Response to Office Action

PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

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PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 90130276 RESOLUTION(Standard Characters, see http://uspto.report/TM/90130276/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 001 for Chemicals for scientific purposes; chemicals for use in research; chemicals, enzymes, DNA and RNA for research use; cells for scientific purposes; molecular biology research tools in the nature of biological, chemical and biochemical reagents for research use; Pharmaceutical preparations; medical and veterinary preparations for therapeutic purposes; biological, chemical and biochemical reagents for medical use; cells for medical or veterinary use; preparations for cell therapy; preparations for modifying human or animal cells for medical or therapeutic purposes; preparations of cells from humans or animals which have been adapted for medical or therapeutic purposes; Treatment and processing of biological materials; custom manufacture of therapeutic drugs, including custom manufacture of cells and cell therapies; information, advisory and consultancy services in relation to all of the aforesaid services; Scientific and technological services and research and design relating thereto; industrial analysis and research services; medical and veterinary research services including the manipulation of biological reagents to be used for medical or therapeutic purposes; chemical and biological analysis and research services; medical and veterinary research services including the manipulation of cells within a laboratory or research facility to enable the cells to be used for medical or therapeutic purposes; scientific research in human and animal cell therapy; scientific research into preparations for manipulating and adapting human and animal cells; design and development of new products (for others); scientific laboratory services; advisory and consultancy relating to all the aforesaid services; Medical services; veterinary services; medical services for the treatment of conditions of the human or animal body; services in the extraction of human and animal cells from patients; manipulation of human and animal cells for therapeutic purposes; reinsertion of cells into human and animal patients; providing advice and consultancy in the field of medical and veterinary therapies
Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ United Kingdom application number __________ filed 08/21/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Chemicals for scientific purposes; Chemicals preparations for scientific purposes; chemicals for use in research; chemicals, enzymes, DNA and RNA for research use; cells for scientific purposes; molecular biology research tools in the nature of biological, chemical and biochemical reagents for research use; Pharmaceutical preparations; biological preparations for cell therapy; medical and veterinary preparations for therapeutic purposes; biological, chemical and biochemical reagents for medical use; cells for medical or veterinary use; preparations for cell therapy; preparations for modifying human or animal cells for medical or therapeutic purposes; preparations of cells from humans or animals which have been adapted for medical or therapeutic purposes; Treatment and processing of biological materials; custom manufacture of therapeutic drugs, including custom manufacture of cells and cell therapies; information, advisory and consultancy services in relation to all of the aforesaid services; Scientific and technological services and research and design relating thereto; industrial analysis and research services; medical and veterinary research services including the manipulation of biological reagents to be used for medical or therapeutic purposes; chemical and biological analysis and research services; medical and veterinary research services including the manipulation of cells within a laboratory or research facility to enable the cells to be used for medical or therapeutic purposes; scientific research in human and animal cell therapy; scientific research into preparations for manipulating and adapting human and animal cells; design and development of new products (for others); scientific laboratory services; advisory and consultancy relating to all the aforesaid services; Medical services; veterinary services; medical services for the treatment of conditions of the human or animal body; services in the extraction of human and animal cells from patients; manipulation of human and animal cells for therapeutic purposes; reinsertion of cells into human and animal patients; providing advice and consultancy in the field of medical and veterinary therapiesClass 001 for Chemicals preparations for scientific purposes; chemicals for use in research; chemicals, enzymes, DNA and RNA for research use; cells for scientific purposes; molecular biology research tools in the nature of biological, chemical and biochemical reagents for research use; biological preparations for cell therapy
Webpage URL: None Provided
Webpage Date of Access: None Provided


Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ United Kingdom application number __________ filed 08/21/2020]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ United Kingdom registration number 00003525152 registered 02/05/2021 with a renewal date of __________ and an expiration date of 08/21/2030 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU0-19294203254-09514052 1_._RESOLUTION_UK_registr ation.pdf
Converted PDF file(s) ( 3 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant hereby adds the following class of goods/services to the application:
New: Class 005 for Pharmaceutical preparations for the treatment of hematologic diseases, immune response disorders, neurological disorders, respiratory diseases, ophthalmological conditions, metabolic diseases, genetic conditions, cancer, infectious diseases and cardiovascular diseases; medical and veterinary preparations for therapeutic purposes for the treatment of hematologic diseases, immune response disorders, neurological disorders, respiratory diseases, ophthalmological conditions, metabolic diseases, genetic conditions, cancer, infectious diseases and cardiovascular diseases;; biological, chemical and biochemical reagents for medical use; cells for medical or veterinary use; pharmaceutical and biopharmaceutical preparations for modifying human or animal cells for medical or therapeutic purposes; pharmaceutical and biopharmaceutical preparations of cells from humans or animals which have been adapted for medical or therapeutic purposes
Webpage URL: None Provided
Webpage Date of Access: None Provided


Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ __________ application number __________ filed __________ ]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e),Based on Foreign Registration: 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 and /or services, and submits a copy of [ United Kingdom registration number 00003525152 registered 02/05/2021 with a renewal date of __________ and an expiration date of 08/21/2030 ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.
Original PDF file:
FRN0-19294203254-09514052 1_._RESOLUTION_UK_registr ation.pdf
Converted PDF file(s) ( 3 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant hereby adds the following class of goods/services to the application:
New: Class 040 for Treatment and processing of biological materials; custom manufacture of therapeutic drugs, namely, custom manufacture of cells and cell therapies
Webpage URL: None Provided
Webpage Date of Access: None Provided


Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ __________ application number __________ filed __________ ]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e),Based on Foreign Registration: 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 and /or services, and submits a copy of [ United Kingdom registration number 00003525152 registered 02/05/2021 with a renewal date of __________ and an expiration date of 08/21/2030 ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.
Original PDF file:
FRN1-19294203254-09514052 1_._RESOLUTION_UK_registr ation.pdf
Converted PDF file(s) ( 3 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant hereby adds the following class of goods/services to the application:
New: Class 042 for Scientific and technological services and research and design relating thereto namely, scientific research in the field of in the fields of haematology, immunology, neurology, respiratory diseases , ophthalmology, metabolic conditions, genetic conditions, oncology, immuno-oncology, infectious diseases and cardiovascular diseases; industrial research services, in the field of cell therapies and gene therapies; chemical and biological analysis and research services; scientific research in human and animal cell therapy; scientific research into preparations for manipulating and adapting human and animal cells; design and development of new products for others; scientific laboratory services, namely, manipulation of human and animal cells for therapeutic purposes ; advisory and consultancy relating to all the aforesaid services
Webpage URL: None Provided
Webpage Date of Access: None Provided


Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ __________ application number __________ filed __________ ]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e),Based on Foreign Registration: 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 and /or services, and submits a copy of [ United Kingdom registration number 00003515152 registered 02/05/2021 with a renewal date of __________ and an expiration date of 08/21/2030 ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.
Original PDF file:
FRN2-19294203254-09514052 1_._RESOLUTION_UK_registr ation.pdf
Converted PDF file(s) ( 3 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant hereby adds the following class of goods/services to the application:
New: Class 044 for Medical and veterinary research services including the manipulation of biological reagents to be used for medical or therapeutic purposes; medical and veterinary research services including the manipulation of cells within a laboratory or research facility to enable the cells to be used for medical or therapeutic purposes; medical services; veterinary services; medical services for the treatment of conditions of the human or animal body; medical services in the nature of extraction of human and animal cells from patients; medical services, namely, reinsertion of cells into human and animal patients; providing advice and consultancy in the field of medical and veterinary therapies
Webpage URL: None Provided
Webpage Date of Access: None Provided


Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ __________ application number __________ filed __________ ]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e),Based on Foreign Registration: 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 and /or services, and submits a copy of [ United Kingdom registration number 00003525152 registered 02/05/2021 with a renewal date of __________ and an expiration date of 08/21/2030 ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.
Original PDF file:
FRN3-19294203254-09514052 1_._RESOLUTION_UK_registr ation.pdf
Converted PDF file(s) ( 3 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.
Correspondence Information (current):
      REBECCA LIEBOWITZ
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarkdocket@venable.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): rliebowitz@venable.com

The docket/reference number is 60895-527289.
Correspondence Information (proposed):
      Rebecca Liebowitz
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarkdocket@venable.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): rliebowitz@venable.com; pjmiles@venable.com

The docket/reference number is 60895-527289.

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 $1400 is being submitted.

SIGNATURE(S)
Declaration Signature
Original PDF file:
HS_19294203254-095140521_ ._Resolution_Declaration_ supporting_application.pdf
Converted PDF file(s) (2 pages) Signature File1Signature File2
Signatory's Name: Edward Hodgkin
Signatory's Position: Director
Signature method: Handwritten

Response Signature
Signature: /Rebecca Liebowitz/     Date: 04/14/2021
Signatory's Name: Rebecca Liebowitz
Signatory's Position: Attorney of Record, Virginia Bar Member

Signatory's Phone Number: 2023444976 Signature method: Signed directly within the form

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:    REBECCA LIEBOWITZ
   VENABLE LLP
   
   P.O. BOX 34385
   WASHINGTON, District of Columbia 20043
Mailing Address:    Rebecca Liebowitz
   VENABLE LLP
   P.O. BOX 34385
   WASHINGTON, District of Columbia 20043
        
PAYMENT: 90130276
PAYMENT DATE: 04/14/2021
        
Serial Number: 90130276
Internet Transmission Date: Wed Apr 14 10:07:42 ET 2021
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-202104141007428
59700-90130276-770fbebb28e3aa5b33c8d8bcd
6251745e49b565459391f12e544dfc6a63660191
-CC-07393562-20210414095140521369