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. 88491251 MISEQ(Standard Characters, see http://uspto.report/TM/88491251/mark.png) has been amended as follows:

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

Please see the attached Office Action Response

EVIDENCE
Evidence in the nature of a PDF of the Office Action Response has been attached.
Original PDF file:
evi_17322719121-20200320122000985741_._2020-03-20_Office_Action_Response_-_ILLINCT.566T2.pdf
Converted PDF file(s) ( 6 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 001 for Agents, reagents, assays, enzymes, nucleotides, buffers, chemical preparations, and biological preparations for scientific and research use; diagnostic reagents and preparations, other than for medical or veterinary use; kits containing reagents and a protocol for use thereof for non-medical purposes; agents, reagents, assays, enzymes, nucleotides, buffers, chemical preparations, and biological preparations for scientific and research use in the fields of nucleic acid sequencing, genotyping, diagnostics, diagnostic research, clinical research, drug development, pharmaceuticals, laboratory research, scientific research, medical research, life sciences, biology, microbiology and metagenomics, biotechnology, agriculture, forensics, food safety, genetic testing, and genetics, not for medical or veterinary purposes; kits comprising nucleotides, reagents, enzyme substrates, buffers, chemical preparations, or biological preparations for scientific and research use including in the fields of nucleic acid sequencing, genotyping, diagnostics, diagnostic research, clinical research, drug development, pharmaceuticals, laboratory research, scientific research, medical research, life sciences, biology, microbiology and metagenomics, biotechnology, agriculture, forensics, food safety, genetic testing, and genetics, not for medical or veterinary purposes
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 07/26/2011 and first used in commerce at least as early as 07/26/2011 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Agents, reagents, assays, enzymes, nucleotides, buffers, chemical preparations, and biological preparations for scientific and research use; Biological agents, reagents, assays, enzymes, nucleotides, buffers, chemical preparations, and biological preparations for use in science and scientific research; diagnostic reagents and preparations, other than for medical or veterinary use; kits containing reagents and a protocol for use thereof for non-medical purposes; kits containing reagents and a protocol for use thereof for scientific and research purposes; agents, reagents, assays, enzymes, nucleotides, buffers, chemical preparations, and biological preparations for scientific and research use in the fields of nucleic acid sequencing, genotyping, diagnostics, diagnostic research, clinical research, drug development, pharmaceuticals, laboratory research, scientific research, medical research, life sciences, biology, microbiology and metagenomics, biotechnology, agriculture, forensics, food safety, genetic testing, and genetics, not for medical or veterinary purposes; biological agents, reagents, assays, enzymes, nucleotides, buffers, chemical preparations, and biological preparations for scientific and research use in the fields of nucleic acid sequencing, genotyping, diagnostics, diagnostic research, clinical research, drug development, pharmaceuticals, laboratory research, scientific research, medical research, life sciences, biology, microbiology and metagenomics, biotechnology, agriculture, forensics, food safety, genetic testing, and genetics, not for medical or veterinary purposes; kits comprising nucleotides, reagents, enzyme substrates, buffers, chemical preparations, or biological preparations for scientific and research use including in the fields of nucleic acid sequencing, genotyping, diagnostics, diagnostic research, clinical research, drug development, pharmaceuticals, laboratory research, scientific research, medical research, life sciences, biology, microbiology and metagenomics, biotechnology, agriculture, forensics, food safety, genetic testing, and genetics, not for medical or veterinary purposesClass 001 for Biological agents, reagents, assays, enzymes, nucleotides, buffers, chemical preparations, and biological preparations for use in science and scientific research; diagnostic reagents and preparations, other than for medical or veterinary use; kits containing reagents and a protocol for use thereof for scientific and research purposes; biological agents, reagents, assays, enzymes, nucleotides, buffers, chemical preparations, and biological preparations for scientific and research use in the fields of nucleic acid sequencing, genotyping, diagnostics, diagnostic research, clinical research, drug development, pharmaceuticals, laboratory research, scientific research, medical research, life sciences, biology, microbiology and metagenomics, biotechnology, agriculture, forensics, food safety, genetic testing, and genetics, not for medical or veterinary purposes; kits comprising nucleotides, reagents, enzyme substrates, buffers, chemical preparations, or biological preparations for scientific and research use including in the fields of nucleic acid sequencing, genotyping, diagnostics, diagnostic research, clinical research, drug development, pharmaceuticals, laboratory research, scientific research, medical research, life sciences, biology, microbiology and metagenomics, biotechnology, agriculture, forensics, food safety, genetic testing, and genetics, not for medical or veterinary purposes
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 07/26/2011 and first used in commerce at least as early as 07/26/2011 , and is now in use in such commerce.
Applicant proposes to amend the following:
Current: Class 005 for Agents, reagents, assays, enzymes, nucleotides, buffers, chemical preparations, and biological preparations for medical and veterinary use; diagnostic reagents and preparations for medical and veterinary use; kits containing reagents and a protocol for use thereof for medical purposes; kits comprised of nucleotides, reagents, enzyme substrates, buffers, chemical preparations, biological preparations for medical genetic testing and medical diagnostic purposes; agents, reagents, assays, enzymes, nucleotides, buffers, chemical preparations, and biological preparations for medical and veterinary use in the fields of medical diagnostics, clinical diagnostics, veterinary diagnostics, medical forensics, laboratory medicine, veterinary medicine, genetic testing, and genetics
