| Serial Number | 87853341 |
| Word Mark | LIGHTING THE WAY WITH DIAGNOSTICS |
| Filing Date | Wednesday, March 28, 2018 |
| Status | 700 - REGISTERED |
| Status Date | Tuesday, December 20, 2022 |
| Registration Number | 6927071 |
| Registration Date | Tuesday, December 20, 2022 |
| Mark Drawing | 5000 - Drawing with word(s) / letter(s) / number(s) in Stylized form |
| Published for Opposition Date | Tuesday, September 3, 2019 |
| Description of Mark | The mark consists of the words "LIGHTING THE WAY WITH DIAGNOSTICS" in stylized format. |
| Goods and Services | Particle analyzers, namely, flow-based analyzers providing cell and particle analysis for scientific, laboratory, and general research uses; particle image analyzers for analyzing cells in blood, urine or other body fluid for scientific, laboratory, and general research uses; particle counters; particle size distribution analyzers for scientific, laboratory, and general research uses; bacteria analyzers for scientific, laboratory, and general research uses; laboratory equipment, namely, test tubes and holders therefore; pipettes; data processing apparatus for use in the field of medical, clinical, diagnostic or laboratory analysis; data processing apparatus for use in the field of hematology analysis or diagnosis; data processing apparatus for use in the field of analysis or diagnosis of bodily fluids, urine or cells; data processing apparatus for use in industries; data processing apparatus for use in measurement of particles and powders; computers; computer peripheral devices; printers for use with computer; computer keyboards; computer memories; computer software for processing, transmitting, and displaying data for use in the field of medical, clinical, diagnostic or laboratory analysis; computer software for processing, transmitting, and displaying data for use in the field of hematology analysis or diagnosis; computer software for processing, transmitting, and displaying data for use in the field of analysis or diagnosis of bodily fluids, urine or cells; computer software for use in measurement of particles and powders; computer software for gathering, processing, storing and supplying data in the field of medical, clinical, or laboratory analysis and diagnosis, and for managing such data; computer software for gathering, processing, storing and supplying data for use in industries, and for managing such data; computer program for processing, transmitting, and displaying data for use in the field of medical, clinical, diagnostic or laboratory analysis; computer program for processing, transmitting, and displaying data for use in the field of hematology analysis or diagnosis; computer program for processing, transmitting, and displaying data for use in the field of analysis or diagnosis of bodily fluids, urine or cells; computer program for use in measurement of particles and powders; computer program for gathering, processing, storing and supplying data in the field of medical, clinical, or laboratory analysis and diagnosis, and for managing such data; computer program for gathering, processing, storing and supplying data for use in industries, and for managing such data; computer operating programs, recorded for use in the field of medical, clinical, diagnostic or laboratory analysis; computer operating programs, recorded for use in the field of hematology analysis or diagnosis; computer operating programs, recorded for use in the field of analysis or diagnosis of bodily fluids, urine or cells; computer operating programs, recorded for use in industries; computer operating programs, recorded for use in measurement of particles and powders; computer operating programs, recorded for gathering, processing, storing and supplying data in the field of medical, clinical, or laboratory analysis and diagnosis, and for managing such data; computer operating programs, recorded for gathering, processing, storing and supplying data for use in industries, and for managing such data; couplers for data processing equipment; optical readers for data processing; pre-recorded optical discs featuring information on medical, clinical, scientific, diagnostic or research analysis techniques; pre-recorded compact discs featuring information on medical, clinical, scientific, diagnostic or research analysis techniques; pre-recorded data compact discs featuring information on medical, clinical, scientific, diagnostic or research analysis techniques; encoded cards, magnetic; exposed cinematographic films; exposed slide films; slide film mounts; downloadable image files featuring information on medical, clinical, scientific, diagnostic or research analysis techniques; downloadable electronic publications, namely, book and magazine featuring on medical, clinical, scientific, diagnostic or research analysis techniques; integrated circuits; microscope slides; laboratory beakers; plastic cups for laboratory use; Laboratory equipment, namely, test tubes for microbiological purposes; Laboratory equipment, namely, test