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)

---

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. 88166517 SPOTRX(Standard Characters, see http://uspto.report/TM/88166517/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:



CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for 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 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 for vending machines for dispensing prescription, over-the-counter and behind-the-counter medications, drugs, and pharmaceuticals; technical support services for downloadable mobile applications; Technical support services for troubleshooting computer hardware and software problems
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and 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.

Filing Basis: Section 44(d), Priority based on foreign filing: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Canada application number 1920206 filed 09/14/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: 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 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; Providing online non-downloadable software for facilitating live communications between pharmacists, pharmacy technicians and end users in the field of patient care, medications, drugs and pharmaceuticals; Technical support services for vending machines for dispensing prescription, over-the-counter and behind-the-counter medications, drugs, and pharmaceuticals; Technical support services, namely, troubleshooting in the nature of diagnosing problems with vending machines for dispensing prescription, over-the-counter and behind-the-counter medications, drugs, and pharmaceuticals; technical support services for downloadable mobile applications; technical support services, namely, troubleshooting of downloadable mobile application problems; Technical support services for troubleshooting computer hardware and software problems; Technical support services, namely, troubleshooting in the nature of diagnosing computer hardware and software problems; Technical support services, namely, troubleshooting of computer software problems; 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 prescriptionsClass 042 for 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 dispensing medications, drugs and pharmaceuticals to end users; Providing online non-downloadable software for facilitating live communications between pharmacists, pharmacy technicians and end users in the field of patient care, medications, drugs and pharmaceuticals; Technical support services, namely, troubleshooting in the nature of diagnosing problems with vending machines for dispensing prescription, over-the-counter and behind-the-counter medications, drugs, and pharmaceuticals; technical support services, namely, troubleshooting of downloadable mobile application problems; Technical support services, namely, troubleshooting in the nature of diagnosing computer hardware and software problems; Technical support services, namely, troubleshooting of computer software problems; 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
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and 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.

Filing Basis: Section 44(d), Priority based on foreign filing:For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Canada application number 1920206 filed 09/14/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

The applicant's current attorney information: Michael T. Olsen. Michael T. Olsen of WINTHROP & WEINSTINE, P.A., is located at

      225 SOUTH SIXTH STREET, SUITE 3500
      MINNEAPOLIS, Minnesota 55402
      US
The docket/reference number is 21817.1.

The phone number is 612-604-6718.

The fax number is 612-604-6818.

The email address is trademark@winthrop.com

The applicants proposed attorney information: Michael T. Olsen. Other appointed attorneys are Timothy D. Sitzmann, Nadeem R. Schwen, Alicia Griffin Mills. Michael T. Olsen of WINTHROP & WEINSTINE, P.A., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      Capella Tower Suite 3500
      225 SOUTH SIXTH STREET, SUITE 3500
      MINNEAPOLIS, Minnesota 55402
      United States
The docket/reference number is 21817.18.

The phone number is 612-604-6718.

The fax number is 612-604-6818.

The email address is trademark@winthrop.com

Michael T. Olsen submitted the following statement: I attest that I am an attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory).
The applicant's current correspondence information: MICHAEL T. OLSEN. MICHAEL T. OLSEN of WINTHROP & WEINSTINE, P.A., is located at

      225 SOUTH SIXTH STREET, SUITE 3500
      MINNEAPOLIS, Minnesota 55402
      US
The docket/reference number is 21817.1.

The phone number is 612-604-6718.

The fax number is 612-604-6818.

The email address is trademark@winthrop.com; molsen@winthrop.com; tsitzmann@winthrop.com; tchambers@winthrop.com; cclassen@winthrop.com

The applicants proposed correspondence information: Michael T. Olsen. Michael T. Olsen of WINTHROP & WEINSTINE, P.A., is located at

      Capella Tower Suite 3500
      225 SOUTH SIXTH STREET, SUITE 3500
      MINNEAPOLIS, Minnesota 55402
      United States
The docket/reference number is 21817.18.

The phone number is 612-604-6718.

The fax number is 612-604-6818.

The email address is trademark@winthrop.com; molsen@winthrop.com; tsitzmann@winthrop.com; jbriley@winthrop.com

SIGNATURE(S)
Response Signature
Signature: /Timothy Sitzmann/     Date: 08/12/2019
Signatory's Name: Timothy Sitzmann
Signatory's Position: Attorney of record, Minnesota bar member

Signatory's Phone Number: 612.604.6689

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); 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.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    MICHAEL T. OLSEN
   WINTHROP & WEINSTINE, P.A.
   
   225 SOUTH SIXTH STREET, SUITE 3500
   MINNEAPOLIS, Minnesota 55402
Mailing Address:    Michael T. Olsen
   WINTHROP & WEINSTINE, P.A.
   Capella Tower Suite 3500
   225 SOUTH SIXTH STREET, SUITE 3500
   MINNEAPOLIS, Minnesota 55402
        
Serial Number: 88166517
Internet Transmission Date: Mon Aug 12 18:21:38 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20190812182138
897335-88166517-6109c1c9af863ab6a71c76a6
01e104e5357e2429592bc607e972f8f31f16b5cb
59f-N/A-N/A-20190812181327397135