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. 88639685 ODXX(Standard Characters, see http://uspto.report/TM/88639685/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 001 for assays for testing tissue samples and bodily fluids for use in cancer detection, analysis and prognosis; diagnostic assays for testing tissue samples and bodily fluids for use in cancer detection, analysis and prognosis; clinical diagnostic reagents; reagents for scientific or medical research use, namely, reagents for use in preparation of RNA samples; kits consisting primarily of enzymes for scientific and research purposes, nucleic acids, buffers, reagents and assays for use in disease testing; diagnostic kits comprised primarily of diagnostic reagents for clinical or medical laboratory use and diagnostic assays for testing tissue samples and bodily fluids for use in cancer detection, analysis and prognosis; diagnostic kits comprised primarily of enzymes for scientific and research purposes, nucleic acids, buffers, reagents and assays for use in disease testing
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.

Proposed:
Tracked Text Description: assays for testing tissue samples and bodily fluids for use in cancer detection, analysis and prognosis; Assays for testing tissue samples and bodily fluids for use in scientific research in the field of cancer detection, analysis and prognosis; diagnostic assays for testing tissue samples and bodily fluids for use in cancer detection, analysis and prognosis; diagnostic assays for testing tissue samples and bodily fluids for use in scientific research in the field of cancer detection, analysis and prognosis; clinical diagnostic reagents; reagents for scientific or medical research use, namely, reagents for use in preparation of RNA samples; kits consisting primarily of enzymes for scientific and research purposes, nucleic acids, buffers, reagents and assays for use in disease testing; kits consisting primarily of enzymes for scientific and research purposes, and also including nucleic acids, buffers, reagents and assays for use in disease testing; diagnostic kits comprised primarily of diagnostic reagents for clinical or medical laboratory use and diagnostic assays for testing tissue samples and bodily fluids for use in cancer detection, analysis and prognosis; diagnostic kits comprised primarily of diagnostic reagents for clinical or medical laboratory use and diagnostic assays for testing tissue samples and bodily fluids for clinical or medical laboratory use in the field of cancer detection, analysis and prognosis; diagnostic kits comprised primarily of enzymes for scientific and research purposes, nucleic acids, buffers, reagents and assays for use in disease testing; diagnostic kits comprised primarily of enzymes for scientific and research purposes, and also including nucleic acids, buffers, reagents and assays for use in disease testingClass 001 for Assays for testing tissue samples and bodily fluids for use in scientific research in the field of cancer detection, analysis and prognosis; diagnostic assays for testing tissue samples and bodily fluids for use in scientific research in the field of cancer detection, analysis and prognosis; clinical diagnostic reagents; reagents for scientific or medical research use, namely, reagents for use in preparation of RNA samples; kits consisting primarily of enzymes for scientific and research purposes, and also including nucleic acids, buffers, reagents and assays for use in disease testing; diagnostic kits comprised primarily of diagnostic reagents for clinical or medical laboratory use and diagnostic assays for testing tissue samples and bodily fluids for clinical or medical laboratory use in the field of cancer detection, analysis and prognosis; diagnostic kits comprised primarily of enzymes for scientific and research purposes, and also including nucleic acids, buffers, reagents and assays for use in disease testing
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 005 for Diagnostic kits comprised of medical diagnostic reagents and diagnostic assays for testing tissue samples and bodily fluids for use in cancer detection, analysis and prognosis; medical reagents; medical diagnostic reagents; clinical diagnostic reagents; kits for medical purposes consisting primarily of enzymes, nucleic acids, buffers, reagents and assays for use in disease testing and classification; diagnostic kits consisting primarily of enzymes for medical purposes, nucleic acids, buffers, reagents and assays for use in disease testing and classification; medical diagnostic assays for testing of bodily fluids and tissue samples for use in disease detection and testing for medical and prognostic purposes; medical diagnostic reagents and assays for testing bodily fluids and tissue samples for use in disease testing and classification; enzyme preparations for medical purposes; biological preparations for the detection, diagnosis and monitoring of cancer; preparations for detecting genetic predispositions for medical purposes; biological preparations for use in the diagnosis, analysis and prognosis of cancer; diagnostic agents, preparations and substances for medical purposes
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.

