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. 88473846 EPREDIA(Standard Characters, see http://uspto.report/TM/88473846/mark.png) has been amended as follows:

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

There is no likelihood of confusion with the Cited Registrations.

In light of the amendments to the description of goods, Applicant respectfully requests that the partial 2(d) objection be withdrawn.

Applicant submits that it has addressed all issues raised in the Office Action and respectfully requests that the Trademark Office withdraw its pending refusal and allow Applicant’s application to proceed to publication. If the Examining Attorney has any questions or comments, Applicant respectfully requests that the Examining Attorney contact the undersigned representative.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 001 for histology and cytology and haematology and microbiology supplies, namely, antibodies and detection kits therefor and reagents therefor for scientific and medical research; laboratory products, namely, histology and cytology clearing agents, decalcifying solutions, dehydration reagents, fixative solutions, gels for specimen processing, microscope immersion oil, mounting mediums for slides, solutions used in staining, stain buffers, stain removers, stains, tissue freezing medium, tissue marking dyes, and waste neutralizing solutions; solvents for laboratory use, namely, acetones, ethyl alcohol, formaldehydes, isopropyl alcohol, methyl alcohol and xylenes; chemicals, namely, a granular powder for use in the clean-up of formaldehyde spills for laboratory and hospital use; adhesive bands for microtomy; cryogenic compounds for fast freezing of tissue
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: histology and cytology and haematology and microbiology supplies, namely, antibodies and detection kits therefor and reagents therefor for scientific and medical research; histology and cytology and haematology and microbiology supplies, namely, detection kits containing monoclonal and polyclonal antibodies and reagents therefor for scientific and medical research; laboratory products, namely, histology and cytology clearing agents, decalcifying solutions, dehydration reagents, fixative solutions, gels for specimen processing, microscope immersion oil, mounting mediums for slides, solutions used in staining, stain buffers, stain removers, stains, tissue freezing medium, tissue marking dyes, and waste neutralizing solutions; laboratory products, namely, histology and cytology clearing agents, decalcifying solutions, dehydration reagents, fixative solutions, gels for specimen processing, microscope immersion oil, mounting mediums for slides, solutions used in staining, stain buffers, stain removers, stains, tissue freezing medium, tissue marking dyes, and waste neutralizing solutions for medical and scientific purposes; solvents for laboratory use, namely, acetones, ethyl alcohol, formaldehydes, isopropyl alcohol, methyl alcohol and xylenes; chemicals, namely, a granular powder for use in the clean-up of formaldehyde spills for laboratory and hospital use; adhesive bands for microtomy; adhesive bands for microtomy in the nature of specimen adhesive; cryogenic compounds for fast freezing of tissueClass 001 for histology and cytology and haematology and microbiology supplies, namely, detection kits containing monoclonal and polyclonal antibodies and reagents therefor for scientific and medical research; laboratory products, namely, histology and cytology clearing agents, decalcifying solutions, dehydration reagents, fixative solutions, gels for specimen processing, microscope immersion oil, mounting mediums for slides, solutions used in staining, stain buffers, stain removers, stains, tissue freezing medium, tissue marking dyes, and waste neutralizing solutions for medical and scientific purposes; solvents for laboratory use, namely, acetones, ethyl alcohol, formaldehydes, isopropyl alcohol, methyl alcohol and xylenes; chemicals, namely, a granular powder for use in the clean-up of formaldehyde spills for laboratory and hospital use; adhesive bands for microtomy in the nature of specimen adhesive; cryogenic compounds for fast freezing of tissue
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 003 for nonmedical hand cream; soaps; detergents; abrasive pastes for microtomy
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: nonmedical hand cream; soaps; abrasive pastes for microtomy; detergentsClass 003 for nonmedical hand cream; abrasive pastes for microtomy
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 005 for antibacterial handwash; detergents for medical purposes; sanitary substances, namely, soap, hand cream, disinfectants; diagnostic reagents for clinical and medical laboratory use; histology aerosol freezing agent for clinical diagnostics
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: antibacterial handwash; detergents for medical purposes; sanitary substances, namely, soap, hand cream, disinfectants; sanitary substances, namely, medicated hand cream, disinfectants; diagnostic reagents for clinical and medical laboratory use; histology aerosol freezing agent for clinical diagnosticsClass 005 for antibacterial handwash; detergents for medical purposes; sanitary substances, namely, medicated hand cream, disinfectants; diagnostic reagents for clinical and medical laboratory use; histology aerosol freezing agent for clinical diagnostics
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 009 for laboratory equipment, namely, clamps and frames and connectors, tissue processors, microscope slides and storage boxes, cover glass, chamber slides and custom glass, slide and cassette storage units, slide covers, slide holders, specimen adhesive, specimen slides; optical lenses; apparatus and scientific instruments, namely, chromatography columns, equipment for grinding, cutting and polishing, microtomes and their parts; accessories for microtomes, namely, instruments to insert or to color sections and samples; microtome blades and blade dispensers; optical instruments; glassware for laboratory and scientific use; histology and cytology and haematology and microbiology equipment, apparatus and supplies, namely, base molds, cassettes, control slides, cutting board units and associated mounting pins, marking pens, containers and closures therefor for transporting biological fluids and specimens, mold release compounds, molds, paraffin handling equipment, disposable microtome blades; tissue freezing medium containers; disposable sample chambers for use in centrifuges; funnels for use in testing samples of body fluids; parts and fittings therefor; centrifugal machines; apparatus and instruments for depositing cells or other goods on plates microscopes; downloadable computer application software for medical diagnostics
