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. 88492452 BIOVISION (Stylized and/or with Design, see http://uspto.report/TM/88492452/mark.png) has been amended as follows:

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

Applicant has submitted a specimen for class 42 which includes a catalog entitled "Assay Services Sample to Results... Fast: Custom Assay Development Services." Page 3 of the catalog describes the services provided by Applicant as "Custom Assay Services... At the request of many of our customers, we are pleased to offer custom assay services. Simply send us your samples and we will deliver the results... Your project will start after contract is in place with an agreement. You will get regular project updates. You will be happy to receive high quality and reliable service." The services described in the catalog correspond exactly to the listed services of "Custom design and development of chemical reagents and biochemical assays." Applicant's services, as described by the catalog, thus include the service of developing and customizing assays and reagents for others, rather than merely selling a set line of products. Applicant further submits herein a substitute specimen comprised of a printout of its website which describes its said custom assay services in association with the mark as "If we do not have an assay for the target of your interest, please tell us the target. We will work with you to develop an optimum assay for your target." The website further contains an order form for "Assay Services Request." Applicant submits that use with the class 42 services is established.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 042 for Medical and scientific research; Custom design and development of chemical reagents and biochemical assays
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 04/00/1999 and first used in commerce at least as early as 04/00/1999 , and is now in use in such commerce.

Proposed: Class 042 for Medical and scientific research; Custom design and development of chemical reagents and biochemical assays
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 04/00/1999 and first used in commerce at least as early as 04/00/1999 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 042. The specimen(s) submitted consists of Printout of Applicant's website which describes Applicant's custom assay services in close association with the mark..
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen]. Specimen File1
Specimen File2
Specimen File3
Specimen File4

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: BIOVISION, INC., a corporation of California, having an address of
      155 South Milpitas Blvd
      Milpitas, California 95035
      United States

Proposed: BIOVISION, INC., a corporation of California, having an address of
      155 South Milpitas Blvd
      Milpitas, California 95035
      United States
      Email Address: tm@iplg.com
Correspondence Information (current):
      Otto O. Lee
      PRIMARY EMAIL FOR CORRESPONDENCE: tm_docket@iplg.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 5699.
Correspondence Information (proposed):
      Otto O. Lee
      PRIMARY EMAIL FOR CORRESPONDENCE: tm_docket@iplg.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 5699.

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)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Otto O. Lee/      Date: 03/18/2020
Signatory's Name: Otto O. Lee
Signatory's Position: Attorney of Record, CA bar member
Signatory's Phone Number: 408-286-8933


Response Signature
Signature: /Otto O. Lee/     Date: 03/18/2020
Signatory's Name: Otto O. Lee
Signatory's Position: Attorney of Record, CA bar member

Signatory's Phone Number: 408-286-8933

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:    Otto O. Lee
   INTELLECTUAL PROPERTY LAW GROUP LLP
   
   1871 THE ALAMEDA, SUITE 250
   SAN JOSE, California 95126
Mailing Address:    Otto O. Lee
   INTELLECTUAL PROPERTY LAW GROUP LLP
   1871 THE ALAMEDA, SUITE 250
   SAN JOSE, California 95126
        
Serial Number: 88492452
Internet Transmission Date: Wed Mar 18 20:47:37 ET 2020
TEAS Stamp: USPTO/ROA-XXXX:XXX:XXX:XXX:XXXX:XXXX:XXX
X:XXXX-20200318204737229209-88492452-710
e6f47d967e84c4bad2ef68b71f88c1ed733f20b7
373e847bb1f4ea92bee-N/A-N/A-202003182037
16931532