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. 88493430 MCKESSON VERBALCARE(Standard Characters, see http://uspto.report/TM/88493430/mark.png) has been amended as follows:

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

The U.S. Patent and Trademark Office (the ?USPTO?) has initially cited U.S. Registration No. 5,272,607 for the mark ?VERBALCARE? in the name of Medical Specialties Distributors, LLC as a bar to registration of U.S. Application Serial No. 88/493430 for the mark ?MCKESSON VERBALCARE? in the name of McKesson Corporation under Trademark Act Section 2(d). Applicant respectfully submits that Medical Specialties Distributors, LLC is an indirect and wholly owned subsidiary of McKesson Corporation. Accordingly, no likelihood of consumer confusion as to source exists, and Applicant requests that the USPTO withdraw the refusal.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 009 for Software for providing secure communications between healthcare providers and patients; software for collecting health data from patients and for securely transmitting health data between healthcare providers and patients; software for healthcare providers to create, customize, and administer surveys to patients and for patients to respond to surveys and to store and review survey responses; software for healthcare providers to coordinate healthcare with patients and to monitor patient compliance; software for managing healthcare workflow; software for scheduling healthcare; software for analyzing and reporting health data; software for ordering and tracking medical and nutritional supplies
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: Software for providing secure communications between healthcare providers and patients; Downloadable software for providing secure communications between healthcare providers and patients; software for collecting health data from patients and for securely transmitting health data between healthcare providers and patients; downloadable software for collecting health data from patients and for securely transmitting health data between healthcare providers and patients; software for healthcare providers to create, customize, and administer surveys to patients and for patients to respond to surveys and to store and review survey responses; downloadable software for healthcare providers to create, customize, and administer surveys to patients and for patients to respond to surveys and to store and review survey responses; software for healthcare providers to coordinate healthcare with patients and to monitor patient compliance; downloadable software for healthcare providers to coordinate healthcare with patients and to monitor patient compliance; software for managing healthcare workflow; downloadable software for managing healthcare workflow; software for scheduling healthcare; downloadable software for scheduling healthcare; software for analyzing and reporting health data; downloadable software for analyzing and reporting health data; software for ordering and tracking medical and nutritional supplies; downloadable software for ordering and tracking medical and nutritional suppliesClass 009 for Downloadable software for providing secure communications between healthcare providers and patients; downloadable software for collecting health data from patients and for securely transmitting health data between healthcare providers and patients; downloadable software for healthcare providers to create, customize, and administer surveys to patients and for patients to respond to surveys and to store and review survey responses; downloadable software for healthcare providers to coordinate healthcare with patients and to monitor patient compliance; downloadable software for managing healthcare workflow; downloadable software for scheduling healthcare; downloadable software for analyzing and reporting health data; downloadable software for ordering and tracking medical and nutritional supplies
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.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: McKesson Corporation, a corporation of Delaware, having an address of
      6535 North State Highway 161
      Irving, Texas 75039
      United States

Proposed: McKesson Corporation, a corporation of Delaware, having an address of
      6535 North State Highway 161
      Irving, Texas 75039
      United States
      Email Address: legal.trademarks@mckesson.com

The owner's/holder's current attorney information: Auma N. Reggy. Auma N. Reggy of MCKESSON CORPORATION, is located at

      LAW DEPARTMENT
      2 NATIONAL DATA PLAZA, NE
      ATLANTA, Georgia 30329
      United States
      The phone number is 404-461-5216.
      The fax number is 404-461-1457.
      The email address is legal.trademarks@mckesson.com

The owner's/holder's proposed attorney information: Auma N. Reggy. Auma N. Reggy of MCKESSON CORPORATION, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      LAW DEPARTMENT
      2 NATIONAL DATA PLAZA, NE
      ATLANTA, Georgia 30329
      United States
      The phone number is 404-461-5216.
      The fax number is 404-461-1457.
      The email address is auma.reggy@mckesson.com

Auma N. Reggy submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.Correspondence Information (current):
      AUMA N. REGGY
      PRIMARY EMAIL FOR CORRESPONDENCE: legal.trademarks@mckesson.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): auma.reggy@mckesson.com
Correspondence Information (proposed):
      Auma N. Reggy
      PRIMARY EMAIL FOR CORRESPONDENCE: auma.reggy@mckesson.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): auma.reggy@mckesson.com

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

ADDITIONAL STATEMENTS
Claim of Active Prior Registration(s)
The applicant claims ownership of active prior U.S. Registration Number(s) 5272607.


Miscellaneous Statement
Applicant notes here again that Medical Specialties Distributors, LLC is an indirect and wholly owned subsidiary of McKesson Corporation.


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: /anr/      Date: 03/09/2020
Signatory's Name: Auma N. Reggy
Signatory's Position: Chief Trademark Counsel, Attorney of Record, Georgia Bar member
Signatory's Phone Number: (404) 461-5216


Response Signature
Signature: /anr/     Date: 03/09/2020
Signatory's Name: Auma N. Reggy
Signatory's Position: Chief Trademark Counsel, Attorney of Record, Georgia Bar member

Signatory's Phone Number: (404) 461-5216

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:    AUMA N. REGGY
   MCKESSON CORPORATION
   LAW DEPARTMENT
   2 NATIONAL DATA PLAZA, NE
   ATLANTA, Georgia 30329
Mailing Address:    Auma N. Reggy
   MCKESSON CORPORATION
   LAW DEPARTMENT
   2 NATIONAL DATA PLAZA, NE
   ATLANTA, Georgia 30329
        
Serial Number: 88493430
Internet Transmission Date: Mon Mar 09 17:01:01 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.X-20200309170101880
370-88493430-710c3d6ac16ae28d7a72463f817
1740621a511f392781f8d46efd8881c7a5fcbc11
-N/A-N/A-20200309164915228602