Application

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 1478 (Rev 09/2006)

OMB No. 0651-0009 (Exp 02/28/2021)

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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 1478 (Rev 09/2006)

OMB No. 0651-0009 (Exp 02/28/2021)

Trademark/Service Mark Application, Principal Register

Serial Number: 90093519

Filing Date: 08/04/2020

To the Commissioner for Trademarks:

MARK: ILLUMINA (Standard Characters, see mark)
The literal element of the mark consists of ILLUMINA. The mark consists of standard characters, without claim to any particular font style, size, or color.
The applicant, Illumina, Inc., a corporation of Delaware, having an address of
      5200 Illumina Way
      San Diego, California 92122
      United States
      XXXX

requests registration of the trademark/service mark identified above in the United States Patent and Trademark Office on the Principal Register established by the Act of July 5, 1946 (15 U.S.C. Section 1051 et seq.), as amended, for the following:

International Class 035:  Advertising and promotion services in the fields of medicine, medical diagnostics, veterinary diagnostics, clinical diagnostics, medical research, veterinary research, diagnostics, clinical research, drug development, pharmaceuticals, life sciences, biology, microbiology, biotechnology, metagenomics, genetic testing, genetics, oncology, prenatal, diseases, forensics, in vitro diagnostics, infectious diseases, reproductive health, and personalized medicine; Advertising services; Analyzing, compiling and providing business data; Compilation of information into computer databases; Retail store services featuring goods in the fields of medicine, medical diagnostics, veterinary diagnostics, clinical diagnostics, medical research, veterinary research, diagnostics, clinical research, drug development, life sciences, biology, microbiology, biotechnology, metagenomics, genetic testing, genetics, oncology, prenatal, diseases, forensics, in vitro diagnostics, infectious diseases, reproductive health, and personalized medicine; Providing an online searchable database in the fields of medicine, medical diagnostics, veterinary diagnostics, clinical diagnostics, medical research, veterinary research, diagnostics, clinical research, drug development, life sciences, biology, microbiology, biotechnology, metagenomics, genetic testing, genetics, oncology, prenatal, diseases, forensics, in vitro diagnostics, infectious diseases, reproductive health, and personalized medicine; Organizing, arranging and conducting events for business, commercial, advertising or promotional purposes; Organizing and conducting networking events in the field of medicine, medical diagnostics, veterinary diagnostics, clinical diagnostics, medical research, veterinary research, diagnostics, clinical research, drug development, life sciences, biology, microbiology, biotechnology, metagenomics, genetic testing, genetics, oncology, prenatal, diseases, forensics, in vitro diagnostics, infectious diseases, reproductive health, and personalized medicine; Consulting in the fields of laboratory operations management; Promoting public interest and awareness of medicine, medical diagnostics, veterinary diagnostics, clinical diagnostics, medical research, veterinary research, diagnostics, clinical research, drug development, life sciences, biology, microbiology, biotechnology, metagenomics, genetic testing, genetics, oncology, prenatal, diseases, forensics, in vitro diagnostics, infectious diseases, reproductive health, and personalized medicine; Charitable services
Intent to Use: The applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the identified goods/services.