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 07/26/2011 and first used in commerce at least as early as 07/26/2011 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Agents, reagents, assays, enzymes, nucleotides, buffers, chemical preparations, and biological preparations for medical and veterinary use; Biological agents, reagents, assays, enzymes, nucleotides, buffers, chemical preparations, and biological preparations for medical and veterinary use; diagnostic reagents and preparations for medical and veterinary use; diagnostic reagents and preparations for medical and veterinary use, namely, for use in medical diagnostics; kits containing reagents and a protocol for use thereof for medical purposes; kits comprised of nucleotides, reagents, enzyme substrates, buffers, chemical preparations, biological preparations for medical genetic testing and medical diagnostic purposes; agents, reagents, assays, enzymes, nucleotides, buffers, chemical preparations, and biological preparations for medical and veterinary use in the fields of medical diagnostics, clinical diagnostics, veterinary diagnostics, medical forensics, laboratory medicine, veterinary medicine, genetic testing, and geneticsClass 005 for Biological agents, reagents, assays, enzymes, nucleotides, buffers, chemical preparations, and biological preparations for medical and veterinary use; diagnostic reagents and preparations for medical and veterinary use, namely, for use in medical diagnostics; kits containing reagents and a protocol for use thereof for medical purposes; kits comprised of nucleotides, reagents, enzyme substrates, buffers, chemical preparations, biological preparations for medical genetic testing and medical diagnostic purposes; agents, reagents, assays, enzymes, nucleotides, buffers, chemical preparations, and biological preparations for medical and veterinary use in the fields of medical diagnostics, clinical diagnostics, veterinary diagnostics, medical forensics, laboratory medicine, veterinary medicine, genetic testing, and genetics
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 07/26/2011 and first used in commerce at least as early as 07/26/2011 , and is now in use in such commerce.
Applicant proposes to amend the following:
Current: Class 009 for Laboratory devices for detecting genetic sequences; diagnostic apparatus for the detection of pathogens for laboratory or research use; scientific apparatus and instruments for use in genetic analysis; apparatus for DNA and RNA testing for research purposes; apparatus and instruments for testing gases, liquids, or solids; DNA chips; measuring and weighing apparatus and instruments; observation instruments; data processing apparatus; computers; monitors; computer hardware; computer software; computer hardware and software for use in the fields of nucleic acid sequencing, genotyping, medical diagnostics, veterinary diagnostics, clinical diagnostics, medical research, veterinary research, diagnostic research, clinical research, drug development, drug development research, medical laboratory research, veterinary science and research, life sciences, biology, microbiology, biotechnology, agriculture, forensics, food safety, metagenomics, genetic testing and genetics; Scientific and research apparatus and instruments including nucleic acid sequencers, sequencing reagent cartridges and trays, test sample preparation equipment, and laboratory equipment for laboratory use including in the fields of nucleic acid sequencing, genotyping, medical diagnostics, veterinary diagnostics, clinical diagnostics, medical research, veterinary research, diagnostics, clinical research, drug development, pharmaceuticals, medical laboratory research, veterinary science and research, life sciences, biology, microbiology, biotechnology, agriculture, forensics, food safety, metagenomics, genetic testing, and genetics; micro processors; data processors; next-generation sequencing (ngs) bioinformatics data processor; cards with integrated circuits; computer chips; encoded electronic chip cards containing programming used for DNA sequencing
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 07/26/2011 and first used in commerce at least as early as 07/26/2011 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Laboratory devices for detecting genetic sequences; diagnostic apparatus for the detection of pathogens for laboratory or research use; scientific apparatus and instruments for use in genetic analysis; apparatus for DNA and RNA testing for research purposes; apparatus for DNA and RNA testing for research and scientific purposes; apparatus and instruments for testing gases, liquids, or solids; apparatus and instruments for testing gases, liquids, or solids in the fields of nucleic acid sequencing, genotyping, medical diagnostics, veterinary diagnostics, clinical diagnostics, medical research, veterinary research, diagnostics, clinical research, drug development, pharmaceuticals, medical laboratory research, veterinary science and research, life sciences, biology, microbiology, biotechnology, agriculture, forensics, food safety, metagenomics, genetic testing, and genetics; DNA chips; measuring and weighing apparatus and instruments; data processing apparatus; observation instruments; computers; computer monitors; computer hardware; monitors; downloadable and recorded computer software for sequencing and analysis of data in the field of DNA and RNA testing, genotyping, diagnostic research, and biotechnology; downloadable and recorded computer software for use in data analysis in the fields of nucleic acid sequencing, genotyping, medical diagnostics, veterinary diagnostics, clinical diagnostics, medical research, veterinary research, diagnostic research, clinical research, drug development, drug development research, medical laboratory research, veterinary science and research, life sciences, biology, microbiology, biotechnology, agriculture, forensics, food safety, metagenomics, genetic testing and genetics; computer software; Scientific and research apparatus and instruments namely, nucleic acid sequencers and sequencing reagent cartridges and trays; computer hardware and software for use in the fields of nucleic acid sequencing, genotyping, medical diagnostics, veterinary diagnostics, clinical diagnostics, medical research, veterinary research, diagnostic research, clinical research, drug development, drug development research, medical laboratory research, veterinary science and research, life sciences, biology, microbiology, biotechnology, agriculture, forensics, food safety, metagenomics, genetic testing and genetics; micro processors; Scientific and research apparatus and instruments including nucleic acid sequencers, sequencing reagent cartridges and trays, test sample preparation equipment, and laboratory equipment for laboratory use including in the fields of nucleic acid sequencing, genotyping, medical diagnostics, veterinary diagnostics, clinical diagnostics, medical research, veterinary research, diagnostics, clinical research, drug development, pharmaceuticals, medical laboratory research, veterinary science and research, life sciences, biology, microbiology, biotechnology, agriculture, forensics, food safety, metagenomics, genetic testing, and genetics; data processors; next-generation sequencing (NGS) bioinformatics data processor; cards with integrated circuits; computer chips; encoded electronic chip cards containing programming used for DNA sequencingClass 009 for Laboratory devices for detecting genetic sequences; diagnostic apparatus for the detection of pathogens for laboratory or research use; scientific apparatus and instruments for use in genetic analysis; apparatus for DNA and RNA testing for research and scientific purposes; apparatus and instruments for