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. 90149626 INSIGNIA (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/9014962 6/large) has been amended as follows:

MARK
Applicant proposes to amend the mark as follows:
Current: INSIGNIA (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/9014962 6/large)
Proposed: INSIGNIA (Stylized and/or with Design, see mark)
The applicant is not claiming color as a feature of the mark.
The mark consists of the word INSIGNIA in stylized form.

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

In the Office Action mailed January 5, 2021, the Examining Attorney required amendments to the recitation of services pursuant to TMEP §§1402.01 and cited the following U.S. Registrations as obstacles to registration, in Classes 10 and 44 only, under Trademark Act Section 2(d):

U.S. Reg. No. 3975463 for INSIGNIA by MedHoldings, Inc., for “Medical services; nursing services; nursing care; home health care services” in Class 44;

U.S. Reg. No. 2583317 for INSIGNIA by Cardiac Pacemakers, Inc., for “Cardiac rhythm management devices, namely, heart pacemakers” in Class 10; and

U.S. Reg. No. 2439126 for INSIGNIA by Medline Industries, Inc., (which was due for a Declaration of Use on March 27, 2021, grace period ending September 27, 2021) for: “STETHOSCOPES” in Class 10.

Amendments and Cited Registrations. Applicant thanks the Examining Attorney for the recommended amendments and has adopted many of those verbatim. In some cases, the Applicant has requested another amendment, or has declined to make an amendment, in order to match the services in its recently accepted and registered U.S. Reg. No. 6219009 for SPEEDX (& Design) or U.S. Reg. No. 6039262 for DIAGNOSTICS DEFINING THERAPY. For example, the Applicant has requested amendment of its “nucleic acid” in Class 1 to the phrase, “nucleic acid for other than medical and veterinary purposes”, which appears in its U.S. Reg. Nos. 6219009 and 6039262. Applicant also notes that the phrase “scientific and technological services and research and design relating thereto;” was recently accepted without amendment in U.S. Reg. Nos. 6219009 and 6039262.

As amended, Applicant believes that its goods and services are now sufficiently definite such that there is no overlap with, or likelihood of confusion between Applicant’s mark and the cited registrations in Classes 10 and 44. However, if the refusal is maintained, Application reserves the right to submit fully brief arguments in support of registration.

Prior Pending Application. The Examining Attorney has referenced U.S. Application No. 88900158 for INSIGNIA for Orthopedic implants consisting of artificial materials, namely, artificial hip implants, hip stems, acetabular cups; surgical orthopedic instruments to facilitate the implantation of artificial hip implants, hip stems and acetabular cups in Class 10, by Howmedica Osteonics Corp., as being a potential source of refusal of the present application. Applicant believes that since it has clarified its goods, the above-referenced mark is not likely to be confused with Applicant’s mark for its amended goods. However, the Applicant reserves the right to submit fully briefed arguments in support of registration, if the mark is cited.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 001 for Chemicals used in industry, science, photography, agriculture, horticulture and forestry; reagents and reactants in this class; enzymes for industrial or scientific purposes; nucleic acid; nucleic recombinant acids; acids for industrial purposes; polymerase; chemicals used in food processing and screening; chemicals used in environmental monitoring
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.

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[ Australia application number 2097430 filed 06/19/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Chemicals used in industry, science, photography, agriculture, horticulture and forestry; Chemicals used in industry, science, photography, agriculture, horticulture and forestry, except fungicides, herbicides, insecticides, and parasiticides; reagents and reactants in this class; reagents and reactants for non-medical purposes; enzymes for industrial or scientific purposes; nucleic acid; nucleic acid for other than medical and veterinary purposes; nucleic recombinant acids; nucleic recombinant acids for other than medical and veterinary purposes; acids for industrial purposes; acids namely inorganic acids for industrial purposes; polymerase; DNA and RNA polymerase; chemicals used in food processing and screening; chemicals used in environmental monitoringClass 001 for Chemicals used in industry, science, photography, agriculture, horticulture and forestry, except fungicides, herbicides, insecticides, and parasiticides; reagents and reactants for non-medical purposes; enzymes for industrial or scientific purposes; nucleic acid for other than medical and veterinary purposes; nucleic recombinant acids for other than medical and veterinary purposes; acids namely inorganic acids for industrial purposes; DNA and RNA polymerase; chemicals used in food processing and screening; chemicals used in environmental monitoring
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.