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: laboratory equipment, namely, clamps and frames and connectors, tissue processors, microscope slides and storage boxes, cover glass, chamber slides and custom glass, slide and cassette storage units, slide covers, slide holders, specimen adhesive, specimen slides; laboratory equipment, namely, clamps and frames and connectors, tissue processors, microscope slides, cover glass, chamber slides and custom glass, slide and cassette storage units, slide covers, slide holders, specimen slides; optical lenses; apparatus and scientific instruments, namely, chromatography columns, equipment for grinding, cutting and polishing, microtomes and their parts; apparatus and scientific instruments, namely, chromatography columns and their parts; accessories for microtomes, namely, instruments to insert or to color sections and samples; accessories for microtomes, namely, instruments to insert or to color sections and samples in the nature of blade holders, section transfer systems to transport sections from microtomes to a water bath, cool cut for cooling of a block with sample; microtome blades and blade dispensers; optical instruments; optical instruments, namely, microscopes; glassware for laboratory and scientific use; glassware for laboratory and scientific use, namely, coverslips, adhesion slides, non-adhesion slides, frosted slides and color tab slides; histology and cytology and haematology and microbiology equipment, apparatus and supplies, namely, base molds, cassettes, control slides, cutting board units and associated mounting pins, marking pens, containers and closures therefor for transporting biological fluids and specimens, mold release compounds, molds, paraffin handling equipment, disposable microtome blades; tissue freezing medium containers; disposable sample chambers for use in centrifuges; funnels for use in testing samples of body fluids; parts and fittings therefor; centrifugal machines in the nature of laboratory equipment; centrifugal machines; apparatus and instruments in the nature of specialized centrifuges and related consumable funnels for transporting cells to slides and for depositing cells or other goods on microscope plates; apparatus and instruments for depositing cells or other goods on plates microscopes; downloadable computer application software for medical diagnosticsClass 009 for laboratory equipment, namely, clamps and frames and connectors, tissue processors, microscope slides, cover glass, chamber slides and custom glass, slide and cassette storage units, slide covers, slide holders, specimen slides; optical lenses; apparatus and scientific instruments, namely, chromatography columns and their parts; accessories for microtomes, namely, instruments to insert or to color sections and samples in the nature of blade holders, section transfer systems to transport sections from microtomes to a water bath, cool cut for cooling of a block with sample; microtome blades and blade dispensers; optical instruments, namely, microscopes; glassware for laboratory and scientific use, namely, coverslips, adhesion slides, non-adhesion slides, frosted slides and color tab slides; histology and cytology and haematology and microbiology equipment, apparatus and supplies, namely, base molds, cassettes, control slides, cutting board units and associated mounting pins, marking pens, containers and closures therefor for transporting biological fluids and specimens, mold release compounds, molds, paraffin handling equipment, disposable microtome blades; disposable sample chambers for use in centrifuges; funnels for use in testing samples of body fluids; parts and fittings therefor; centrifugal machines in the nature of laboratory equipment; apparatus and instruments in the nature of specialized centrifuges and related consumable funnels for transporting cells to slides and for depositing cells or other goods on microscope plates; downloadable computer application software for medical diagnostics
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 immunostaining systems, namely, immunostaining apparatus for medical diagnostic use incorporating computer hardware and software for maintaining and analyzing the immunostaining process; glove liners for use with latex gloves; apparatus for medical clinical use, namely, cassettes for holding tissue specimens for processing and analysis
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: immunostaining systems, namely, immunostaining apparatus for medical diagnostic use incorporating computer hardware and software for maintaining and analyzing the immunostaining process; glove liners for use with latex gloves; glove liners for use with latex medical gloves; apparatus for medical clinical use, namely, cassettes for holding tissue specimens for processing and analysis; equipment for cutting microtomes and their parts for medical purposes in the nature of medical cutting devicesClass 010 for immunostaining systems, namely, immunostaining apparatus for medical diagnostic use incorporating computer hardware and software for maintaining and analyzing the immunostaining process; glove liners for use with latex medical gloves; apparatus for medical clinical use, namely, cassettes for holding tissue specimens for processing and analysis; equipment for cutting microtomes and their parts for medical purposes in the nature of medical cutting devices
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: Robyn A. Shelton. Robyn A. Shelton of COHEN & GRIGSBY, P.C., is located at

