Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 85907427 MCKESSON(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85907427) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for wholesale distributorship business management consulting services in the nature of supply chain services for the healthcare industry, namely, managing the process involved in producing, selecting, ordering, shipping, distribution and inventory control of pharmaceutical, specialty pharmaceutical and medical and surgical goods; business management consultation in the supply chain field in the nature of pharmaceutical, specialty pharmaceutical and medical and surgical goods product selection and inventory control; pharmacy management services, namely management services provided to pharmacies for inventory control of drugs and pharmacy merchandise; retail drug store services; business marketing and business marketing consulting services for pharmaceutical manufacturers; business support services for pharmaceutical clinical trials; pharmacy business management services which facilitates operational efficiencies, reduces medication errors, and improves clinical outcomes for patients; offering business management assistance in the establishment and/or operation of pharmacies; Business management services for groups that provide medical services; business consulting services in the field of managing medical clinics, practices and facilities
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 07/28/1983 and first used in commerce at least as early as 07/28/1983 , and is now in use in such commerce.

Proposed:
Tracked Text Description: wholesale distributorship business management consulting services in the nature of supply chain services for the healthcare industry, namely, managing the process involved in producing, selecting, ordering, shipping, distribution and inventory control of pharmaceutical, specialty pharmaceutical and medical and surgical goods; business management consultation in the supply chain field in the nature of pharmaceutical, specialty pharmaceutical and medical and surgical goods product selection and inventory control; pharmacy management services, namely management services provided to pharmacies for inventory control of drugs and pharmacy merchandise; retail drug store services; business marketing and business marketing consulting services for pharmaceutical manufacturers; business support services for pharmaceutical clinical trials; business support services, namely business consulting, assistance, management and advisory services in the field of pharmaceutical clinical trials; pharmacy business management services which facilitates operational efficiencies, reduces medication errors, and improves clinical outcomes for patients; offering business management assistance in the establishment and/or operation of pharmacies; Business management services for groups that provide medical services; business consulting services in the field of managing medical clinics, practices and facilitiesClass 035 for wholesale distributorship business management consulting services in the nature of supply chain services for the healthcare industry, namely, managing the process involved in producing, selecting, ordering, shipping, distribution and inventory control of pharmaceutical, specialty pharmaceutical and medical and surgical goods; business management consultation in the supply chain field in the nature of pharmaceutical, specialty pharmaceutical and medical and surgical goods product selection and inventory control; pharmacy management services, namely management services provided to pharmacies for inventory control of drugs and pharmacy merchandise; retail drug store services; business marketing and business marketing consulting services for pharmaceutical manufacturers; business support services, namely business consulting, assistance, management and advisory services in the field of pharmaceutical clinical trials; pharmacy business management services which facilitates operational efficiencies, reduces medication errors, and improves clinical outcomes for patients; offering business management assistance in the establishment and/or operation of pharmacies; Business management services for groups that provide medical services; business consulting services in the field of managing medical clinics, practices and facilities
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 07/28/1983 and first used in commerce at least as early as 07/28/1983 , and is now in use in such commerce.
ADDITIONAL STATEMENTS
Claim of Active Prior Registration(s)
The applicant claims ownership of U.S. Registration Number(s) 3203533, 2836682, 2741801, and others.


SECTION 2(f) Claim of Acquired Distinctiveness, based on Five or More Years' Use
The mark has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.


Miscellaneous Statement
Applicant deletes the originally submitted dates of use of the mark in another form.


SIGNATURE(S)
Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant has had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii); and/or the applicant has had a bona fide intention to exercise legitimate control over the use of the mark in commerce by its members. 37 C.F. R. Sec. 2.44. If the applicant is seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods and/or services listed in the application as of the application filing date or as of the date of any submitted allegation of use. 37 C.F.R. Secs. 2.34(a)(1)(i); and/or the applicant has exercised legitimate control over the use of the mark in commerce by its members. 37 C.F.R. Sec. 2.44. The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. Section 1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true.

Signature: /ninasteinman/      Date: 01/14/2014
Signatory's Name: Nina Steinman
Signatory's Position: Assistant Secretary
Signatory's Phone Number: 415 983 8323


Response Signature
Signature: /ninasteinman/     Date: 01/14/2014
Signatory's Name: Nina Steinman
Signatory's Position: Assistant Secretary

Signatory's Phone Number: 415 983 8323

The signatory has confirmed that he/she is not represented by either an authorized attorney or Canadian attorney/agent, and that he/she is either (1) the applicant or (2) a person(s) with legal authority to bind the applicant; and if an authorized U.S. attorney or Canadian attorney/agent previously represented him/her in this matter, either he/she has filed a signed revocation of power of attorney with the USPTO or the USPTO has granted the request of his/her prior representative to withdraw.

        
Serial Number: 85907427
Internet Transmission Date: Tue Jan 14 17:52:40 EST 2014
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20140114175240
385928-85907427-50027f11888c358abdf7871f
c5a8c68fdb2d4536957fe611dd861cef148b58a9
2-N/A-N/A-20140114173839512337