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 [ Australia application number 2097430 filed 06/19/2020]. 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 [ Australia registration number 2097430 registered 06/19/2020 with a renewal date of __________ and an expiration date of 06/19/2030 ], 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:
FRU0-10824812272-21310262 1_._Certificate_of_Regist ration__35544096_.pdf
Converted PDF file(s) ( 2 pages) Foreign Registration-1Foreign Registration-2

Applicant proposes to amend the following:

Current:
Class 005 for Pharmaceutical and veterinary preparations and substances; reagents for medical and veterinary use; nucleic acid amplification reagents for medical use; nucleic acid sequencing programs for medical use; chemical preparations containing enzymes for medical purposes; chemical preparations containing enzymes for pharmaceutical, veterinary and medical purposes; enzymes for pharmaceutical, veterinary and medical purposes; medical kits in this class; clinical diagnostics for medical or veterinary use; biological chemical test kits for medical laboratory use in analysis of gene expression, protein expression, metabolite expression, inflammation, immune-suppression, immune disorders
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.

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[ Australia application number 2097430 filed 06/19/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Pharmaceutical and veterinary preparations and substances; reagents for medical and veterinary use; nucleic acid amplification reagents for medical use; nucleic acid sequencing programs for medical use; chemical preparations containing enzymes for medical purposes; chemical preparations containing enzymes for pharmaceutical, veterinary and medical purposes; enzymes for pharmaceutical, veterinary and medical purposes; medical kits in this class; medical kits containing medical and/or pharmaceutical preparations and associated detection reagents for the diagnosis of diseases, for detection and identification of pathogens, for the detection of antibiotic resistance, for the analysis of gene expression, protein expression, metabolite expression, inflammation, and immune-suppression and immune disorders, for genotyping, analysis of polymorphisms, detection of acquired or inherited genetic mutations, detection and analysis of epigenetic alterations, and for analysis of response to therapy; clinical diagnostics for medical or veterinary use; biological chemical test kits for medical laboratory use in analysis of gene expression, protein expression, metabolite expression, inflammation, immune-suppression, immune disorders; biological chemical test kits comprised of reagents and assays for medical laboratory use in analysis that test for the presence of gene expression, protein expression, metabolite expression, inflammation, immune-suppression, immune disordersClass 005 for Pharmaceutical and veterinary preparations and substances; reagents for medical and veterinary use; nucleic acid amplification reagents for medical use; nucleic acid sequencing programs for medical use; chemical preparations containing enzymes for medical purposes; chemical preparations containing enzymes for pharmaceutical, veterinary and medical purposes; enzymes for pharmaceutical, veterinary and medical purposes; medical kits containing medical and/or pharmaceutical preparations and associated detection reagents for the diagnosis of diseases, for detection and identification of pathogens, for the detection of antibiotic resistance, for the analysis of gene expression, protein expression, metabolite expression, inflammation, and immune-suppression and immune disorders, for genotyping, analysis of polymorphisms, detection of acquired or inherited genetic mutations, detection and analysis of epigenetic alterations, and for analysis of response to therapy; clinical diagnostics for medical or veterinary use; biological chemical test kits comprised of reagents and assays for medical laboratory use in analysis that test for the presence of gene expression, protein expression, metabolite expression, inflammation, immune-suppression, immune disorders
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.

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 [ Australia application number 2097430 filed 06/19/2020]. 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 [ Australia registration number 2097430 registered 06/19/2020 with a renewal date of __________ and an expiration date of 06/19/2030 ], 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:
FRU1-10824812272-21310262 1_._Certificate_of_Regist ration__35544096_.pdf
Converted PDF file(s) ( 2 pages) Foreign Registration-1Foreign Registration-2

Applicant proposes to amend the following:

Current:
Class 010 for Surgical, medical and veterinary apparatus and instruments; diagnostic testing apparatus and instruments for medical purposes; diagnostic testing kits in this class; point of care medical devices; screening kits in this class for the diagnosis of disease, detection and/or identification of pathogens, for the detection of antibiotic resistance, for the analysis of gene expression, protein expression, metabolic expression, inflammation, and immune-suppression and/or immune disorders for genotyping, analysis of polymorphisms, detection of acquired or inherited genetic mutations, detection and/or analysis of epigenetic alterations, analysis of response to therapy
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.

