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. 90407030 PYRA(Standard Characters, see http://uspto.report/TM/90407030/mark.png) has been amended as follows:

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

Applicant has amended the identification goods to be identify the disease or condition, i.e. “medical tests kits” “for identifying parasites”. Applicant does not, however, amend the identifications to specify “for home use” as suggested. Applicant’s goods are intended for use in various locations. Specifying a location is not required for an appropriate identification of goods. See e.g., Term ID 005-1732 (Drug testing kits comprised of medical diagnostic reagents and assays that test for the presence of {indicate specific substance, e.g., alcohol, drugs, etc.}); Tem ID 005-891 (Drug testing kits comprised of medical diagnostic reagents and assays for testing body fluids); Term ID 005-1739 (Diagnostic kits comprised of medical diagnostic reagents and assays for testing of bodily fluids for use in disease detection, namely, {indicate disease or condition, e.g., HIV, malaria, etc.}).

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 005 for Medical test kits
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[ Canada application number 2072946 filed 12/22/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Medical test kits; Medical test kits for identifying parasitesClass 005 for Medical test kits for identifying parasites
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 [ Canada application number 2072946 filed 12/22/2020]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority.
Correspondence Information (current):
      MATTHEW P. FREDERICK
      PRIMARY EMAIL FOR CORRESPONDENCE: phlipdocketing@reedsmith.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): mfrederick@reedsmith.com; jburstein@reedsmith.com; cnye@reedsmith.com

The docket/reference number is T36875US00.
Correspondence Information (proposed):
      Matthew P. Frederick
      PRIMARY EMAIL FOR CORRESPONDENCE: phlipdocketing@reedsmith.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): mfrederick@reedsmith.com; jblack@reedsmith.com; cnye@reedsmith.com

The docket/reference number is T36875US00.

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)
Response Signature
Signature: /Matthew P. Frederick/     Date: 11/17/2021
Signatory's Name: Matthew P. Frederick
Signatory's Position: Attorney of record, Pennsylvania Bar member

Signatory's Phone Number: 215-851-8100 Signature method: Sent to third party for signature

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:    MATTHEW P. FREDERICK
   REED SMITH LLP
   SUITE 3100
   1717 ARCH STREET, THREE LOGAN SQUARE
   PHILADELPHIA, Pennsylvania 19103
Mailing Address:    Matthew P. Frederick
   REED SMITH LLP
   SUITE 3100
   1717 ARCH STREET, THREE LOGAN SQUARE
   PHILADELPHIA, Pennsylvania 19103
        
Serial Number: 90407030
Internet Transmission Date: Thu Nov 18 09:58:35 ET 2021
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-202111180958351
86401-90407030-78146b8a15ffd2434795a8e88
1e856e8c65dd55d50eabf9fdc5c96885216e55b2
2-N/A-N/A-20211115121106946443