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

---

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. 90371840 FIREFLY(Standard Characters, see http://uspto.report/TM/90371840/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Scientific, electric and electronic apparatus and instruments; laboratory instruments; automated liquid handling apparatus and instruments; automated liquid handlers; parts and fittings for the aforesaid goods
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[ United Kingdom application number UK00003499982 filed 06/12/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Scientific, electric and electronic apparatus and instruments; Scientific, electric and electronic apparatus and instruments, namely, automated liquid handling systems; laboratory instruments; laboratory instrument for automated liquid handlers; automated liquid handling apparatus and instruments; laboratory instrument for processing biological and chemical samples for life science research, parts and fittings for the aforesaid goods, namely, automated liquid handling systems and their parts; automated liquid handlers; parts and fittings for the aforesaid goodsClass 009 for Scientific, electric and electronic apparatus and instruments, namely, automated liquid handling systems; laboratory instrument for automated liquid handlers; laboratory instrument for processing biological and chemical samples for life science research, parts and fittings for the aforesaid goods, namely, automated liquid handling systems and their parts
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 [ United Kingdom application number UK00003499982 filed 06/12/2020]. 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. If ultimately the applicant does not rely on Section 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 UK00003499982 registered 04/02/2021 with a renewal date of __________ and an expiration date of 06/12/2030 ], 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:
FRU0-260158c101e32050ba21 98a92267cd-213143514_._UK _Certificate_of_Reg_-_FIR EFLY.pdf
Converted PDF file(s) ( 2 pages) Foreign Registration-1Foreign Registration-2

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):
      RACHEL C. SANTARLAS
      PRIMARY EMAIL FOR CORRESPONDENCE: rachel@santarlaslaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): info@santarlaslaw.com

The docket/reference number is 1045/1/6.
Correspondence Information (proposed):
      Rachel C. Santarlas
      PRIMARY EMAIL FOR CORRESPONDENCE: rachel@santarlaslaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): info@santarlaslaw.com

The docket/reference number is 1045/1/6.

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: /Rachel Santarlas/     Date: 08/11/2021
Signatory's Name: Rachel Santarlas
Signatory's Position: Attorney, NJ bar member

Signatory's Phone Number: 9733556585 Signature method: Signed directly within the form

The signatory has confirmed that he/she is not represented by an authorized attorney, and that he/she is either: (1) the owner/holder; or (2) a person or persons with legal authority to bind the owner/holder; and if he/she had previously been represented by an attorney in this matter, either he/she revoked their power of attorney by filing a signed revocation with the USPTO or the USPTO has granted this attorney's withdrawal request.

Mailing Address:    RACHEL C. SANTARLAS
   SANTARLAS LAW LLC
   
   641 SHUNPIKE ROAD, #125
   CHATHAM, New Jersey 07928
Mailing Address:    Rachel C. Santarlas
   SANTARLAS LAW LLC
   641 SHUNPIKE ROAD, #125
   CHATHAM, New Jersey 07928
        
Serial Number: 90371840
Internet Transmission Date: Wed Aug 11 21:39:01 ET 2021
TEAS Stamp: USPTO/ROA-XXXX:XXX:XXX:XXXX:XXXX:XXXX:XX
XX:XXXX-20210811213901393280-90371840-78
13022cc401136f47916e031ec589a0a36885b112
833a69b8d56eeb19a3a8b8e2-N/A-N/A-2021081
1213143514232