NOTE TO THE FILE
Sent to TICRS as Serial Number: 88596074SERIAL NUMBER: 88596135
DATE: 12/20/2019
NAME: aclark2
NOTE:
Searched:
X Google
Lexis/Nexis
X OneLook
Wikipedia
Acronym Finder Protest evidence reviewed
Other:Checked:
Geographic significance
Surname
Translation
ID with ID/CLASS mailboxChecked list of approved Canadian attorneys and agents
Discussed file with
Attorney/Applicant via:
X phone Left message with
X email Attorney/ApplicantRequested Law Library search X Issued Examiner’s Amendment
for: and entered changes in TRADEUPSPRINT DO NOT PRINT Added design code in TRADEUPS
Description of the mark
Translation statement Re-imaged standard character
drawing
Negative translation statement
Consent of living individual Contacted TM MADRID ID/CLASS
about misclassified definite ID
Changed TRADEUPS to:From: Andy Spivak <aspivak@mosaiclegalgroup.com>
Sent: Friday, December 20, 2019 11:24 AM
To: Clark, Andrew <Andrew.Clark@USPTO.GOV>
Subject: RE: I PEACE INC. TRADEMARK APPLICATIONS - RESPONSE REQUESTED BY 12/20/2019
Hi Andrew,
Thank you again for your phone call regarding these three applications, as well as your patience while I worked to get definitive answers from the applicant. The applicant has accepted your proposed changes to the various goods and services (in bold below), we have inserted edits where you had bracketed your additional suggestions and, where appropriate, we have included language regarding both research purposes and medical treatment purposes in Classes 42 and 44. With all of that, I believe the language now conforms to your requested standards. For your ease, all of the proposed Examiner’s Amendment language is below:
Class 10: Apparatus for the regeneration of stem cells for medical purposes, namely, for gene editing, gene collection, and gene production (the goods in this class remain unchanged).
Class 11: Refrigerated medical container for storage, transportation and cooling of medicines and pharmaceuticals, namely, frozen storage containers for stem cells.
Class 36: Insurance services, namely, underwriting, issuance and administration of stem cell insurance.
Class 40: Manufacture of medical devices to order and/or specification of others; biomanufacturing for others, namely, manufacturing of medical and biological materials; manufacture of machinery for generating stem cells to order and/or specification of others; biomanufacturing for others, namely, manufacturing of clinical grade cells.
Class 42: Scientific and medical research in the field of stem cell, gene research, and gene editing; blood analysis services; medical and scientific research, namely, testing, inspection, and research of stem cells; biological cloning services, namely, organ reproduction services; biological cloning services, namely, DNA, RNA and protein reproduction services; testing, inspection, and research of cosmetics; Collection of biological materials, namely, stem cells for scientific research purposes; medical and scientific research services, namely, research in the field of stem cells and gene diagnostics; DNA analysis services for scientific research purposes; drug discovery services; scientific research services, namely, research in the field of regenerative medicine; stem cell and gene expression analysis for scientific research purposes; stem cell and epigenetic state analysis for scientific research purposes; proteomic analysis for scientific research purposes.
Class 44: Stem cell and gene collection services; medical analysis services for diagnostic and treatment purposes provided by medical laboratories in the nature of stem cell and gene expression analysis; medical analysis services for diagnostic and treatment purposes provided by medical laboratories in the nature of stem cell and epigenetic state analysis; medical analysis services for diagnostic and treatment purposes provided by medical laboratories in the nature of proteomic analysis; healthcare; medical assistance; stem cell therapy and stem cell production services; stem cell and gene banking services; stem cell banking in the nature of stem cell freezing services; cosmetic surgery services; stem cell therapy services, namely, stem cell and gene transplantation services; collection of biological materials, namely, stem cells for medical treatment purposes; medical analysis services for diagnostic and treatment purposes provided by medical laboratories in the nature of stem cell and gene diagnostic services; medical diagnostic and treatment services in the field of regenerative medical services.
Certainly let me know if you have any follow-up questions or concerns on any of it.
Otherwise, Happy Holidays!
All my best,
Andy
Andrew N. Spivak
Mosaic Legal Group, PLLC
From: Clark, Andrew <Andrew.Clark@USPTO.GOV>
Sent: Friday, December 20, 2019 10:21 AM
To: Andy Spivak <aspivak@mosaiclegalgroup.com>
Subject: RE: I PEACE INC. TRADEMARK APPLICATIONS - RESPONSE REQUESTED BY 12/20/2019
Hi Andy,
I just wanted to follow up on this. If you need more time, I am happy to send a Priority Action your way. Then we can fix the ID via Examiner’s Amendment on the back end when you hear back from your client.
Please let me know what you would prefer.
Best,
Andrew
__________________________________
Andrew T. Clark
Examining Attorney, Law Office 107
United States Patent and Trademark Office
(571)270-7304
Notice to applicants and attorneys: relevant e-mail communications will be uploaded to the official application record in accordance with 37 C.F.R. §2.191 and TMEP §§709.04 - .05
From: Andy Spivak <aspivak@mosaiclegalgroup.com>
Sent: Monday, December 16, 2019 4:46 PM
To: Clark, Andrew <Andrew.Clark@USPTO.GOV>
Subject: RE: I PEACE INC. TRADEMARK APPLICATIONS - RESPONSE REQUESTED BY 12/20/2019
Hi Andrew,
Thanks for the phone call and explanations as well. I will do my best to secure an answer by Friday. Stay tuned!
