Notation to File

NOTE TO THE FILE

SERIAL NUMBER:            88166517

DATE:                                02/11/2019

NAME:                               mkoberidze

NOTE:         

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From: Sitzmann, Timothy [mailto:TSitzmann@winthrop.com]
Sent: Friday, February 08, 2019 6:36 PM
To: Koberidze, Maryna <Maryna.Koberidze@USPTO.GOV>
Subject: RE: Trademark Application Serial No. 88166519, SPOTRX – Examiner Amendment Request

 

Thanks Maryna, have a nice weekend too!

 

Timothy D. Sitzmann
(612) 604-6689
tsitzmann@winthrop.com

 

Notice: Important disclaimers & limitations apply to this email.

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From: Koberidze, Maryna <Maryna.Koberidze@USPTO.GOV>
Sent: Friday, February 8, 2019 3:45 PM
To: Sitzmann, Timothy <TSitzmann@winthrop.com>
Cc: Olsen, Michael <MOlsen@winthrop.com>; Classen, Cheryl E. <CClassen@winthrop.com>; Chambers, Tucker A. <TChambers@winthrop.com>; '21817.19.imanage@file.winthrop.com' <21817.19.imanage@file.winthrop.com>
Subject: RE: Trademark Application Serial No. 88166519, SPOTRX – Examiner Amendment Request

 

Dear Timothy,

 

Thank you for reaching out and letting me know. I will proceed accordingly. Have a nice weekend!

 

Sincerely,

Maryna Koberidze

 

Trademark Examining Attorney

U.S. Patent and Trademark Office

Law Office 127

Phone: (571) 270-7630

Fax: (571) 273-6391

maryna.koberidze@uspto.gov

 

From: Sitzmann, Timothy [mailto:TSitzmann@winthrop.com]
Sent: Friday, February 08, 2019 12:43 PM
To: Koberidze, Maryna <Maryna.Koberidze@USPTO.GOV>
Cc: Olsen, Michael <MOlsen@winthrop.com>; Classen, Cheryl E. <CClassen@winthrop.com>; Chambers, Tucker A. <TChambers@winthrop.com>; '21817.19.imanage@file.winthrop.com' <21817.19.imanage@file.winthrop.com>
Subject: FW: Trademark Application Serial No. 88166519, SPOTRX – Examiner Amendment Request

 

Dear Maryna,

 

My name is Tim Sitzmann. I am one of the attorneys listed for the SPOTRX applications. We have been unable to obtain any instructions regarding the proposed amendment below and do not expect to receive such instructions within the next week. As a result, could you please proceed with a Priority Action or Office Action?

 

Thanks and kind regards,

Tim

 

Timothy D. Sitzmann
(612) 604-6689
tsitzmann@winthrop.com

 

Notice: Important disclaimers & limitations apply to this email.

Please click here for our disclaimers and limitations.

 

 

From: Koberidze, Maryna <Maryna.Koberidze@USPTO.GOV>
Sent: Wednesday, February 6, 2019 2:50 PM
To: Trademark <Trademark@winthrop.com>; Olsen, Michael <MOlsen@winthrop.com>
Subject: Trademark Application Serial No. 88166519, SPOTRX – Examiner Amendment Request

 

Good afternoon:

 

I am the assigned examining attorney in the above referenced trademark application.  The identification of services must be amended for accuracy and clarity. The following identification of services is proposed and may be adopted (the examining attorney’s suggestions in bold font):

 

Class 44: Pharmacy advice in the nature of pharmaceutical advice; Preparation and dispensing of prescription and non-prescription pharmaceuticals, drugs and medications; Telemedicine services; Telepharmacy services being the provision of pharmaceutical advice and dispensing of pharmaceuticals; Providing information relating to the preparation and dispensing of medications, drugs and pharmaceuticals; Providing information to patients in the field of administering medications, drugs and pharmaceuticals; Providing medical information in the field of medications, drugs and pharmaceuticals; Mobile medical clinic services

 

Please note that certain wording in the identification was removed because it was classified incorrectly. If you would like to add and pay for additional classes to be added to the application, the services would be classified as follows:

 

Class 35: Retail Pharmacy services; Online Retail pharmacy services; Pharmacy dispensary in the nature of retail pharmacy services; Drugstore dispensary in the nature of retail drug store services; Mobile retail pharmacy services

 

Class 42: Operation of an internet website for pharmacy customers with the ability to view and refill prescriptions, namely, providing an internet website featuring technology that enables pharmacy customer users to view and refill prescriptions

 

The fee for adding additional classes is $275/class. If you would like to proceed with Class 44 only, I will be happy to issue an Examiner’s Amendment to delete the improperly classified services from the application and then will send a Suspension Letter due to prior-filed potentially conflicting application and foreign registration requirement. Alternatively, if you would like to add and pay for Classes 35 and/or 42 to be added to the application, I will issue a Priority Action with the identification of services requirement, multi-lass requirement, prior-filed potentially conflicting application and foreign registration requirement.

 

Please let me know how would you like to proceed. I look forward to your reply before Friday (February 8, 2019). Have a nice rest of the day!

 

Sincerely,

Maryna Koberidze

 

Trademark Examining Attorney

U.S. Patent and Trademark Office

Law Office 127

Phone: (571) 270-7630

Fax: (571) 273-6391

maryna.koberidze@uspto.gov

 

 

From: Koberidze, Maryna
Sent: Wednesday, February 06, 2019 9:42 AM
To: trademark@winthrop.com; molsen@winthrop.com
Subject: Trademark Application Serial No. 88166517, SPOTRX – Examiner Amendment Request

 

Good morning:

 

I am the assigned examining attorney in the above referenced trademark application.  The identification of services must be amended for accuracy and clarity. The following identification of services is proposed and may be adopted (examining attorney’s suggestion in bold font):

 

Class 42: Providing online non-downloadable software for ordering medications, drugs and pharmaceuticals, for managing prescriptions, and for virtual consultations with remote pharmacists; Providing online non-downloadable software that facilitates the remote control of and communication with a network of dispensers that count, measure and dispense prescription, over-the-counter and behind-the-counter medications, drugs and pharmaceuticals; Providing online non-downloadable software for controlling and operating vending machines for dispensing prescription, over-the-counter and behind-the-counter medications, drugs, and pharmaceuticals; Providing online non-downloadable software for use in machines for dispensing medications, drugs and pharmaceuticals to end users; Providing online non-downloadable software for facilitating live communications between pharmacists, pharmacy technicians and end users to disseminate information in the field of patient care, medications, drugs and pharmaceuticals; Technical support services, namely, troubleshooting in the nature of diagnosing problems with for vending machines for dispensing prescription, over-the-counter and behind-the-counter medications, drugs, and pharmaceuticals; technical support services, namely, troubleshooting of for downloadable mobile applications problems; Technical support services, namely, for troubleshooting in the nature of diagnosing computer hardware and software problems; Technical support services, namely, troubleshooting of computer software problems

 

Upon your authorization, I will be happy to issue an Examiner’s Amendment and make the change outlined above. Please be advised that the Examiner’s Amendment will be followed by a suspension letter due to prior-filed potentially conflicting applications.

 

I look forward to your reply before Friday (February 8, 2019). Have a nice day!

 

Sincerely,

Maryna Koberidze

 

Trademark Examining Attorney

U.S. Patent and Trademark Office

Law Office 127

Phone: (571) 270-7630

Fax: (571) 273-6391

maryna.koberidze@uspto.gov