Notation to File

NOTE TO THE FILE

SERIAL NUMBER:            87414102

DATE:                                06/28/2017

NAME:                               mmaresca

NOTE:         

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From: Mikulina, Jennifer [mailto:jmikulina@mwe.com]
Sent: Tuesday, June 27, 2017 8:40 PM
To: Maresca, Meredith <Meredith.Maresca@USPTO.GOV>
Cc: IP Docket MWE <IPDocketMWE@mwe.com>; Vicino, Carolyn <CVicino@mwe.com>; IP Docket Chicago <IPDocketChicago@mwe.com>
Subject: RE: USPTO Applications for PHARMACISTS ADDING VALUE AND EXPERTISE (US Application Serial No. 87414109) and PAVE (US Application Serial No. 87414102)

 

Dear Ms. Maresca,

 

Thank you for your message.  I appreciate your message and suggestion to resolve this without issuing an office action, but I will need more time to respond to the requests in your email.  Please issue priority office actions for these applications.

 

Thank you and best regards,
Jennifer

 

Jennifer M. Mikulina Partner

McDermott Will & Emery LLP  |  444 West Lake Street, Suite 4000  |  Chicago, IL 60606-0029 Tel +1 312 984 3620  |  Fax +1 312 984 7700

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Debbie Sliwka , Assistant to Jennifer M. Mikulina Tel  1 312 984 2712   |  dsliwka@mwe.com

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From: Maresca, Meredith [mailto:Meredith.Maresca@USPTO.GOV]
Sent: Sunday, June 25, 2017 4:36 PM
To: IP Docket MWE; Mikulina, Jennifer; Vicino, Carolyn; IP Docket Chicago
Subject: USPTO Applications for PHARMACISTS ADDING VALUE AND EXPERTISE (US Application Serial No. 87414109) and PAVE (US Application Serial No. 87414102)

 

Dear Ms. Mikulina,

 

I am a trademark examining attorney for the U.S. Patent and Trademark Office.  I am contacting you because I have examined the applications for PHARMACISTS ADDING VALUE AND EXPERTISE  (U.S. Application Serial No. 8741409, attorney docket no. 94883-182) and PAVE (U.S. Application Serial No. 87414102, attorney docket no. 94883-181) and found an issue that can be resolved quickly and informally (through email) with an Examiner’s Amendment.

 

Specifically, the identification of services in both applications contains some indefinite wording that must be clarified, as well as misclassified services.  Applicant’s identification of services in both applications is as follows: “Healthcare services, namely, medication intervention, wellness programs, health risk assessment consultation services, and health risk intervention counseling services,” in International Class 44.

 

The wording “medication intervention” and “health risk intervention counseling services” in the identification of services is indefinite and must be clarified because the nature of the services intended by this wording is not clear. 

 

The wording “health risk assessment consultation services” is also indefinite and must be clarified because applicant must indicate the nature of the health risk assessment services. 

 

Furthermore, consultation in the field of health risk is properly classified in International Class 42 because the prediction and assessment of health risks relates to evaluation and analysis of scientific data.  Although the subject matter of the consultation is health-related, the services are not justified in International Class 44 because they do not involve the diagnosis or treatment of a physical condition.  Therefore, applicant may respond by (1) adding International Class 42 to the application and reclassifying these services in the proper international class, or (2) deleting “health risk assessment consultation services” from the application.

 

Applicant may adopt the following amended identification (in both applicatons), if accurate.  Suggested amendments are in bold:

 

International Class 42:                   Consultation in the field of health risk assessment, namely, ____ {specify nature of services, e.g., prediction and assessment to public and private agencies, facilities and individuals and locations following an accidental or terrorist caused release of chemical, biological, radiological or nuclear materials}

 

International Class 44:                   Healthcare services, namely, medication intervention in the nature of ____ {specify nature of services, e.g., pharmaceutical advice}, wellness programs, and health risk intervention counseling services in the nature of ____ {specify nature of services, e.g., health counseling as to all of the risks that come with taking medications}

 

Please get back to me no later than 4:00 pm (eastern standard time) on June 28 with your proposed changes to the identification in both applications.  If the applicant wishes to add Class 42 to the applications, it may do so by Examiner’s Amendment, so long as it authorizes a charge to the deposit account on file for the added fee. 

 

If you need more time to respond, please let me know and I will issue Priority actions, which will give the applicant six months to file a response.

 

Thanks very much and have a wonderful day.

 

Best regards,

Meredith Maresca

 

 

Meredith Maresca

Trademark Examining Attorney

Law Office 109

(571) 272-8985

meredith.maresca@uspto.gov