All my best,
Andy
Andrew N. Spivak
Mosaic Legal Group, PLLC
From: Clark, Andrew <Andrew.Clark@USPTO.GOV>
Sent: Monday, December 16, 2019 4:04 PM
To: Andy Spivak <aspivak@mosaiclegalgroup.com>
Subject: I PEACE INC. TRADEMARK APPLICATIONS - RESPONSE REQUESTED BY 12/20/2019
Hi Andy,
It was great discussing this case on the phone this afternoon. Below are my suggested edits to the identifications provided in bold as well as comments where applicable.
Class 010
Apparatus for the regeneration of stem cells for medical purposes, namely, for gene editing, gene collection, and gene production
Acceptable as written
Class 011
Frozen storage containers for stem cells
Refrigerated medical container for storage, transportation and cooling of medicines and pharmaceuticals, namely, frozen storage containers for stem cells
Class 036
Insurance services, namely, issuance and administration of stem cell insurance
Insurance services, namely, underwriting, issuance and administration of stem cell insurance
Class 040
Manufacture of medical devices;
Manufacture of medical devices to order and/or specification of others
manufacture of medical, biological materials;
Biomanufacturing for others, namely, manufacturing of medical and biological materials;
manufacture of machinery for generating stem cells;
manufacture of machinery for generating stem cells to order and/or specification of others
manufacture of clinical grade cells
Biomanufacturing for others, namely, manufacturing of clinical grade cells
Class 042
Stem cell and gene research and editing services;
Scientific and medical research in the field of stem cell, gene research, and gene editing; gene
blood analysis services;
Acceptable as written
testing, inspection, and research of stem cells;
Medical and scientific research, namely, testing, inspection, and research of stem cells
organ reproduction services;
Biological cloning services, namely, organ reproduction services
DNA, RNA, and protein reproduction services;
Biological cloning services, namely, DNA, RNA and protein reproduction services
testing, inspection, and research of cosmetics;
Acceptable as written
collection of biological materials;
Collection of biological materials, namely, {applicant must specify biological materials being collected, e.g., blood, stem cells, plasma, etc.} for scientific research purposes;
If these services are being provided for medical treatment purposes, the services would need to be clarified and moved to Class 44.
Collection of biological materials, namely, {applicant must specify biological materials being collected, e.g., blood, stem cells, plasma, etc.} for medical treatment purposes;
stem cell and gene diagnostic services;
Medical and scientific research services, namely, research in the field of stem cells and gene diagnostics
However, if these services are being provided as medical treatment, the services should be reclassified in Class 044 and clarified to indicate such as follows.
Medical analysis services for diagnostic and treatment purposes provided by medical laboratories in the nature of stem cell and gene diagnostic services
DNA analysis services for scientific research purposes;
Acceptable as written
drug discovery services;
Acceptable as written
regenerative medical services
Scientific research services, namely, research in the field of regenerative medicine
However, if these services are being provided as medical treatment, the services should be reclassified in Class 044 and clarified to indicate such as follows.
Medical diagnostic and treatment services in the field of regenerative medical services
Class 044
Stem cell and gene collection services;
Acceptable as written
stem cell and gene expression analysis;
Medical analysis services for diagnostic and treatment purposes provided by medical laboratories in the nature of stem cell and gene expression analysis
If these analysis services are being provided for scientific research purposes they should be reclassified in Class 042 and amended as follows.
Stem cell and gene expression analysis for scientific research purposes
stem cell and epigenetic state analysis;
Medical analysis services for diagnostic and treatment purposes provided by medical laboratories in the nature of stem cell and epigenetic state analysis
If these analysis services are being provided for scientific research purposes they should be reclassified in Class 042 and amended as follows.
Stem cell and epigenetic state analysis for scientific research purposes
proteomic analysis;
Medical analysis services for diagnostic and treatment purposes provided by medical laboratories in the nature of proteomic analysis
If these analysis services are being provided for scientific research purposes they should be reclassified in Class 042 and amended as follows.
Proteomic analysis for scientific research purposes
healthcare;
Acceptable as written
medical assistance;
Acceptable as written
stem cell therapy and production services;
stem cell therapy and stem cell production services
stem cell and gene banking services;
Acceptable
stem cell freezing services;
Stem cell banking in the nature of stem cell freezing services;
cosmetic surgery services;
Acceptable as written
stem cell and gene transplantation services
Stem cell therapy services, namely, stem cell and gene transplantation services
Please let me know if you have any questions about the above suggested amendments or would like to discuss any of the above further. If you could let me know by Friday, December 20th, whether the above amendments are acceptable that would be most appreciated.
Best,
Andrew
__________________________________
Andrew T. Clark
Examining Attorney, Law Office 107
United States Patent and Trademark Office
(571)270-7304
Notice to applicants and attorneys: relevant e-mail communications will be uploaded to the official application record in accordance with 37 C.F.R. §2.191 and TMEP §§709.04 - .05