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 11/30/2023)

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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 11/30/2023)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88914422 MOBIE(Standard Characters, see http://uspto.report/TM/88914422/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Please see the actual argument text attached within the Evidence section.

EVIDENCE
Evidence has been attached: Applicant's Arguments.
Original PDF file:
evi_63764866-202012031743 42233880_._Response_to_Of fice_Action_for_MOBIE_fil ed_12-03-2020.PDF
Converted PDF file(s) ( 1 page) Evidence-1

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Laboratory apparatus for biological analysis of small and large molecules, biological samples, therapeutics and biologics, and other analytes; laboratory apparatus for molecular analysis of small and large molecules, biological samples, therapeutics and biologics, and other analytes; laboratory apparatus for detecting disease in small and large molecules, biological samples, therapeutics and biologics, and other analytes; laboratory apparatus for analyzing small and large molecules, biological samples, therapeutics and biologics, and other analytes in connection with the development of pharmaceuticals; apparatus for analyzing small and large molecules, biological samples, therapeutics and biologics, and other analytes via ion manipulation; software, hardware and firmware for controlling the foregoing apparatus
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: Laboratory apparatus for biological analysis of small and large molecules, biological samples, therapeutics and biologics, and other analytes; laboratory apparatus for molecular analysis of small and large molecules, biological samples, therapeutics and biologics, and other analytes; laboratory apparatus for detecting disease in small and large molecules, biological samples, therapeutics and biologics, and other analytes; laboratory apparatus for analyzing small and large molecules, biological samples, therapeutics and biologics, and other analytes in connection with the development of pharmaceuticals; apparatus for analyzing small and large molecules, biological samples, therapeutics and biologics, and other analytes via ion manipulation; software, hardware and firmware for controlling the foregoing apparatus; recorded software, computer hardware and recorded firmware for controlling the foregoing apparatus, sold both separately and as a unit.Class 009 for Laboratory apparatus for biological analysis of small and large molecules, biological samples, therapeutics and biologics, and other analytes; laboratory apparatus for molecular analysis of small and large molecules, biological samples, therapeutics and biologics, and other analytes; laboratory apparatus for detecting disease in small and large molecules, biological samples, therapeutics and biologics, and other analytes; laboratory apparatus for analyzing small and large molecules, biological samples, therapeutics and biologics, and other analytes in connection with the development of pharmaceuticals; apparatus for analyzing small and large molecules, biological samples, therapeutics and biologics, and other analytes via ion manipulation; recorded software, computer hardware and recorded firmware for controlling the foregoing apparatus, sold both separately and as a unit.
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 042 for Providing temporary use of on-line non-downloadable computer software and firmware for controlling laboratory apparatuses.
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.
Correspondence Information (current):
      BASAM E. NABULSI, ESQ.
      PRIMARY EMAIL FOR CORRESPONDENCE: bnabulsi@mccarter.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): dewen@mccarter.com; bbanjac@mccarter.com; hartforddocketing@mccarter.com

The docket/reference number is 127388-00086.
Correspondence Information (proposed):
      Basam E. Nabulsi, Esq.
      PRIMARY EMAIL FOR CORRESPONDENCE: bnabulsi@mccarter.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): dewen@mccarter.com; bbanjac@mccarter.com; hartforddocketing@mccarter.com

The docket/reference number is 127388-00086.

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

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /ben/      Date: 12/04/2020
Signatory's Name: Basam E. Nabulsi, Esq.
Signatory's Position: Attorney for Applicant, CT Bar Member
Signatory's Phone Number: 203-399-5920


Response Signature
Signature: /ben/     Date: 12/04/2020
Signatory's Name: Basam E. Nabulsi, Esq.
Signatory's Position: Attorney for Applicant, CT Bar Member

Signatory's Phone Number: 203-399-5920

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:    BASAM E. NABULSI, ESQ.
   MCCARTER & ENGLISH, LLP
   CITYPLACE I
   185 ASYLUM STREET
   HARTFORD, Connecticut 06103
Mailing Address:    Basam E. Nabulsi, Esq.
   MCCARTER & ENGLISH, LLP
   CITYPLACE I
   185 ASYLUM STREET
   HARTFORD, Connecticut 06103
        
RAM Sale Number: 88914422
RAM Accounting Date: 12/04/2020
        
Serial Number: 88914422
Internet Transmission Date: Fri Dec 04 10:56:14 ET 2020
TEAS Stamp: USPTO/ROA-XX.XX.XX.XX-202012041056144988
08-88914422-750d74aa229ae821243b18af26ff
8e32b7910b992b1efa8b87b131cff548b7143b-D
A-56131164-20201204105346213051