testing gases, liquids, or solids in the fields of nucleic acid sequencing, genotyping, medical diagnostics, veterinary diagnostics, clinical diagnostics, medical research, veterinary research, diagnostics, clinical research, drug development, pharmaceuticals, medical laboratory research, veterinary science and research, life sciences, biology, microbiology, biotechnology, agriculture, forensics, food safety, metagenomics, genetic testing, and genetics; DNA chips; data processing apparatus; computers; computer monitors; computer hardware; downloadable and recorded computer software for sequencing and analysis of data in the field of DNA and RNA testing, genotyping, diagnostic research, and biotechnology; downloadable and recorded computer software for use in data analysis in the fields of nucleic acid sequencing, genotyping, medical diagnostics, veterinary diagnostics, clinical diagnostics, medical research, veterinary research, diagnostic research, clinical research, drug development, drug development research, medical laboratory research, veterinary science and research, life sciences, biology, microbiology, biotechnology, agriculture, forensics, food safety, metagenomics, genetic testing and genetics; Scientific and research apparatus and instruments namely, nucleic acid sequencers and sequencing reagent cartridges and trays; micro processors; data processors; next-generation sequencing (NGS) bioinformatics data processor; cards with integrated circuits; computer chips; encoded electronic chip cards containing programming used for DNA sequencing
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 07/26/2011 and first used in commerce at least as early as 07/26/2011 , and is now in use in such commerce.
Applicant proposes to amend the following:
Current: Class 010 for Medical diagnostic apparatus and instruments for use in genetic analysis; medical diagnostic apparatus and instruments for the analysis of body fluids; apparatus for blood analysis; apparatus for DNA and RNA testing for medical purposes; medical and veterinary apparatus and instruments; analytical apparatus for medical purposes; testing apparatus for medical purposes; medical diagnostic apparatus and instruments for use in preparing blood, bodily fluid and human biological samples for further testing and for the detection and identification of pathogen nucleic acids in blood, bodily fluids and biological samples; clinical and medical apparatus and instruments, including, nucleic acid sequencers; clinical and medical apparatus and instruments, including nucleic acid sequencers, nucleic acid analyzers, sample and library preparation devices including in the fields of nucleic acid sequencing, genotyping, medical diagnostics, veterinary diagnostics, clinical diagnostics, medical research, veterinary research, diagnostics, clinical research, drug development, pharmaceuticals, medical laboratory research, veterinary science and research, life sciences, biology, microbiology, biotechnology, agriculture, forensics, food safety, metagenomics, genetic testing, and genetics
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 07/26/2011 and first used in commerce at least as early as 07/26/2011 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Medical diagnostic apparatus and instruments for use in genetic analysis; medical diagnostic apparatus and instruments for the analysis of body fluids; apparatus for blood analysis; apparatus for DNA and RNA testing for medical purposes; medical and veterinary apparatus and instruments; medical and veterinary apparatus and instruments, namely for use in medical diagnostics for detecting genetic abnormalities and disease; analytical apparatus for medical purposes; analytical apparatus for medical purposes, namely apparatus that test and sequence genetic material for use in medical diagnostics; testing apparatus for medical purposes; testing apparatus for medical purposes, for testing genetic material for use in medical diagnostics; medical diagnostic apparatus and instruments for use in preparing blood, bodily fluid and human biological samples for further testing and for the detection and identification of pathogen nucleic acids in blood, bodily fluids and biological samples; clinical and medical apparatus and instruments, including, nucleic acid sequencers; clinical and medical apparatus and instruments, including nucleic acid sequencers, nucleic acid analyzers, sample and library preparation devices including in the fields of nucleic acid sequencing, genotyping, medical diagnostics, veterinary diagnostics, clinical diagnostics, medical research, veterinary research, diagnostics, clinical research, drug development, pharmaceuticals, medical laboratory research, veterinary science and research, life sciences, biology, microbiology, biotechnology, agriculture, forensics, food safety, metagenomics, genetic testing, and genetics; clinical and medical apparatus and instruments, namely, nucleic acid sequencers, nucleic acid analyzers, sample and library preparation devices for medical diagnosis, testing, and treatment purposes including in the fields of nucleic acid sequencing, genotyping, medical diagnostics, veterinary diagnostics, clinical diagnostics, diagnostics, drug development, pharmaceuticals, life sciences, biology, microbiology, biotechnology, agriculture, forensics, food safety, metagenomics, genetic testing, and geneticsClass 010 for Medical diagnostic apparatus and instruments for use in genetic analysis; medical diagnostic apparatus and instruments for the analysis of body fluids; apparatus for blood analysis; apparatus for DNA and RNA testing for medical purposes; medical and veterinary apparatus and instruments, namely for use in medical diagnostics for detecting genetic abnormalities and disease; analytical apparatus for medical purposes, namely apparatus that test and sequence genetic material for use in medical diagnostics; testing apparatus for medical purposes, for testing genetic material for use in medical diagnostics; medical diagnostic apparatus and instruments for use in preparing blood, bodily fluid and human biological samples for further testing and for the detection and identification of pathogen nucleic acids in blood, bodily fluids and biological samples; clinical and medical apparatus and instruments, including, nucleic acid sequencers; clinical and medical apparatus and instruments, namely, nucleic acid sequencers, nucleic acid analyzers, sample and library preparation devices for medical diagnosis, testing, and treatment purposes including in the fields of nucleic acid sequencing, genotyping, medical diagnostics, veterinary diagnostics, clinical diagnostics, diagnostics, drug development, pharmaceuticals, life sciences, biology, microbiology, biotechnology, agriculture, forensics, food safety, metagenomics, genetic testing, and genetics
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 07/26/2011 and first used in commerce at least as early as 07/26/2011 , and is now in use in such commerce.
OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Illumina Inc., a corporation of Delaware, having an address of
      5200 Illumina Way
      San Diego, California 92122
      United States