Proposed:
Tracked Text Description: Diagnostic kits comprised of medical diagnostic reagents and diagnostic assays for testing tissue samples and bodily fluids for use in cancer detection, analysis and prognosis; medical reagents; medical diagnostic reagents; clinical diagnostic reagents; kits for medical purposes consisting primarily of enzymes, nucleic acids, buffers, reagents and assays for use in disease testing and classification; diagnostic kits consisting primarily of enzymes for medical purposes, and also including nucleic acids, buffers, reagents and assays for use in disease testing and classification; diagnostic kits consisting primarily of enzymes for medical purposes, nucleic acids, buffers, reagents and assays for use in disease testing and classification; medical diagnostic assays for testing of bodily fluids and tissue samples for use in disease detection and testing for medical and prognostic purposes; medical diagnostic reagents and assays for testing bodily fluids and tissue samples for use in disease testing and classification; enzyme preparations for medical purposes; biological preparations for the detection, diagnosis and monitoring of cancer for treatment purposes; biological preparations for the detection, diagnosis and monitoring of cancer; preparations for detecting genetic predispositions for medical purposes; biological preparations for use in the diagnosis, analysis and prognosis of cancer, for treatment purposes; biological preparations for use in the diagnosis, analysis and prognosis of cancer; diagnostic agents, preparations and substances for medical purposesClass 005 for Diagnostic kits comprised of medical diagnostic reagents and diagnostic assays for testing tissue samples and bodily fluids for use in cancer detection, analysis and prognosis; medical reagents; medical diagnostic reagents; kits for medical purposes consisting primarily of enzymes, nucleic acids, buffers, reagents and assays for use in disease testing and classification; diagnostic kits consisting primarily of enzymes for medical purposes, and also including nucleic acids, buffers, reagents and assays for use in disease testing and classification; medical diagnostic assays for testing of bodily fluids and tissue samples for use in disease detection and testing for medical and prognostic purposes; medical diagnostic reagents and assays for testing bodily fluids and tissue samples for use in disease testing and classification; enzyme preparations for medical purposes; biological preparations for the detection, diagnosis and monitoring of cancer for treatment purposes; preparations for detecting genetic predispositions for medical purposes; biological preparations for use in the diagnosis, analysis and prognosis of cancer, for treatment purposes; diagnostic agents, 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.

The applicant's current attorney information: Margaret McHugh. Margaret McHugh of KILPATRICK TOWNSEND & STOCKTON LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      1100 PEACHTREE STREET NE, SUITE 2800
      MAILSTOP IP DOCKETING-22
      ATLANTA, Georgia 30309
      US
The docket/reference number is 1159893.

The phone number is 415-273-0200.

The fax number is 415-576-0300.

The email address is tmadmin@Kilpatricktownsend.com

The applicants proposed attorney information: Margaret McHugh. Margaret McHugh of KILPATRICK TOWNSEND & STOCKTON LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      Two Embarcadero Center, Suite 1900
      San Francisco, California 94111
      United States
The docket/reference number is 1159893.

The phone number is 415-576-0200.

The fax number is 415-576-0300.

The email address is mmchugh@kilpatricktownsend.com

Margaret McHugh 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.
The applicant's current correspondence information: MARGARET MCHUGH. MARGARET MCHUGH of KILPATRICK TOWNSEND & STOCKTON LLP, is located at

      1100 PEACHTREE STREET NE, SUITE 2800
      MAILSTOP IP DOCKETING-22
      ATLANTA, Georgia 30309
      US
The docket/reference number is 1159893.

The phone number is 415-273-0200.

The fax number is 415-576-0300.

The email address is tmadmin@Kilpatricktownsend.com; vcordial@kilpatricktownsend.com; MMchugh@kilpatricktownsend.com; PCheng@kilpatricktownsend.com

The applicants proposed correspondence information: Margaret McHugh. Margaret McHugh of KILPATRICK TOWNSEND & STOCKTON LLP, is located at

      Two Embarcadero Center, Suite 1900
      San Francisco, California 94111
      United States
The docket/reference number is 1159893.

The phone number is 415-576-0200.

The fax number is 415-576-0300.

The email address is tmadmin@kilpatricktownsend.com; mmchugh@kilpatricktownsend.com

ADDITIONAL STATEMENTS
Significance of wording, letter(s), or numeral(s)
ODXX appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as used in connection with the goods/services/collective membership organization listed in the application, or any geographical significance.


SIGNATURE(S)
Response Signature
Signature: /margaret c mchugh/     Date: 01/23/2020
Signatory's Name: Margaret McHugh
Signatory's Position: Attorney of Record, California Bar member

Signatory's Phone Number: (415) 576-0200

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:    MARGARET MCHUGH
   KILPATRICK TOWNSEND & STOCKTON LLP
   1100 PEACHTREE STREET NE, SUITE 2800
   MAILSTOP IP DOCKETING-22
   ATLANTA, Georgia 30309
Mailing Address:    Margaret McHugh
   KILPATRICK TOWNSEND & STOCKTON LLP
   Two Embarcadero Center, Suite 1900
   San Francisco, California 94111
        
Serial Number: 88639685
Internet Transmission Date: Thu Jan 23 21:32:18 EST 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-202001232132188
85796-88639685-700e6881c8c56c575b2f9df54
1312046d89a715fa75e5f8f8b7699ad4225ce154
-N/A-N/A-20200123194546041802