tubes for immunological purposes; infrared spectroscopic analyzing apparatus and instruments; Laboratory equipment, namely, immunochemical analyzing apparatus and instruments; Laboratory equipment, namely, immunological testing apparatus and instruments; Laboratory equipment, namely, immunoassay apparatus and instruments; Laboratory equipment, namely, apparatus and instruments for clinical chemistry analyzing; Laboratory equipment, namely, bacteria analyzing apparatus and instruments; Laboratory equipment, namely, genetic testing apparatus and instruments; Laboratory equipment, namely, gene amplification analyzer; Laboratory equipment, namely, diluting apparatus and instruments; pipettes laboratory instruments; disposable beakers; beaker stands; test tube stands; laboratory equipment, namely, microscope slides; structural parts and fittings for all the aforementioned goods |
| Goods and Services | Sanitary preparations for medical use; diagnostic reagents and diagnostic preparations for medical or veterinary purposes; chemical reagents for medical or veterinary purposes; testing reagents for clinical medical or medical diagnostic use; reagents for hematology analysis for clinical medical or medical diagnostic use; reagents for blood analysis for clinical medical or medical diagnostic use; reagents for white blood cell analysis for clinical medical or medical diagnostic use; reagents for immature cell analysis for clinical medical or medical diagnostic use; reagents for hemoglobin analysis for clinical medical or medical diagnostic use; reagents for reticulocyte analysis for clinical medical or medical diagnostic use; reagents for erythrocyte analysis for clinical medical or medical diagnostic use; reagents for nucleated red cell analysis for clinical medical or medical diagnostic use; reagents for blood coagulation analysis for medical or veterinary purposes; reagents for urinalysis for medical or veterinary purposes; reagents for urinary sediment analysis for medical or veterinary purposes; reagents for immunoassay for medical or veterinary purposes; reagents for bacteria analysis for medical or veterinary purposes; reagents for clinical chemistry testing for medical or veterinary purposes; reagents for genetic test for medical or veterinary purposes; reagents for protein test for medical or veterinary purposes; reagents for cancer recurrence prediction test for medical or veterinary purposes; reagents for anticancer drug sensitivity prediction test for medical or veterinary purposes; diluents for clinical medical or medical diagnostic use; diluents for hematology analysis for medical or veterinary purposes; diluents for reticulocyte analysis for medical or veterinary purposes; diluents for urinalysis for medical or veterinary purposes. diluents for immunoassay for medical or veterinary purposes; medical diagnostic reagents and solutions, namely, lysing solutions and reagents and hemolytic lysing solutions and reagents for hemolysing whole blood samples for medical or veterinary purposes; medical diagnostic reagents and solutions, namely, sheath solutions; hematology control reagents for medical use; reference control reagents for medical use |
| Goods and Services | Installation, maintenance and repair of medical apparatus and instruments; installation, maintenance and repair of apparatus and instruments for clinical laboratory tests; installation, maintenance and repair of laboratory apparatus and instruments; installation, maintenance and repair of measuring or testing apparatus and instruments and their parts; installation, maintenance and repair of electronic machines, apparatus and instruments and their parts; installation, maintenance and repair of computers and computer peripheral equipment; installation, maintenance and repair of data processing apparatus and instruments; provision of information relating to installation, maintenance and repair of medical apparatus and instruments; provision of information relating to installation, maintenance and repair of apparatus and instruments for clinical laboratory tests; provision of information relating to installation, maintenance and repair of laboratory apparatus and instruments; provision of information relating to installation, maintenance and repair of measuring or testing apparatus and instruments and their parts; provision of information relating to installation, maintenance and repair of electronic machines, apparatus and instruments and their parts; provision of information relating to installation, maintenance and repair of computers and computer peripheral equipment; provision of information relating to installation, maintenance and repair of data processing apparatus and instruments; on-line remote maintenance and repairing of medical apparatus and instruments; maintenance services of Internet servers |
| Indication of Colors claimed | Color is not claimed as a feature of the mark. |
