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. 88314163 CVS KIDNEY CARE (Stylized and/or with Design, see http://uspto.report/TM/88314163/mark.png) has been amended as follows:

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

Applicant has amended the identification of goods and services as requested by the Examining Attorney and as informally reviewed and approved by the Examining Attorney on August 20. Please contact the undersigned with any questions, thank you.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Healthcare operations management services, including, providing care coordination services to healthcare providers, including, providing care coordination services to patients in collaboration with participating providers to guide patients to appropriate care, services and resources that assist patients in protecting and improving their health with a particular focus on patients with kidney disease, and providing services to patients in the nature of researching and connecting patients to healthcare resources, case management, coordination of care among health providers, dialysis providers, plan sponsors, and facilities, medication management, disease management, psychosocial support, lifestyle changes to improve health, healthcare education, patient advocacy, compliance with their doctor's plan of care
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.

Proposed:
Tracked Text Description: Healthcare operations management services, including, providing care coordination services to healthcare providers, including, providing care coordination services to patients in collaboration with participating providers to guide patients to appropriate care, services and resources that assist patients in protecting and improving their health with a particular focus on patients with kidney disease, and providing services to patients in the nature of researching and connecting patients to healthcare resources, case management, coordination of care among health providers, dialysis providers, plan sponsors, and facilities, medication management, disease management, psychosocial support, lifestyle changes to improve health, healthcare education, patient advocacy, compliance with their doctor's plan of care; Providing healthcare operations management services for healthcare providers, namely, facilitating the administrative coordination of patient care among health providers, dialysis providers, health plan sponsors, health facilities, pharmacies for medication management, physicians for disease management and psychosocial support, with a particular focus on patients with kidneyClass 035 for Providing healthcare operations management services for healthcare providers, namely, facilitating the administrative coordination of patient care among health providers, dialysis providers, health plan sponsors, health facilities, pharmacies for medication management, physicians for disease management and psychosocial support, with a particular focus on patients with kidney
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Educational services, including, providing patient education and training in the field of kidney disease and treatment
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.

Proposed:
Tracked Text Description: Educational services, including, providing patient education and training in the field of kidney disease and treatment; Educational services, namely, providing patient education in the form of classes, seminars and workshops and training in the field of kidney disease and treatmentClass 041 for Educational services, namely, providing patient education in the form of classes, seminars and workshops and training in the field of kidney disease and treatment
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 044 for Medical services; health care services; medical services in the field of nephrology, including, kidney dialysis services and providing in-home treatment for patients with kidney disease; in-home hemodialysis and peritoneal dialysis services
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.

Proposed: Class 044 for Medical services; health care services; medical services in the field of nephrology, including, kidney dialysis services and providing in-home treatment for patients with kidney disease; in-home hemodialysis and peritoneal dialysis services
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 045 for Healthcare operations management services, including, providing care coordination services to patients in the nature of researching and connecting patients to healthcare resources, case management, coordination of care among health providers, dialysis providers, plan sponsors, facilities, medication management, disease management, psychosocial support, healthcare education, patient advocacy, compliance with their doctor's plan of care
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.

Proposed:
Tracked Text Description: Healthcare operations management services, including, providing care coordination services to patients in the nature of researching and connecting patients to healthcare resources, case management, coordination of care among health providers, dialysis providers, plan sponsors, facilities, medication management, disease management, psychosocial support, healthcare education, patient advocacy, compliance with their doctor's plan of care; Providing healthcare case management services for health care coordination, namely, providing care coordination services to healthcare providers and patients for coordinating healthcare services, coordinating the provision of individualized care to patients, facilitating and connecting patients to healthcare providers, dialysis providers, health plan sponsors, medical facilities, pharmacies for medication management, physicians for disease management and psychosocial support, and patient advocacy support groups, with a particular focus on patients with kidney diseaseClass 045 for Providing healthcare case management services for health care coordination, namely, providing care coordination services to healthcare providers and patients for coordinating healthcare services, coordinating the provision of individualized care to patients, facilitating and connecting patients to healthcare providers, dialysis providers, health plan sponsors, medical facilities, pharmacies for medication management, physicians for disease management and psychosocial support, and patient advocacy support groups, with a particular focus on patients with kidney disease
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.

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use KIDNEY CARE apart from the mark as shown.


SIGNATURE(S)
Response Signature
Signature: /miriam trudell/     Date: 08/21/2019
Signatory's Name: Miriam D. Trudell
Signatory's Position: Attorney of record, Colorado bar member

Signatory's Phone Number: 3038639700

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.

        
Serial Number: 88314163
Internet Transmission Date: Wed Aug 21 16:54:29 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2019082116542906
0779-88314163-610347beb8f47945f86cc15458
6b1df86ae9c8204cda36851c4d4878a8ab59-N/A
-N/A-20190821165135309795