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. 88571171 VISEASE(Standard Characters, see http://uspto.report/TM/88571171/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Measuring or testing machines and instruments, namely, spectrometers; Laboratory apparatus and instruments, namely, spectrophotometer, molecular spectrophotometer, and ultraviolet-visible spectrophotometer; Scientific and laboratory apparatus and instruments including parts therefor, namely, spectrophotometer, molecular spectrophotometer, and ultraviolet-visible spectrophotometer; Software for controlling spectrophotometer, molecular spectrophotometer, and ultraviolet-visible spectrophotometer; Software for analyzing results obtained by spectrophotometer, molecular spectrophotometer, and ultraviolet-visible spectrophotometer; Downloadable software for use in the process of summarizing analytical results in spectrophotometer, molecular spectrophotometer, and ultraviolet-visible spectrophotometer; Downloadable software for analyzing data for use in spectrophotometer, molecular spectrophotometer, and ultraviolet-visible spectrophotometer; Computer software recorded for use in the process of summarizing analytical results in spectrophotometer, molecular spectrophotometer, and ultraviolet-visible spectrophotometer; Computer software for analyzing data recorded for use in spectrophotometer, molecular spectrophotometer, and ultraviolet-visible spectrophotometer; Downloadable software for use in the process of transferring analytical data acquired by spectrophotometer, molecular spectrophotometer, and ultraviolet-visible spectrophotometer
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Japan application number 2019-053875 filed 04/18/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Measuring or testing machines and instruments, namely, spectrometers; Laboratory apparatus and instruments, namely, spectrophotometer, molecular spectrophotometer, and ultraviolet-visible spectrophotometer; Scientific and laboratory apparatus and instruments including parts therefor, namely, spectrophotometer, molecular spectrophotometer, and ultraviolet-visible spectrophotometer; Software for controlling spectrophotometer, molecular spectrophotometer, and ultraviolet-visible spectrophotometer; Recorded software for controlling spectrophotometer, molecular spectrophotometer, and ultraviolet-visible spectrophotometer; Software for analyzing results obtained by spectrophotometer, molecular spectrophotometer, and ultraviolet-visible spectrophotometer; Recorded software for analyzing results obtained by spectrophotometer, molecular spectrophotometer, and ultraviolet-visible spectrophotometer; Downloadable software for use in the process of summarizing analytical results in spectrophotometer, molecular spectrophotometer, and ultraviolet-visible spectrophotometer; Downloadable software for analyzing data for use in spectrophotometer, molecular spectrophotometer, and ultraviolet-visible spectrophotometer; Computer software recorded for use in the process of summarizing analytical results in spectrophotometer, molecular spectrophotometer, and ultraviolet-visible spectrophotometer; Computer software for analyzing data recorded for use in spectrophotometer, molecular spectrophotometer, and ultraviolet-visible spectrophotometer; Recorded computer software for analyzing data recorded for use in spectrophotometer, molecular spectrophotometer, and ultraviolet-visible spectrophotometer; Downloadable software for use in the process of transferring analytical data acquired by spectrophotometer, molecular spectrophotometer, and ultraviolet-visible spectrophotometerClass 009 for Measuring or testing machines and instruments, namely, spectrometers; Laboratory apparatus and instruments, namely, spectrophotometer, molecular spectrophotometer, and ultraviolet-visible spectrophotometer; Scientific and laboratory apparatus and instruments including parts therefor, namely, spectrophotometer, molecular spectrophotometer, and ultraviolet-visible spectrophotometer; Recorded software for controlling spectrophotometer, molecular spectrophotometer, and ultraviolet-visible spectrophotometer; Recorded software for analyzing results obtained by spectrophotometer, molecular spectrophotometer, and ultraviolet-visible spectrophotometer; Downloadable software for use in the process of summarizing analytical results in spectrophotometer, molecular spectrophotometer, and ultraviolet-visible spectrophotometer; Downloadable software for analyzing data for use in spectrophotometer, molecular spectrophotometer, and ultraviolet-visible spectrophotometer; Computer software recorded for use in the process of summarizing analytical results in spectrophotometer, molecular spectrophotometer, and ultraviolet-visible spectrophotometer; Recorded computer software for analyzing data recorded for use in spectrophotometer, molecular spectrophotometer, and ultraviolet-visible spectrophotometer; Downloadable software for use in the process of transferring analytical data acquired by spectrophotometer, molecular spectrophotometer, and ultraviolet-visible spectrophotometer
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Japan application number 2019-053875 filed 04/18/2019]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

ADDITIONAL STATEMENTS
Miscellaneous Statement
Allegation of Use is concurrently filed. Please note that Applicant would like to request the deletion of Section 44(d)/(e) basis UPON acceptance of the specimen. Priority request should be always maintained.


SIGNATURE(S)
Response Signature
Signature: /Tomoko Nakajima/     Date: 01/04/2020
Signatory's Name: Tomoko Nakajima
Signatory's Position: Attorney of record, NY state bar member

Signatory's Phone Number: 7037179350

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.

        
Serial Number: 88571171
Internet Transmission Date: Sat Jan 04 19:37:13 EST 2020
TEAS Stamp: USPTO/ROA-XX.XX.XX.XXX-20200104193713144
548-88571171-700e138eedebe7c02877bbe21e4
ad9b244d8294fe299fd75b6aff67fddd836fa-N/
A-N/A-20200104191150497193