Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 87788017 TCGRX PHARMACY WORKFLOW SOLUTIONS (Stylized and/or with Design, see http://uspto.report/TM/87788017/mark.png) 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 007 for Pouch package spoolers and winders
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 06/30/2009 and first used in commerce at least as early as 06/30/2009 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Pouch package spoolers and winders; Mechanical pouch package spoolers and winders; computer-controlled pouch packaging machines; computer-controlled vial filling machines; computer-controlled central fill container filling machinesClass 007 for Mechanical pouch package spoolers and winders; computer-controlled pouch packaging machines; computer-controlled vial filling machines; computer-controlled central fill container filling machines
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 09/16/2007 and first used in commerce at least as early as 01/10/2008 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Pharmacy automation products, namely, computer-controlled pharmacy inventory and prescription order management systems, computer-controlled pouch packaging machines, computer controlled vial filling machines, computer-controlled central fill container filling machines, computer-controlled and indicator directed medication-transfer devices consisting primarily of a docking station, indicators, medication holder, and controller, and computer-controlled pouch package verification machines
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 09/16/2007 and first used in commerce at least as early as 01/10/2008 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Pharmacy automation products, namely, computer-controlled pharmacy inventory and prescription order management systems, computer-controlled pouch packaging machines, computer controlled vial filling machines, computer-controlled central fill container filling machines, computer-controlled and indicator directed medication-transfer devices consisting primarily of a docking station, indicators, medication holder, and controller, and computer-controlled pouch package verification machines; Pharmacy automation products, namely, computer-controlled pharmacy inventory and prescription order management systems comprising electronic indicators operable to provide visible information, computer hardware and computer peripherals, video displays, and computer software for controlling the electronic indicators and system and modular inventory storage units, namely, shelves, drawers, cabinets, racks, stands, and hangers each having unique inventory storage locations and an electronic indicator associated with each storage location all sold as a unit to provide visible information which enables rapid identification of the inventory storage location from which an item is to be retrieved or to which an item is to be placed and pharmacy inventory and prescription order management; computer-controlled and indicator directed medication-transfer devices consisting primarily of a docking station with indicators, medication holder, and controller, namely, for organizing tablet-type medication in a docked holder and transferring the medication to an automatic medication packaging device in fulfillment of a prescription order; computer-controlled pouch package inspection and verification machines system comprised of imaging apparatus and computer program software that capture images of the pouch packages and verify the contents of the pouch packagesClass 009 for Pharmacy automation products, namely, computer-controlled pharmacy inventory and prescription order management systems comprising electronic indicators operable to provide visible information, computer hardware and computer peripherals, video displays, and computer software for controlling the electronic indicators and system and modular inventory storage units, namely, shelves, drawers, cabinets, racks, stands, and hangers each having unique inventory storage locations and an electronic indicator associated with each storage location all sold as a unit to provide visible information which enables rapid identification of the inventory storage location from which an item is to be retrieved or to which an item is to be placed and pharmacy inventory and prescription order management; computer-controlled and indicator directed medication-transfer devices consisting primarily of a docking station with indicators, medication holder, and controller, namely, for organizing tablet-type medication in a docked holder and transferring the medication to an automatic medication packaging device in fulfillment of a prescription order; computer-controlled pouch package inspection and verification machines system comprised of imaging apparatus and computer program software that capture images of the pouch packages and verify the contents of the pouch packages
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 02/02/2009 and first used in commerce at least as early as 01/27/2010 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 010 for automatic pill splitters
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 06/30/2009 and first used in commerce at least as early as 06/30/2009 , and is now in use in such commerce.

Proposed:
Tracked Text Description: automatic pill splitters; Automatic pill splitters for splitting medicine into partial dosesClass 010 for Automatic pill splitters for splitting medicine into partial doses
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 06/30/2009 and first used in commerce at least as early as 06/30/2009 , and is now in use in such commerce.
ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use PHARMACY, SOLUTIONS apart from the mark as shown.


Description of mark
The mark consists of the characters TCGRX above PHARMACY WORKFLOW SOLUTIONS with a stylized double helix in the upper left portion of the mark. The elements of the mark are of green colors.

Miscellaneous Statement
The goods have been classified and amended without prejudice in an effort to comply with the direction provided in the Office Action. Two exceptions are that the pouch package inspection and verification system goods remain in class 009 consistent with U.S. trademark application serial no. 86384206, and the medication-transfer device goods remain only in class 009 because the suggested goods description in the Office Action placing these same goods in both classes 009 and 010 appears to be an error.


SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /John E. Munger/      Date: 09/26/2018
Signatory's Name: John E. Munger
Signatory's Position: Attorney of Record, Wisconsin Bar Member
Signatory's Phone Number: 2626326900


Response Signature
Signature: /John E. Munger/     Date: 09/26/2018
Signatory's Name: John E. Munger
Signatory's Position: Attorney of Record, Wisconsin Bar Member

Signatory's Phone Number: 2626326900

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; 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. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 87788017
Internet Transmission Date: Wed Sep 26 17:14:36 EDT 2018
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2018092617143646
5593-87788017-610d0e87c577fa8bb68fe83a89
793bf6b769368933eafea66dda793f02d31fc6d-
N/A-N/A-20180926164800456377