NOTE TO THE FILE
SERIAL NUMBER: 90112472
DATE: 12/11/2020
NAME: olee
NOTE:
Searched:
Lexis/Nexis
OneLook
Wikipedia
Acronym Finder Protest evidence reviewed
Other:Checked:
Geographic significance
Surname
Translation
ID with ID/CLASS mailboxChecked list of approved Canadian attorneys and agents
Discussed file with
Attorney/Applicant via:
X phone Left message with
X email Attorney/ApplicantRequested Law Library search Issued Examiner’s Amendment
for: and entered changes in TRADEUPSPRINT DO NOT PRINT Added design code in TRADEUPS
Description of the mark
Translation statement Re-imaged standard character
drawing
Negative translation statement
Consent of living individual Contacted TM MADRID ID/CLASS
about misclassified definite ID
Changed TRADEUPS to:From: Kayton, Quincy <qkayton@mccarter.com>
Sent: Friday, December 11, 2020 12:02 PM
To: Lee, Olivia <Olivia.Lee@USPTO.GOV>
Cc: Toms, Keith <KToms@McCarter.com>; BOSTONTRADEMARKS <bostontrademarks@McCarter.com>
Subject: RE: Serial No. 90112472 - CELLCARTA - 122623-90201
Hello Ms. Lee,
Thank you for the follow-up call this morning. We confirm that we may proceed with the amendment to Class 44, so that the approved ID reads:
Class 44: Genetic testing for medical purposes; Consulting services in the fields of diagnostic medical testing; Medical testing for diagnostic or treatment purposes; Medical analysis services for diagnostic and treatment purposes provided by medical laboratories; providing medical information and advice in the fields of pathology, pharmacology, and immunology; collection, organization, analysis, and reporting of medical data in connection with clinical and non-clinical trials and studies on pharmaceuticals and medical devices; immune monitoring, and genetic profiling for medical and diagnostic purposes
Please let us know if you require anything additional from us.
Best,
Quincy
From: Kayton, Quincy
Sent: Thursday, December 10, 2020 6:17 PM
To: 'olivia.lee@uspto.gov' <olivia.lee@uspto.gov>
Cc: Toms, Keith <ktoms@mccarter.com>; BOSTONTRADEMARKS <bostontrademarks@McCarter.com>
Subject: Serial No. 90112472 - CELLCARTA - 122623-90201
Dear Ms. Lee,
We received the office action issued on December 9, 2020 for U.S. Serial No. 90112472. Because the only outstanding issues are ID amendments, would you be amenable to issuing an Examiner’s Amendment to resolve the issues?
Specifically, we have received approval from our client to proceed with the below amendments to Classes 9, 42, and 44:
Class 9: Downloadable or recorded software for informatics, bioinformatics; Downloadable or recorded software for clinical trial data acquisition, validation, and analysis; Downloadable or recorded software for cellular analysis, cell sorting, pathway phenotyping, and molecular surface profiling;
Software as a service (SAAS) services featuring software for cell cytometry;Downloadable or recorded software for managing information related to clinical trials
Class 42: Scientific research and development; Medical research and development; Product research and development; Biochemical research and development; Pharmaceutical research and development services; Biomedical research and development services; Design and development of biochemical, pharmaceutical, and medical assays; Scientific and pharmaceutical research in the field of biomarker discovery; Scientific research and development in the fields of bioinformatics, biomarkers, genomics, proteomics, genotyping, pathology, histopathology; immune monitoring, and genetic profiling for research and development purposes; scientific research and development in the field of mass cytometry, cellular analysis, cell sorting, pathway phenotyping, and molecular surface profiling; custom design and development of chemical reagents and biochemical assays; medical laboratory services in the field of pathology; providing laboratory testing services in the fields of bioinformatics, biomarkers, genomics, proteomics, genotyping, pathology, histopathology;
immune monitoring, and genetic profiling;Conducting clinical trials for others; Conducting clinical trials for others in the fields of pharmaceutical, medical, and scientific research; Consulting services for others in the field of design, planning, and implementation project management of clinical trials; Conducting research and clinical trials for others in the fields of oncology, infectious diseases, autoimmune disorders, and allergies; Consulting services in the field of clinical trial research; Providing medical and scientific research information in the field of clinical trials; Research and development in the pharmaceutical and biotechnology fields; Laboratory research services relating to pharmaceuticals; Software as a service (SAAS) services featuring software for informatics, bioinformatics; software as a service (SAAS) services featuring software for clinical trial data acquisition, validation, and analysis; Software as a service (SAAS) services featuring software for cellular analysis, cell sorting, pathway phenotyping, and molecular surface profiling; Software as a service (SAAS) services featuring software for cell cytometry; Software as a service (SAAS) services featuring software for managing information related to clinical trials
Class 44: Genetic testing for medical purposes; Consulting services in the fields of diagnostic medical testing; Medical testing for diagnostic or treatment purposes; Medical analysis services for diagnostic and treatment purposes provided by medical laboratories; providing medical information and advice in the fields of pathology, pharmacology, and immunology; collection, organization, analysis, and reporting of medical data in connection with clinical and non-clinical trials and studies on pharmaceuticals and medical devices; immune monitoring, and genetic profiling for medical, diagnostic, and research purposes
Could you please let us know if these amendments are acceptable? And if so, would anything additional be required to issue an Examiner’s Amendment?
Thank you,
Quincy Kayton