| Goods and Services | Chemical reagents other than for medical or veterinary purposes; chemical preparations for scientific purposes, including non-therapeutic ingredients used in pharmaceutical manufacture; diagnostic chemicals for scientific or research use, namely, reagents used in laboratory for scientific purposes; diagnostic reagents and diagnostic preparations, other than for medical or veterinary purposes; reagents for hematology analysis for scientific or research use; reagents for reticulocyte analysis for scientific or research use; reagents for blood coagulation analysis for scientific or research use; reagents for urinalysis for scientific or research use; reagents for immunoassay for scientific or research use; reagents for clinical chemistry testing for scientific or research use; reagents for gene test for scientific or research use; lysing solutions, namely, reagents used for hemolysing whole blood samples for scientific purposes; chemical reagent stains for industrial use; chemicals, namely, sheath solutions for industrial use; reference control chemicals for industrial use; chemical reference materials for industrial use; quality control standard solutions and quality control chemicals for industrial use for testing and calibrating medical apparatus and reagents; hematology control chemicals for testing and calibrating medical apparatus and reagents; hematology control chemicals for industrial use; standard serum for scientific or research use; control serum for scientific or research use; biochemical standard serum for scientific or research use; biochemical control serum for scientific or research use; quality control standard solutions and quality control chemicals for testing and calibrating medical apparatus and reagents; stains for medical or clinical laboratory use; stains for hematology analysis for medical or clinical laboratory use; stains for reticulocyte analysis for medical or clinical laboratory use; stains for urinalysis for medical or clinical laboratory use; stains for immunoassay for medical or clinical laboratory use |
| Goods and Services | Medical information services, namely, reporting of clinical testing results to customers; and medical diagnostic testing, monitoring and reporting services; providing medical information; providing information about medical treatment by means of communication using computer terminals, including those provided through the Internet; providing information about medical treatment online via computer networks; counseling, advice and guidance relating to health and healthcare, and providing information thereof; providing information relating to health and healthcare by means of communication using computer terminals, including those provided through the Internet; counseling, advice and guidance relating to health and healthcare by means of communication using computer terminals, including those provided through the Internet; rental of medical apparatus and instruments |
| Goods and Services | Diagnostic or measuring apparatus and instruments for medical purposes, namely, hematological analyzing apparatus and instruments, blood cell analyzers, reticulocyte analyzing apparatus and instruments, erythrocyte analyzing apparatus and instruments, blood coagulation analyzing apparatus and instruments, platelet aggregation analyzing apparatus and instruments, blood pretreatment apparatus and instruments, non-invasive blood analyzing apparatus and instruments, cell counters, blood cell counters, platelet counters, particle counters for medical purposes, urinalysis apparatus and instruments, urine cell analyzing apparatus and instruments, urinary particle analyzing apparatus and instruments, urine pretreatment apparatus and instruments, cancer lymphatic metastasis analyzer; blood collecting devices; blood sampling tubes; needles for medical purposes; Sample preparation device for medical diagnostic uses, namely, smear test sample making apparatus and instruments; respiratory aspirators for medical purposes; blood collecting tubes; and medical containers, namely, containers for samples for in vitro diagnosis, sampling bottles, and disposable cups for urinalysis; structural parts and fittings for all the aforementioned goods; pipettes for medical purposes; medical specimen collection devices in the nature of glass slides for the collection of blood, body fluid, and tissue |
