM
   
   4900 WOODWAY DR., STE 745
   HOUSTON, Texas 77056
Mailing Address:    James D. Petruzzi
   THE PETRUZZI LAW FIRM
   4900 WOODWAY DR., STE 745
   HOUSTON, Texas 77056
        
Serial Number: 88471422
Internet Transmission Date: Tue Sep 24 11:17:48 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2019092411174800
6609-88471422-610d0f9d4ae6a497c11998ee59
f6db5936f31e37593a61c42d1dfeb8a937643e80
-N/A-N/A-20190924110151950629