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 09/30/2020)

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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 09/30/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88838732 ELECSYS GALAD(Standard Characters, see http://uspto.report/TM/88838732/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for computer software for use in the field of in vitro diagnostics; computer software featuring algorithms for laboratory test data analysis; Software for the custom design of assays and reagents for use in the medical and life sciences fields; computer software having processing algorithm used to identify, filter, analyze, visualize and manage data from biological information
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: computer software for use in the field of in vitro diagnostics; downloadable computer software for use in the field of in vitro diagnostics; computer software featuring algorithms for laboratory test data analysis; downloadable computer software featuring algorithms for laboratory test data analysis; Software for the custom design of assays and reagents for use in the medical and life sciences fields; downloadable computer software for the custom design of assays and reagents for use in the medical and life sciences fields; computer software having processing algorithm used to identify, filter, analyze, visualize and manage data from biological informationClass 009 for downloadable computer software for use in the field of in vitro diagnostics; downloadable computer software featuring algorithms for laboratory test data analysis; downloadable computer software for the custom design of assays and reagents for use in the medical and life sciences fields; computer software having processing algorithm used to identify, filter, analyze, visualize and manage data from biological information
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.

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use GALAD apart from the mark as shown.


Significance of wording, letter(s), or numeral(s)
GALAD appearing in the mark means or signifies or is a term of art for scoring algorithm for hepatocellular carcinoma diagnoses in the relevant trade or industry or as used in connection with the goods/services/collective membership organization listed in the application. ELECSYS 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.


Miscellaneous Statement
ELECSYS is a registration (Reg. No. 2182127) owned by applicant.

Correspondence Information (current):
      Justin L. Sage
      PRIMARY EMAIL FOR CORRESPONDENCE: indianapolis.trademarks@roche.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): debra.robinson@roche.com; emily.wilson@roche.com
Correspondence Information (proposed):
      Justin L. Sage
      PRIMARY EMAIL FOR CORRESPONDENCE: indianapolis.trademarks@roche.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): debra.robinson@roche.com; emily.wilson@roche.com

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).

SIGNATURE(S)
Response Signature
Signature: /jls/     Date: 11/09/2020
Signatory's Name: Justin L. Sage
Signatory's Position: Attorney of record, Indiana Bar member

Signatory's Phone Number: 317-521-7503

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:    Justin L. Sage
   Roche Diagnostics Operations, Inc.
   
   9115 Hague Road
   Indianapolis, Indiana 46250
Mailing Address:    Justin L. Sage
   Roche Diagnostics Operations, Inc.
   9115 Hague Road
   Indianapolis, Indiana 46250
        
Serial Number: 88838732
Internet Transmission Date: Mon Nov 09 16:11:57 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XXX-2020110916115784
2087-88838732-750284cb23f98c885693d7ce6e
c21d8e1b6d25fe88d1bb82fca4f3d1d12f3644-N
/A-N/A-20201109155456644659