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[ Australia application number 2097430 filed 06/19/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Surgical, medical and veterinary apparatus and instruments; diagnostic testing apparatus and instruments for medical purposes; diagnostic testing kits in this class; diagnostic testing kits containing diagnostic testing apparatus; point of care medical devices; screening kits in this class for the diagnosis of disease, detection and/or identification of pathogens, for the detection of antibiotic resistance, for the analysis of gene expression, protein expression, metabolic expression, inflammation, and immune-suppression and/or immune disorders for genotyping, analysis of polymorphisms, detection of acquired or inherited genetic mutations, detection and/or analysis of epigenetic alterations, analysis of response to therapy; screening kits in this class consisting of medical screening and testing apparatus for the diagnosis of disease, detection and/or identification of pathogens, for the detection of antibiotic resistance, for the analysis of gene expression, protein expression, metabolic expression, inflammation, and immune-suppression and/or immune disorders for genotyping, analysis of polymorphisms, detection of acquired or inherited genetic mutations, detection and/or analysis of epigenetic alterations, analysis of response to therapy; all of the foregoing excluding heart pacemakers and stethoscopesClass 010 for Surgical, medical and veterinary apparatus and instruments; diagnostic testing apparatus and instruments for medical purposes; diagnostic testing kits containing diagnostic testing apparatus; point of care medical devices; screening kits in this class consisting of medical screening and testing apparatus for the diagnosis of disease, detection and/or identification of pathogens, for the detection of antibiotic resistance, for the analysis of gene expression, protein expression, metabolic expression, inflammation, and immune-suppression and/or immune disorders for genotyping, analysis of polymorphisms, detection of acquired or inherited genetic mutations, detection and/or analysis of epigenetic alterations, analysis of response to therapy; all of the foregoing excluding heart pacemakers and stethoscopes
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.

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 [ Australia application number 2097430 filed 06/19/2020]. 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 [ Australia registration number 2097430 registered 06/19/2020 with a renewal date of __________ and an expiration date of 06/19/2030 ], 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:
FRU2-10824812272-21310262 1_._Certificate_of_Regist ration__35544096_.pdf
Converted PDF file(s) ( 2 pages) Foreign Registration-1Foreign Registration-2

Applicant proposes to amend the following:

Current:
Class 042 for Scientific and technological services and research and design relating thereto; genetic research; genetic engineering services; scientific research in the field of genetics and genetic engineering; scientific research relating to genetics; chemistry services; research relating to chemistry; scientific research relating to chemistry; research in the field of chemistry; laboratory analysis in the field of chemistry; development of diagnostic apparatus; design of diagnostic apparatus; research relating to molecular sciences; analysis of data generated by scientific and medical experiments and tests; biological, bacteriological, chemical, biochemical, DNA, RNA, protein, polynucleic acid and molecular analysis and evaluation services; DNA and RNA and polynucleic acid and protein sequencing, analysis and evaluation services; genome sequencing services and the analysis and evaluation of data resulting therefrom; provision of reports relating to scientific and medical experiments, the results of scientific and medical experiments and tests, the analysis and evaluation of scientific and medical data, and data generated by scientific and medical experiments and tests; scientific and medical research and development services; custom design and development of biochemical assays
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.

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[ Australia application number 2097430 filed 06/19/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Scientific and technological services and research and design relating thereto; genetic research; scientific genetic research; genetic engineering services; genetic engineering services for scientific purposes; scientific research in the field of genetics and genetic engineering; scientific research relating to genetics; chemistry services; chemistry services, namely, chemistry research services; research relating to chemistry; scientific research relating to chemistry; research in the field of chemistry; laboratory analysis in the field of chemistry; development of diagnostic apparatus; development of medical diagnostic apparatus; design of diagnostic apparatus; design of medical diagnostic apparatus; research relating to molecular sciences; analysis of data generated by scientific and medical experiments and tests; biological, bacteriological, chemical, biochemical, DNA, RNA, protein, polynucleic acid and molecular analysis and evaluation services; DNA and RNA and polynucleic acid and protein sequencing, analysis and evaluation services; genome sequencing services and the analysis and evaluation of data resulting therefrom; provision of reports relating to scientific and medical experiments, the results of scientific and medical experiments and tests, the analysis and evaluation of scientific and medical data, and data generated by scientific and medical experiments and tests; scientific analysis and the provision of reports in conjunction therewith relating to scientific and medical experiments, relating to the results of scientific and medical experiments and tests, relating to the analysis and evaluation of scientific and medical data, and relating to data generated by scientific and medical experiments and tests; scientific and medical research and development services; scientific and medical research and development services in the field of medical research and genetics; custom design and development of biochemical assaysClass 042 for Scientific and technological services and research and design relating thereto; scientific genetic research; genetic engineering services for scientific purposes; scientific research in the field of genetics and genetic engineering; scientific research relating to genetics; chemistry services, namely, chemistry research services; research relating to chemistry; scientific research relating to chemistry; research in the field of chemistry; laboratory analysis in the field of chemistry; development of medical diagnostic apparatus; design of medical diagnostic apparatus; research relating to molecular sciences; analysis of data generated by scientific and medical experiments and tests; biological, bacteriological, chemical, biochemical, DNA, RNA, protein, polynucleic acid and molecular analysis and evaluation services; DNA and RNA and polynucleic acid and protein sequencing, analysis and evaluation services; genome sequencing services and the analysis and evaluation of data resulting therefrom; scientific analysis and the provision of reports in conjunction therewith relating to scientific and medical experiments, relating to the results of scientific and medical experiments and tests, relating to the analysis and evaluation of scientific and medical data, and relating to data generated by scientific and medical experiments and tests; scientific and medical research and development services in the field of medical research and genetics; custom design and development of biochemical assays
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.