| Goods and Services | Scientific and technological services, namely, scientific research, analysis, design and testing in the field of cancer; design and development of diagnostic products; providing sample testing and diagnostic services for others in the fields of science and research related thereto; scientific research for medical purposes in the field of cancerous diseases; consulting services in the fields of biotechnology, pharmaceutical research and development, laboratory testing, diagnostics and companion diagnostics; clinical laboratory testing services and reporting of results, namely, DNA testing services, gene testing services, blood DNA testing services; providing medical and scientific research information in the field of clinical trials; custom design and development of molecular assays and in-vitro diagnostic tests; providing laboratory research services in the field of gene mutations, variations, amplification, deletion, gene loss and gene fusion; biomedical research services in the fields of molecular biomarkers, cancer biology and DNA sequencing; computer services for gathering, processing, and supplying of medical and scientific information; providing information in the form of data in the field of medical, clinical or laboratory analysis and diagnosis for scientific or research purposes; providing an online computer database in the field of medical, clinical or laboratory analysis and diagnosis for scientific or research purposes; collection and analysis of data obtained from medical, clinical, laboratory, measuring, testing and/or electronic apparatus and instruments, and providing information thereof; testing, inspection, measuring, analysis, evaluation or research of medical, clinical, laboratory, measuring, testing and/or electronic apparatus and instruments, and providing information thereof; testing, examination, analysis, evaluation or research of pharmaceutical preparations and diagnostic reagents, and providing information thereof; technical advice relating to performance and operation of computers, measuring apparatus, and laboratory apparatus that require high levels of personal knowledge, skill or experience of the operators to meet the required accuracy in operating them; providing information about scientific technology; providing information about scientific technology by means of communication using computer terminals, including those provided through the Internet; providing information about scientific technology online via computer networks; providing information on measurement of particles and powders; design, development, programming, installation, implementation, maintenance and updating of computer software; providing temporary use of non-downloadable software in the field of medical, clinical, or laboratory analysis and diagnosis; rental of laboratory apparatus and instruments; rental of measuring or testing apparatus and instruments and their parts; rental of computer and computer software; designing of information and/or data processing systems; customization of computer software; computer software advisory services; remote monitoring and supervision of computer systems and computer programs; on-line remote monitoring and supervision of apparatus and instruments for clinical laboratory tests; on-line remote monitoring and supervision of laboratory apparatus and instruments; on-line remote monitoring and supervision of measuring or testing apparatus and instruments and their parts; on-line remote monitoring and supervision of electronic machines, apparatus and instruments and their parts; on-line remote monitoring and supervision of computers and computer peripheral equipment; on-line remote monitoring and supervision of data processing apparatus and instruments; on-line remote monitoring of medical apparatus and instruments; design and control services of Internet servers; providing information about clinical laboratory tests; providing information about quality control; providing information about clinical laboratory tests by means of communication using computer terminals, including those provided through the Internet; providing information about quality control by means of communication using computer terminals, including those provided through the Internet; providing information about clinical laboratory tests online via computer networks; and providing information about quality control online via computer networks; technical advice relating to performance and operation of medical apparatus that requires high levels of personal knowledge, skill or experience of the operators to meet the required accuracy in operating them |
| International Class | 001 - Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins; unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry. |
| US Class Codes | 001, 005, 006, 010, 026, 046 |
| Class Status Code | 6 - Active |
| Class Status Date | Wednesday, April 4, 2018 |
| Primary Code | 001 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 005 - Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides. |
| US Class Codes | 006, 018, 044, 046, 051, 052 |
| Class Status Code | 6 - Active |
| Class Status Date | Wednesday, April 4, 2018 |
| Primary Code | 005 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 009 - Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire extinguishing apparatus. |
| US Class Codes | 021, 023, 026, 036, 038 |
| Class Status Code | 6 - Active |
| Class Status Date | Wednesday, April 4, 2018 |
| Primary Code | 009 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 010 - Surgical, medical, dental, and veterinary apparatus and instruments, artificial limbs, eyes, and teeth; orthopedic articles; suture materials. |