International Class 042:  Services for scientific and research purposes; Medical research; Providing non-downloadable computer software; Providing on-line non-downloadable computer search engine software; Providing online non-downloadable computer software for the custom design and ordering of assays, agents, enzymes, nucleotides, nucleic acids, buffers, chemical preparations, biological preparations, and reagents; Software as a service (SaaS) services; Platform as a service (PaaS) services; Software as a service (SaaS) and platform as a service (PaaS), including hosting software for use by others for use in the custom design and ordering of assays, agents, enzymes, nucleotides, nucleic acids, buffers, chemical preparations, biological preparations and reagents in the fields of nucleic acid sequencing, genotyping, medical diagnostics, veterinary diagnostics, clinical diagnostics, medical research, veterinary research, diagnostic research, clinical research, drug development, drug development research, medical laboratory research, veterinary science and research, life sciences, biology, microbiology, biotechnology, agriculture, forensics, food safety, metagenomics, genetic testing, genetics, oncology, prenatal, diseases, forensics, in vitro diagnostics, infectious diseases, reproductive health, and personalized medicine; Software as a service (SAAS) services and platform as a service (PaaS) for use in nucleic acid sequencing, genotyping, medical diagnostics, veterinary diagnostics, clinical diagnostics, medical research, veterinary research, diagnostic research, clinical research, drug development, drug development research, medical laboratory research, veterinary science and research, life sciences, biology, microbiology, biotechnology, agriculture, forensics, food safety, metagenomics, genetic testing, genetics, oncology, prenatal, diseases, forensics, in vitro diagnostics, infectious diseases, reproductive health, and personalized medicine; Software as a service (SAAS) services and platform as a service (PaaS) services for collecting, storing, analyzing, sharing and reporting biological, genetic, clinical, medical, and diagnostic information, and for sample tracking and managing projects, laboratory workflow and data, all the foregoing for use in the fields of nucleic acid sequencing, genotyping, medical diagnostics, veterinary diagnostics, clinical diagnostics, medical research, veterinary research, diagnostic research, clinical research, drug development, drug development research, medical laboratory research, veterinary science and research, life sciences, biology, microbiology, biotechnology, agriculture, forensics, food safety, metagenomics, genetic testing, genetics, oncology, prenatal, diseases, forensics, in vitro diagnostics, infectious diseases, reproductive health, and personalized medicine; Hosting an online network service that enables users to store, analyze and share data in the fields of nucleic acid sequencing, genotyping, medical diagnostics, veterinary diagnostics, clinical diagnostics, medical research, veterinary research, diagnostic research, clinical research, drug development, drug development research, medical laboratory research, veterinary science and research, life sciences, biology, microbiology, biotechnology, agriculture, forensics, food safety, metagenomics, genetic testing, genetics, oncology, prenatal, diseases, forensics, in vitro diagnostics, infectious diseases, reproductive health, and personalized medicine; Nucleic acid sequencing and analysis services for scientific and research purposes; Genome sequencing and analysis services for scientific and research purposes; Genetic analysis and reporting services for scientific and research purposes; Installation and maintenance of computer software, databases, and database applications for others; Installation and maintenance of computer software and database applications for others for use in the fields of nucleic acid sequencing and genotyping, medical diagnostics, clinical diagnostics, medical research, clinical research, life sciences, biology, drug development, drug development research, molecular diagnostics, laboratory medicine, biotechnology, agriculture, forensics, genetic testing, genetics, oncology, prenatal, diseases, forensics, in vitro diagnostics, infectious diseases, reproductive health, and personalized medicine; Clinical diagnostic and consultation services in the fields of nucleic acid sequencing, genotyping, medical diagnostics, veterinary diagnostics, clinical diagnostics, medical research, veterinary research, diagnostics, clinical research, drug development, drug development research, medical laboratory research, veterinary science and research, life sciences, biology, microbiology, biotechnology, agriculture, forensics, food safety, metagenomics, genetic testing, genetics, oncology, prenatal, diseases, forensics, in vitro diagnostics, infectious diseases, reproductive health, and personalized medicine; Scientific and technological services and research relating thereto; Scientific laboratory services; Medical laboratory services; Computer services; Computer services, including cloud hosting provider services and onsite provider services for storing, analyzing and sharing information in the fields of nucleic acid sequencing, genotyping, medical diagnostics, veterinary diagnostics, clinical diagnostics, medical research, veterinary research, diagnostic research, clinical research, drug development, drug development research, medical laboratory research, veterinary science and research, life sciences, biology, microbiology, biotechnology, agriculture, forensics, food safety, metagenomics, genetic testing, genetics, oncology, prenatal, diseases, forensics, in vitro diagnostics, infectious diseases, reproductive health, and personalized medicine; Providing an online network service that enables users to store, access, manage, analyze and share data for use in the fields of nucleic acid sequencing, genotyping, medical diagnostics, veterinary diagnostics, clinical diagnostics, medical research, veterinary research, diagnostic research, clinical research, drug development, drug development research, medical laboratory research, veterinary science and research, life sciences, biology, microbiology, biotechnology, agriculture, forensics, food safety, metagenomics, genetic testing, genetics, oncology, prenatal, diseases, forensics, in vitro diagnostics, infectious diseases, reproductive health, and personalized medicine; Design and development of automated laboratory apparatus, laboratory equipment, and computer systems for others; Providing consulting services for others relating to data management and information technology infrastructure development; Providing consulting services for others relating to capacity planning, risk mitigation, fleet management, and provision of training facilities; Proof of concept services for others, including scientific and technical consulting and research services relating to experiment design, library preparation, library quality control, sample tracking, sample quality control, and preparation of customized protocols and user guides; Design and preparation of databases for others for collecting, storing, analyzing, and reporting biological information; Computer diagnostic services in analyzing and sequencing nucleic acids and other biological molecules; Development of automated laboratory equipment and systems, and computer hardware for collecting, storing, analyzing, sharing and reporting biological, genetic, clinical, medical, and diagnostic information, and for sample tracking and managing projects, laboratory workflow and data to the order and specification of others; Technical support service; Technical support services, including infrastructure management services for monitoring, administration and management of cloud computing IT and application systems in the fields of nucleic acid sequencing, genotyping, medical diagnostics, veterinary diagnostics, clinical diagnostics, medical research, veterinary research, diagnostic research, clinical research, drug development, drug development research, medical laboratory research, veterinary science and research, life sciences, biology, microbiology, biotechnology, agriculture, forensics, food safety, metagenomics, genetic testing, genetics, oncology, prenatal, diseases, forensics, in vitro diagnostics, infectious diseases, reproductive health, and personalized medicine; Providing a website featuring information related to medical devices, diagnostics and drugs; Testing, analysis, and evaluation of the knowledge, skills and abilities of others in the field of medical diagnostics, veterinary diagnostics, clinical diagnostics, medical research, veterinary research, diagnostics, clinical research, drug development, pharmaceuticals, life sciences, biology, microbiology, biotechnology, metagenomics, genetic testing, and genetics to determine conformity with certification standards; Updating of computer software for others; Cloud computing featuring software; Providing a website featuring educational information in the field of medicine, medical diagnostics, veterinary diagnostics, clinical diagnostics, medical research, veterinary research, diagnostics, clinical research, drug development, pharmaceuticals, life sciences, biology, microbiology, biotechnology, metagenomics, genetic testing, genetics, oncology, prenatal, diseases, forensics, in vitro diagnostics, infectious diseases, reproductive health, and personalized medicine; Biological material analysis services; Database design and development; DNA analysis services for the identification and treatment of disease
Intent to Use: The applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the identified goods/services.