      625 LIBERTY AVENUE
      PITTSBURGH, Pennsylvania 15222-3152
      US
The docket/reference number is TM19-073.

The phone number is 412-297-4900.

The fax number is 412-209-1845.

The email address is iptrademark@cohenlaw.com

The applicants proposed attorney information: Robyn A. Shelton. Other appointed attorneys are Noland J. Cheung, Frederick L. Tolhurst, Michael E. Dukes, Hanna L. Habtewold. Robyn A. Shelton of COHEN & GRIGSBY, P.C., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      625 LIBERTY AVENUE
      PITTSBURGH, Pennsylvania 15222-3152
      United States
The docket/reference number is TM19-073.

The phone number is 412-297-4900.

The fax number is 412-209-1845.

The email address is iptrademark@cohenlaw.com

Robyn A. Shelton 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: ROBYN A. SHELTON. ROBYN A. SHELTON of COHEN & GRIGSBY, P.C., is located at

      625 LIBERTY AVENUE
      PITTSBURGH, Pennsylvania 15222-3152
      US
The docket/reference number is TM19-073.

The phone number is 412-297-4900.

The fax number is 412-209-1845.

The email address is iptrademark@cohenlaw.com

The applicants proposed correspondence information: Robyn A. Shelton. Robyn A. Shelton of COHEN & GRIGSBY, P.C., is located at

      625 LIBERTY AVENUE
      PITTSBURGH, Pennsylvania 15222-3152
      United States
The docket/reference number is TM19-073.

The phone number is 412-297-4900.

The fax number is 412-209-1845.

The email address is iptrademark@cohenlaw.com

ADDITIONAL STATEMENTS
Translation
The English translation of EPREDIA in the mark is PROPERLY.


SIGNATURE(S)
Response Signature
Signature: /Robyn A. Shelton/     Date: 11/26/2019
Signatory's Name: Robyn A. Shelton
Signatory's Position: Attorney of Record, PA Bar Member

Signatory's Phone Number: 412-297-4900

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:    ROBYN A. SHELTON
   COHEN & GRIGSBY, P.C.
   
   625 LIBERTY AVENUE
   PITTSBURGH, Pennsylvania 15222-3152
Mailing Address:    Robyn A. Shelton
   COHEN & GRIGSBY, P.C.
   625 LIBERTY AVENUE
   PITTSBURGH, Pennsylvania 15222-3152
        
Serial Number: 88473846
Internet Transmission Date: Tue Nov 26 10:24:18 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201911261024181
33468-88473846-700c32cf826f0904e29ceb751
b6fa680ce821771ce764cf3488c53e3424ed781d
-N/A-N/A-20191126101828761857