| US Class Codes | 026, 039, 044 |
| Class Status Code | 6 - Active |
| Class Status Date | Wednesday, April 4, 2018 |
| Primary Code | 010 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 037 - Building construction; repair; installation services. |
| US Class Codes | 100, 103, 106 |
| Class Status Code | 6 - Active |
| Class Status Date | Wednesday, April 4, 2018 |
| Primary Code | 037 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 042 - Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software. |
| US Class Codes | 100, 101 |
| Class Status Code | 6 - Active |
| Class Status Date | Wednesday, April 4, 2018 |
| Primary Code | 042 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| International Class | 044 - Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services. |
| US Class Codes | 100, 101 |
| Class Status Code | 6 - Active |
| Class Status Date | Wednesday, April 4, 2018 |
| Primary Code | 044 |
| First Use Anywhere Date | NOT AVAILABLE |
| First Use In Commerce Date | NOT AVAILABLE |
| Party Name | Sysmex Corporation |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 03 - Corporation |
| Address | Hyogo 651-0073 JP |
| Party Name | Sysmex Corporation |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 03 - Corporation |
| Address | Hyogo 651-0073 JP |
| Party Name | Sysmex Corporation |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 03 - Corporation |
| Address | Hyogo JP |
| Event Date | Event Description |
| Tuesday, December 20, 2022 | NOTICE OF REGISTRATION CONFIRMATION EMAILED |
| Tuesday, December 20, 2022 | REGISTERED-PRINCIPAL REGISTER |
| Thursday, November 17, 2022 | 1(B) BASIS DELETED; PROCEED TO REGISTRATION |
| Wednesday, September 28, 2022 | NOTICE OF ALLOWANCE CANCELLED |
| Wednesday, September 28, 2022 | TEAS DELETE 1(B) BASIS RECEIVED |
| Wednesday, August 3, 2022 | TEAS CHANGE OF CORRESPONDENCE RECEIVED |
| Wednesday, August 3, 2022 | TEAS CHANGE OF DOMESTIC REPRESENTATIVES ADDRESS |
| Wednesday, August 3, 2022 | TEAS WITHDRAWAL OF ATTORNEY RECEIVED-FIRM RETAINS |
| Wednesday, August 3, 2022 | ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED |
| Wednesday, August 3, 2022 | TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED |
| Friday, April 15, 2022 | NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED |
| Thursday, April 14, 2022 | SOU EXTENSION 5 GRANTED |
| Thursday, April 7, 2022 | SOU EXTENSION 5 FILED |
| Thursday, April 14, 2022 | CASE ASSIGNED TO INTENT TO USE PARALEGAL |
| Thursday, April 7, 2022 | TEAS EXTENSION RECEIVED |
| Thursday, October 7, 2021 | NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED |
| Tuesday, October 5, 2021 | SOU EXTENSION 4 GRANTED |
| Tuesday, October 5, 2021 | SOU EXTENSION 4 FILED |
| Tuesday, October 5, 2021 | TEAS EXTENSION RECEIVED |
| Saturday, April 10, 2021 | NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED |
| Thursday, April 8, 2021 | SOU EXTENSION 3 GRANTED |
| Thursday, April 8, 2021 | SOU EXTENSION 3 FILED |
| Thursday, April 8, 2021 | TEAS EXTENSION RECEIVED |
| Friday, October 16, 2020 | NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED |
| Wednesday, October 14, 2020 | SOU EXTENSION 2 GRANTED |
| Wednesday, October 14, 2020 | SOU EXTENSION 2 FILED |
| Wednesday, October 14, 2020 | TEAS EXTENSION RECEIVED |
| Saturday, February 8, 2020 | NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED |
| Thursday, February 6, 2020 | SOU EXTENSION 1 GRANTED |
| Thursday, February 6, 2020 | SOU EXTENSION 1 FILED |
| Thursday, February 6, 2020 | TEAS EXTENSION RECEIVED |
| Tuesday, October 29, 2019 | NOA E-MAILED - SOU REQUIRED FROM APPLICANT |
| Tuesday, September 3, 2019 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Tuesday, September 3, 2019 | PUBLISHED FOR OPPOSITION |
| Wednesday, August 14, 2019 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Wednesday, July 31, 2019 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Wednesday, July 3, 2019 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Wednesday, July 3, 2019 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Monday, July 1, 2019 | ASSIGNED TO LIE |
| Thursday, June 27, 2019 | TEAS RESPONSE TO SUSPENSION INQUIRY RECEIVED |
| Tuesday, January 15, 2019 | NOTIFICATION OF LETTER OF SUSPENSION E-MAILED |
| Tuesday, January 15, 2019 | LETTER OF SUSPENSION E-MAILED |
| Tuesday, January 15, 2019 | SUSPENSION LETTER WRITTEN |
| Wednesday, December 12, 2018 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Tuesday, December 11, 2018 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Tuesday, December 11, 2018 | TEAS RESPONSE TO OFFICE ACTION RECEIVED |
| Sunday, June 24, 2018 | NOTIFICATION OF NON-FINAL ACTION E-MAILED |
| Sunday, June 24, 2018 | NON-FINAL ACTION E-MAILED |
| Sunday, June 24, 2018 | NON-FINAL ACTION WRITTEN |
| Thursday, June 7, 2018 | ASSIGNED TO EXAMINER |
| Wednesday, April 4, 2018 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM |
| Saturday, March 31, 2018 | NEW APPLICATION ENTERED IN TRAM |