Proposed: Illumina Inc., a corporation of Delaware, having an address of
      5200 Illumina Way
      San Diego, California 92122
      United States
      Email Address: TMOffice@knobbe.com
Correspondence Information (current):
      Susan M. Natland
      PRIMARY EMAIL FOR CORRESPONDENCE: efiling@knobbe.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is ILLINCT566T2.
Correspondence Information (proposed):
      Susan M. Natland
      PRIMARY EMAIL FOR CORRESPONDENCE: efiling@knobbe.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is ILLINCT566T2.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /charlene a. azema/     Date: 03/20/2020
Signatory's Name: Charlene A. Azema
Signatory's Position: Attorney of record, California bar member

Signatory's Phone Number: 949-760-0404

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:    Susan M. Natland
   Knobbe, Martens, Olson & Bear, LLP
   
   2040 Main Street, 14th Floor
   Irvine, California 92614
Mailing Address:    Susan M. Natland
   Knobbe, Martens, Olson & Bear, LLP
   2040 Main Street, 14th Floor
   Irvine, California 92614
        
Serial Number: 88491251
Internet Transmission Date: Fri Mar 20 17:53:52 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XXX-202003201753526
83288-88491251-7102db3207a8223b125857f97
ab23d7fcbf40d1f5763353b3721385aa901a-N/A
-N/A-20200320122000985741