International Class 044:  Medical services; Nucleic acid sequencing and analysis services for medical, agriculture, horticulture, veterinary, and husbandry purposes; Genome sequencing and analysis services for medical, agriculture, horticulture, veterinary, and husbandry purposes; Medical genetic analysis and reporting services for diagnostic, prognostic or treatment uses; Medical research services; Medical testing and analysis for diagnostic or treatment purposes; DNA, nucleic acid and genomic sequencing, screening, and analysis services for medical purposes; Genetic analysis and reporting services for medical purposes; Infectious disease identification and surveillance; Medical analysis services for diagnostic and treatment purposes; Medical diagnostic testing, monitoring and reporting service; Charitable services, namely, providing genome sequencing services for medical diagnostic purposes
Intent to Use: The applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the identified goods/services.


Claim of Active Prior Registration(s)
The applicant claims ownership of active prior U.S. Registration Number(s) 4268307, 4502341, 2471539, and others.

Miscellaneous Statement
Applicant is the owner of allowed Application Serial No. 87/750,316


The owner's/holder's proposed attorney information: Jonathan Menkes. Other appointed attorneys are John B. Sganga, Jr., Edward A. Schlatter, Gerard von Hoffmann, Joseph R. Re, Catherine J. Holland, John M. Carson, Jeffrey L. Van Hoosear, Daniel E. Altman, Lynda J. Zadra-Symes, William H. Shreve, Stephen C. Jensen, Steven J. Nataupsky, Paul A. Stewart, Joseph F. Jennings, Craig S. Summers, Diane M. Reed, Ronald J. Schoenbaum, John R. King, Adeel S. Akhtar, David N. Weiss, Douglas G. Muehlhauser, Lori Lee Yamato, Michael K. Friedland, Stacey R. Halpern, Mark M. Abumeri, Jon W. Gurka, Joseph M. Reisman, Michael L. Fuller, Paul N. Conover, Robert J. Roby, Sabing H. Lee, Karoline A. Delaney, Joseph S. Cianfrani, William R. Zimmerman, Eric S. Furman, Susan M. Natland, Rose M. Thiessen, Michael A. Guiliana, Rabinder N. Narula, Bruce S. Itchkawitz, John M. Grover, Irfan A. Lateef, Amy Christensen Chun, Mark J. Gallagher, David G. Jankowski, Brian C. Horne, Payson LeMeilleur, Sheila N. Swaroop, Benjamin A. Katzenellenbogen, Andrew N. Merickel, Thomas P. Krzeminski, Linda H. Liu, James F. Herkenhoff, Andrew M. Douglas, Salima A. Merani, Jonathan A. Hyman, Curtiss C. Dosier, Joseph J. Mallon, Sean M. Murray, Christy G. Lea, Perry D. Oldham, Russell M. Jeide, Zi Y. Wong, Matthew S. Bellinger, Mincheol Kim, Gregory A. Hermanson, Lauren Keller Katzenellenbogen, Ted M. Cannon, Carol Pitzel Cruz, Josué A. Villalta, Andrew I. Kimmel, Brenden Gingrich, Maria Culic Anderson, Melanie J. Seelig, Mauricio A. Uribe, Curtis R. Huffmire, Christopher L. Ross, Eli A. Loots, Ryan E. Melnick, Yanna S. Bouris, Philip M. Nelson, Marko R. Zoretic, Kerry S. Taylor, Derek C. Dailey, Jarom D. Kesler, Colin B. Heideman, Theodore G. Papagiannis, Nicholas M. Zovko, Adam J. Gilbert, Kimberly J. Miller, Bryan W. Wahl, Thomas