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)

---

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. 88642455 TESSERA(Standard Characters, see http://uspto.report/TM/88642455/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 001 for Agents for scientific and research use, namely, for manipulating or modifying DNA; pharmaceutical preparations, therapeutic agents and products, namely, for gene therapy and DNA editing; pharmaceutical and biological preparations based on gene, genome, and cellular editing, modulation, and modification for use in human therapeutics; pharmaceutical preparations, namely, therapeutic pharmaceuticals developed through genome modifications for the prevention and treatment of genomic disorders; technology for enabling the engineering and modification of DNA, namely, molecular and cellular biology reagents, techniques and assays for the modification of cells and DNA
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: Agents for scientific and research use, namely, for manipulating or modifying DNA; chemical and biological agents for scientific and research use, namely, for manipulating or modifying DNA; pharmaceutical preparations, therapeutic agents and products, namely, for gene therapy and DNA editing; technology for enabling the engineering and modification of DNA, namely, molecular and cellular biology reagents, techniques and assays for the modification of cells and DNA; pharmaceutical and biological preparations based on gene, genome, and cellular editing, modulation, and modification for use in human therapeutics; pharmaceutical preparations, namely, therapeutic pharmaceuticals developed through genome modifications for the prevention and treatment of genomic disordersClass 001 for chemical and biological agents for scientific and research use, namely, for manipulating or modifying DNA; technology for enabling the engineering and modification of DNA, namely, molecular and cellular biology reagents, techniques and assays for the modification of cells and DNA
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 hereby adds the following class of goods/services to the application:
New: Class 005 for pharmaceutical preparations and therapeutic agents, namely, for gene therapy and DNA editing; pharmaceutical and biological preparations based on gene, genome, and cellular editing, modulation, and modification for use in human therapeutics; pharmaceutical preparations, namely, therapeutic pharmaceuticals developed through genome modifications for the prevention and treatment of genomic disorders
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.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: TESSERA THERAPEUTICS, INC., a corporation of Delaware, having an address of
      55 CAMBRIDGE PARKWAY, SUITE 800E
      CAMBRIDGE, Massachusetts 02142
      United States

Proposed: TESSERA THERAPEUTICS, INC., a corporation of Delaware, having an address of
      55 CAMBRIDGE PARKWAY, SUITE 800E
      CAMBRIDGE, Massachusetts 02142
      United States
      Email Address: XXXX
Correspondence Information (current):
      CHRISTINA M. LICURSI, ESQ.
      PRIMARY EMAIL FOR CORRESPONDENCE: cxltrademarks@wolfgreenfield.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is F08172000300.
Correspondence Information (proposed):
      Christina M. Licursi, Esq.
      PRIMARY EMAIL FOR CORRESPONDENCE: cxltrademarks@wolfgreenfield.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): azstrademarks@wolfgreenfield.com

The docket/reference number is F08172000300.

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).

FEE(S)
Fee(s) in the amount of $275 is being submitted.

SIGNATURE(S)
Declaration Signature
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice.
Response Signature
Signature: /Amanda Slade/     Date: 04/20/2020
Signatory's Name: Amanda Slade
Signatory's Position: Associate Attorney, Wolf, Greenfield & Sacks, P.C., Massachusetts Bar Member

Signatory's Phone Number: 617-646-8193

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:    CHRISTINA M. LICURSI, ESQ.
   WOLF GREENFIELD & SACKS, P.C.
   
   600 ATLANTIC AVENUE
   BOSTON, Massachusetts 02210
Mailing Address:    Christina M. Licursi, Esq.
   WOLF GREENFIELD & SACKS, P.C.
   600 ATLANTIC AVENUE
   BOSTON, Massachusetts 02210
        
RAM Sale Number: 88642455
RAM Accounting Date: 04/20/2020
        
Serial Number: 88642455
Internet Transmission Date: Mon Apr 20 13:37:34 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XX.X-202004201337345111
31-88642455-7109f4290f52f11c867185bcb65a
ebb636c9c82468cc8443d78e83ca09acedd7f-CC
-37328162-20200420113849790775