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 [ Australia application number 2097430 filed 06/19/2020]. 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 [ Australia registration number 2097430 registered 06/19/2020 with a renewal date of __________ and an expiration date of 06/19/2030 ], 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:
FRU3-10824812272-21310262 1_._Certificate_of_Regist ration__35544096_.pdf
Converted PDF file(s) ( 2 pages) Foreign Registration-1Foreign Registration-2

Applicant proposes to amend the following:

Current:
Class 044 for Medical services; human healthcare services; medical testing services relating to the diagnosis and treatment of disease; genetic testing for medical purposes; medical and health services relating to DNA, genetics and genetic testing; medical diagnostic services (testing and analysis); providing collected and analysed medical information in the field of genetic and treatment information for diseases and disorders for diagnostic and treatment purposes; diagnostic imaging and molecular medicine; molecular medical diagnostics testing
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.

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[ Australia application number 2097430 filed 06/19/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Medical services; human healthcare services; medical testing services relating to the diagnosis and treatment of disease; genetic testing for medical purposes; medical and health services relating to DNA, genetics and genetic testing; medical diagnostic services (testing and analysis); medical diagnostic services in the nature of medical testing and medical analysis; providing collected and analysed medical information in the field of genetic and treatment information for diseases and disorders for diagnostic and treatment purposes; diagnostic imaging and molecular medicine; medical diagnostic imaging and molecular medicine services; molecular medical diagnostics testing; molecular diagnostics testing for medical purposesClass 044 for Medical services; human healthcare services; medical testing services relating to the diagnosis and treatment of disease; genetic testing for medical purposes; medical and health services relating to DNA, genetics and genetic testing; medical diagnostic services in the nature of medical testing and medical analysis; providing collected and analysed medical information in the field of genetic and treatment information for diseases and disorders for diagnostic and treatment purposes; medical diagnostic imaging and molecular medicine services; molecular diagnostics testing for medical purposes
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.

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 [ Australia application number 2097430 filed 06/19/2020]. 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 [ Australia registration number 2097430 registered 06/19/2020 with a renewal date of __________ and an expiration date of 06/19/2030 ], 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:
FRU4-10824812272-21310262 1_._Certificate_of_Regist ration__35544096_.pdf
Converted PDF file(s) ( 2 pages) Foreign Registration-1Foreign Registration-2
Correspondence Information (current):
      JOI A. WHITE
      PRIMARY EMAIL FOR CORRESPONDENCE: jwhite@carrferrell.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): usptomail@carrferrell.com

The docket/reference number is T-4585 US.
Correspondence Information (proposed):
      Joi A. White
      PRIMARY EMAIL FOR CORRESPONDENCE: jwhite@carrferrell.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): usptomail@carrferrell.com

The docket/reference number is T-4585 US.

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)
Declaration Signature
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice.
Response Signature
Signature: /Joi A. White/     Date: 07/05/2021
Signatory's Name: Joi A. White
Signatory's Position: Attorney of record, California Bar member

Signatory's Phone Number: 650-812-3400 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:    JOI A. WHITE
   CARR & FERRELL LLP
   
   120 CONSTITUTION DRIVE
   MENLO PARK, California 94025
Mailing Address:    Joi A. White
   CARR & FERRELL LLP
   120 CONSTITUTION DRIVE
   MENLO PARK, California 94025
        
Serial Number: 90149626
Internet Transmission Date: Mon Jul 05 22:21:24 ET 2021
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-202107052221243
55690-90149626-7801bf3df36619c4ac252cc52
3d5e578cd5b7fe10b44fd34fbda82658bd3db44d
8f-N/A-N/A-20210705213102621694