Y. Yee, Agnes Juang, Jason J. Jardine, Jared C. Bunker, Lance D. Smemoe, Joshua J. Stowell, Jonathan E. Bachand, Ali S. Razai, Terry K. Tullis, Derek R. Bayles, Cheryl T. Burgess, Gregory B. Phillips, Brian C. Claassen, Mark Lezama, Sean Ambrosius, Stephen W. Larson, John L. Paik, Michael R. Christensen, Benjamin J. Everton, Jason A. Gersting, Baraa Kahf, Alan G. Laquer, Vlad Teplitskiy, Jeffery L. Hallstrom, Maria V. Stout, William O. Adams, Ian W. Gillies, Andrew W. Lloyd, Mark D. Kachner, Lincoln S. Essig, David R. Trossen, Aaron M. Davis, Jason R. Swartz, Benjamin B. Anger, Jason A. Champion, Daniel V. Gibson, Jeremy J. Carney, Karen M. Cassidy, Adam B. Powell, Karen J. Lenker, Bryan G. McWhorter, Nathanael R. Luman, Andrea L. Cheek, Damien J. Howard, Jane Q. Dai, Shannon Lam, Peter Law, Mark Metzke, Jacob Peterson, Christie R.W. Matthaei, Vladimir S. Lozan, Paul S. Stellman, Heungsoo Choi, Nicole Rossi Townes, Vikas Bhargava, Daniel J. Fischer, Jeremy A. Anapol, Scott A. Cromar, Kendall M. Loebbaka, David R. Schmidt, Harnik Shukla, Charlene A. Azema, Morgan R. Coates, Jessica L. Achtsam, Jonathan A. Menkes, Rosaleen H. Chou, Deborah S. Shepherd, Mark D. Marsden, Joan Y. Chan, Kyu S. Min, Chang Sik Lim, Thomas S.H. Cowan, Devanie A. DuFour, Alexander J. Martinez, Hans L. Mayer, Jessica C. Sganga, Nicholas A. Belair, Ryan S. Furtado, Angela K. Dremann, Justin J. Gillett, M. Scott Forbes, Brian M. Graham, Brian J. Flynn, Mitchell B. Hadley, Elenore Niu, David M. Cohen, Mark E. Davis, Jordan Gottdank, Kim A. Kennedy, Daniel C. Kiang, Keith M. Lim, Ashley C. Morales, Nathan D. Reeves, Brandon G. Smith, Xiaoyan Sabrina Wang, Jun Hyuk (Zach) Hong, Jordan M. Cox, Albert J. Sueiras, Mark Rubinshtein, David J. Grant, Clayton R. Henson, Daniel A. Kamkar, Lesley Y. Kim, Nathan J. Lee, Josepher Li, Jacob R. Rosenbaum, James F. Smith, Douglas B. Wentzel, Aryeh N. Feinstein, Noorean I. Gill, Aaron S. Johnson, Bryan J. Johnson, Chanell Khosrowabadi, Lindsay A. Laddaran, Janet M. Allendorph, Alexander Zeng, Sean S. Kim, Adam R. Aquino, Samuel I. Cockriel, Serah R. Friedman, Bita Kianian, Eric R. Malmgren, Brian M.Z. Reece, Derk A. Westermeyer, Suyoung Jang, Show Xiaoyu Wang, Justin E. Culbertson, Andrew E. Morrell, Victoria E. Ellis, Yasmin L. Amin-Reimer, Catherine R. Gourash, Marissa M. Rosenbaum, Brok S. Humbert, Karl W. Kowallis, Christopher L. Lewis, Ryan L. McBride, Atiya M. Myers, David C. O'Hair, Radhika K. Raman, Ben K. Shiroma, Makoto Tsunozaki, Benjamin L. Van Adrichem, James Yang, Tiffany T. Young, Matthew S. Friedrichs, Jeremiah S. Helm, Hironori Kubota, Kregg A. Koch, Arsen Kourinian, James E. Youngblood, Yusuke Hirai, and Sunyong Tang. Jonathan Menkes of Knobbe, Martens, Olson & Bear, LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at
      2040 Main St., 14th Floor
      Irvine, California 92614
      United States
      949-760-0404(phone)
      949-760-9502(fax)
      efiling@knobbe.com
The docket/reference number is ILLINCT.713T.
Jonathan Menkes 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:

