To: | CVS Pharmacy, Inc. (erich.rhynhart@cvscaremark.com) |
Subject: | U.S. Trademark Application Serial No. 88586631 - PHARMACIST PANEL - N/A |
Sent: | November 29, 2019 11:41:35 AM |
Sent As: | ecom111@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88586631
Mark: PHARMACIST PANEL
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Correspondence Address: |
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Applicant: CVS Pharmacy, Inc.
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: November 29, 2019
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
The referenced application has been reviewed by the assigned trademark examining attorney.
No Conflicting Marks
The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
However, the applicant must address the following informalities.
Identification of Services
Applicant has classified “providing medical information” in International Class 035; however, the proper classification is International Class 044. Therefore, applicant may respond by (1) adding International Class 044 to the application and reclassifying these goods and/or services in the proper international class, (2) deleting “providing medical information” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods and/or services in the proper international class. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.
Further, the wording “providing information” in the identification of services is indefinite and too broad and must be clarified because the wording does not specify the subject matter of the services and could identify services in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1402.11(b). Classification of information services is based on the subject matter of the information provided. TMEP §1402.11(b).
Similarly, “providing consultation services” is classified by the subject matter of the consultation. “Developing and managing comprehensive programs comprising drug therapy and physician support services in the nature of providing consultation services for persons with health issues” appears to be misclassified.
The wording “software as a service featuring an application tool” in the identification of services is indefinite and must be clarified because “application tool” does not identify the services with the required precision. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant may adopt the following identification, if accurate.
Retail store and online mail order services in the field of prescription drugs and patient, prescription and drug therapy information; providing consumer information regarding patient’s prescription drugs and drug therapy;.
Software as a service featuring software for patient drug therapy and utilization management of prescriptions.
Providing medical information regarding prescription drugs and drug therapy; providing medical information regarding patients' prescription drugs and drug therapy; developing and managing comprehensive programs comprising drug therapy and physician support services in the nature of providing medical consultation services for persons with health issues in International Class 044.
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Multiple-Class Applications
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least three classes; however, applicant submitted a fee(s) sufficient for only two class(es). Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
Disclaimer
In this case, applicant must disclaim the word “PHARMACIST” because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
The attached evidence from the online Merriam-Webster Dictionary shows this word means “a health-care professional licensed to engage in pharmacy with duties including dispensing prescription drugs, monitoring drug interactions, administering vaccines, and counseling patients regarding the effects and proper usage of drugs and dietary supplements.” The services focus on such health care services and are presumably intended for use by pharmacists.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “PHARMACIST” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
Questions Regarding Office Action
How to respond. Click to file a response to this nonfinal Office action.
/allison holtz/
Allison Holtz
Trademark Examining Attorney
Law Office 111
allison.holtz@uspto.gov (preferred)
571-272-9383
RESPONSE GUIDANCE