Notation to File

RE: Response Requested: Trademark Application Serial No. 88503959 -- COGGEN   Hi Gilbert, I got your voicemail message. I will call you tomorrow, Friday September 27, in the morning. Kind Regards, Emmanuel   Emmanuel (Manu) Labourier, PhD VP Research & Clinical Development Cognitive Genetics Inc. C: 512-923-8518 E: mlabourier@coggen.com   From: Swift, Gilbert M. <Gilbert.Swift@USPTO.GOV> Sent: Tuesday, September 24, 2019 7:29 PM To: mlabourier@coggen.com; manulabourier@gmail.com; krusconi@coggen.com Cc: Swift, Gilbert M. <Gilbert.Swift@USPTO.GOV> Subject: Response Requested: Trademark Application Serial No. 88503959 -- COGGEN   RE: Trademark Application Serial No. 88503959  -- COGGEN   Dear Emmanuel Labourier:   I am the Trademark examining attorney assigned to the above-captioned application.  I can approve it for publication immediately if you authorize me to enter an Examiner Amendment that resolves the issues described below.  To provide authorization, you simply need to give it in a reply to this email.    Alternatively, if you require more time to resolve the issues presented, please let me know, and I will issue a Priority Action or combination Priority Action / Examiner’s Amendment instead. In any event, I hope you will let me know which course of action you prefer.   I see from the application that your title is VP Research & Clinical Development.  I need to know whether you are a Vice President in the sense of being a corporate officer per the articles of incorporation of Cognitive Genetics, Inc.  While anyone may initiate an application on behalf of the applicant, only corporate officers may provide authorization to amend the application. Managers do not have this authority.     Requirement: Explanation of the Mark’s Significance   To permit proper examination of the application, applicant must explain whether the wording in the mark “COGGEN” has any significance in the genetics and learning disorder trade or industry or as applied to applicant’s services, or if such wording is a “term of art” within applicant’s industry.  See 37 C.F.R. §2.61(b); TMEP §814.  Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.     Requirement: Identification of Services   The services are:  Class 042:             “Services for detection and management of learning disorders”; and Class 044:             “Genetic testing for learning disorders.”    The identification of services needs clarification because it does not identify the services with enough specificity and it is too broad because it may identify services in multiple International Classes.  See TMEP §§1402.01, 1402.03.    If accurate, applicant may adopt the following formulation for drafting an acceptable identification. The suggested language has been bolded for applicant’s convenience.   Class 042:             Genetic testing for scientific research purposes, namely, genetic testing for learning disorders   Class 044:            Genetic testing for medical purposes, namely, genetic testing for learning disorders; Services for detection and management of learning disorders, namely, psychological assessment services in the field of learning disorders   Class 045:             Services for management of learning disorders, namely, personal advocacy services to meet the special learning needs of students with learning disorders     See TMEP §1402.01.   Advisories   Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).   For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.   Multiclass Advisories   The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):   (1)