Jonathan Menkes

PRIMARY EMAIL FOR CORRESPONDENCE: efiling@knobbe.com       SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the applicant owner/holder and the applicant owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

A fee payment in the amount of $825 has been submitted with the application, representing payment for 3 class(es).

Declaration

	Basis: If the applicant is filing the application based on use in commerce under 15 U.S.C. § 1051(a): The signatory believes that the applicant is the owner of the trademark/service 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 on or in connection with the goods/services in the application; The specimen(s) shows the mark as used on or in connection with the goods/services in the application and was used on or in connection with the goods/services in the application as of the application filing date; and To the best of the signatory's knowledge and belief, the facts recited in the application are accurate. And/Or If the applicant is filing the application based on an intent to use the mark in commerce under 15 U.S.C. § 1051(b), § 1126(d), and/or § 1126(e): The signatory believes that the applicant is entitled to use the mark in commerce; 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 on or in connection with the goods/services in the application; and To the best of the signatory's knowledge and belief, the facts recited in the application are accurate.
	To the best of the signatory's knowledge and belief, no other persons, except, if applicable, 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 of such other persons, to cause confusion or mistake, or to deceive.
	To the best of the signatory's knowledge, information, and belief, formed after an inquiry reasonable under the circumstances, the allegations and other factual contentions made above have evidentiary support.
	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 all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.

Declaration Signature

Signature: /Christopher Ellsworth/   Date: 08/04/2020
Signatory's Name: Christopher Ellsworth
Signatory's Position: Patent Attorney
Payment Sale Number: 90093519
Payment Accounting Date: 08/04/2020

Serial Number: 90093519
Internet Transmission Date: Tue Aug 04 23:48:31 ET 2020
TEAS Stamp: USPTO/BAS-XXX.XXX.XX.XX-2020080423483155
5873-90093519-74048df2ae77ab9a2ce8b869ae
fecf522081da4637ffa991b5624ec45779ce46c5
-CC-48308295-20200804231225953575