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. 88492433 EPLEX(Standard Characters, see http://uspto.report/TM/88492433/mark.png) has been amended as follows:

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

In response to the Office Action dated September 23, 2019, Applicant respectfully submits the following response.

Amendment of the Description of Goods

Applicant respectfully requests the description of goods for the EPLEX application in Class 5 be amended to the following:

Chemical preparations and substances for medical purposes, namely chemical preparations for testing blood, bodily fluids, and excrements for medical purposes; none of the foregoing related to testing estrogen conditions.

Section 2(d) Refusal

Applicant respectfully submits that the refusal based upon a likelihood of confusion with U.S. Registration No. 5,470,779 for the mark E-PLEXX (the ‘779 Registration) should be withdrawn for the following reasons. Applicant owns several registrations for the EPLEX mark that were registered on July 11, 2017 for goods related to those at issue here, well-before the May 15, 2018 registration date of the ‘779 Registration. Declaration of Justine K. Wong, ¶ 2 (“Wong Declaration”). In addition, as shown in Exhibit A of the Wong Declaration, Applicant’s EPLEX mark was first used in commerce in October of 2015, well before the Registrant’s first use date of July 27, 2017 for the mark within the ‘779 Registration. The two marks have coexisted on the Principal Register and within the marketplace for about two years. Further, given the narrower goods registered under the ‘779 Registration (i.e. nutritional supplements containing estrogen compounds), along with Applicant’s more narrowly amended goods for testing blood, bodily fluids, and excrements, and excluding testing of estrogen conditions, Applicant asserts that the Examiner’s concerns have been addressed.

Conclusion

Based on the foregoing, Applicant respectfully requests the Examiner withdraw the refusal and allow this application to proceed to publication.

EVIDENCE
Evidence in the nature of 1. Declaration of Justine K. Wong in support of the response to Office Action; 2. Exhibit to Declaration of Justine K. Wong. has been attached.
Original PDF file:
evi_701641162-20200323141455791551_._ARK_-_Declaration_of_JKW_ISO_of_EPLEX_Office_Action_Response.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_701641162-20200323141455791551_._A_for_Declaration_of_JKW_ISO_of_EPLEX_Office_Action_Response.PDF
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 005 for Chemical preparations and substances for medical purposes
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: Chemical preparations and substances for medical purposes; Chemical preparations and substances for medical purposes, namely chemical preparations for testing blood, bodily fluids, and excrements for medical purposes; none of the foregoing related to testing estrogen conditions.Class 005 for Chemical preparations and substances for medical purposes, namely chemical preparations for testing blood, bodily fluids, and excrements for medical purposes; none of the foregoing related to testing estrogen 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.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: GenMark Diagnostics, Inc., a corporation of Delaware, having an address of
      5964 La Place Court
      Carlsbad, California 92008
      United States

Proposed: GenMark Diagnostics, Inc., a corporation of Delaware, having an address of
      5964 La Place Court
      Carlsbad, California 92008
      United States
      Email Address: GenMarkIP@genmarkdx.com

The owner's/holder's current attorney information: Charles F. Reidelbach, Jr.. Charles F. Reidelbach, Jr. of HIGGS FLETCHER & MACK LLP, is located at

      401 WEST A STREET, SUITE 2600
      SAN DIEGO, California 92101
      United States
The docket/reference number is 111100-00038.
      The phone number is 619-236-1551.
      The fax number is 619-696-1410.
      The email address is trademarks@higgslaw.com

The owner's/holder's proposed attorney information: Charles F. Reidelbach, Jr.. Other appointed attorneys are Justine K. Wong, James Cekola. Charles F. Reidelbach, Jr. of HIGGS FLETCHER & MACK LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      401 WEST A STREET, SUITE 2600
      SAN DIEGO, California 92101
      United States
The docket/reference number is 111100-00038.
      The phone number is 619-236-1551.
      The fax number is 619-696-1410.
      The email address is trademarks@higgslaw.com

Charles F. Reidelbach, Jr. 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.Correspondence Information (current):
      CHARLES F. REIDELBACH, JR.
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@higgslaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 111100-00038.
Correspondence Information (proposed):
      Charles F. Reidelbach, Jr.
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@higgslaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 111100-00038.

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: /charlesfreidelbachjr/     Date: 03/23/2020
Signatory's Name: Charles F. Reidelbach, Jr.
Signatory's Position: Attorney of Record, California Bar Member

Signatory's Phone Number: 619-236-1551

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:    CHARLES F. REIDELBACH, JR.
   HIGGS FLETCHER & MACK LLP
   
   401 WEST A STREET, SUITE 2600
   SAN DIEGO, California 92101
Mailing Address:    Charles F. Reidelbach, Jr.
   HIGGS FLETCHER & MACK LLP
   401 WEST A STREET, SUITE 2600
   SAN DIEGO, California 92101
        
Serial Number: 88492433
Internet Transmission Date: Mon Mar 23 19:05:41 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.X-20200323190541542
541-88492433-710afc1d3297bbb49d48f414bc8
32fb2598c7bdabf7c435eaf5d171cece16272f-N
/A-N/A-20200323162023393309