| PTO Form 1957 (Rev 8/2005) |
| OMB Control #0651-0050 (Exp. 04/30/2006) |
| Input Field |
Entered |
| SERIAL NUMBER | 76593497 |
| MARK SECTION (current) | |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| LITERAL ELEMENT | SAFETY |
| COLOR MARK | NO |
| MARK SECTION (proposed) | |
| MARK FILE NAME | \\TICRS\EXPORT10\IMAGEOUT 10\765\934\76593497\xml2\ ROA0002.JPG |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | NO |
| LITERAL ELEMENT | SAFETY DENTAL FLOSS |
| COLOR MARK | NO |
| PIXEL COUNT ACCEPTABLE | YES |
| PIXEL COUNT | 711 x 943 |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
|
SUBSTANTIVE REFUSAL - Section 1, 2, and 45: The Office Action states that the "Registration is refused because the proposed mark, as used on the specimen of record, does not function as a trademark to indicate the source of the identified goods." The Office Action further states: "The specimen consists of packaging for the goods and the mark does not function as a trademark on the specimen because the mark "SAFETY" is not used to indicate source of the goods of dental floss. Rather, the mark is used to inform the user that the dental floss will be "safe" to use, and will not indicate the source of these goods."
Applicant has amended the drawing to read: "SAFETY DENTAL FLOSS," which is the mark used on the specimens. The whole trademark is "SAFETY DENTAL FLOSS." The specimen submitted at the time of filing clearly bears the trademark "SAFETY DENTAL FLOSS," which is sought to be registered.
The word "SAFETY" is a surprising or unusual term to be used with "DENTAL FLOSS" as dental floss is not usually considered unsafe to use. One does not ordinarily concern themselves that dental floss would not be safe to use when cleaning ones teeth, and therefore the mark is not merely descriptive and is not laudatory in nature.
In TMEP §§ 1202 and following, the use of a trademark is discussed. As mentioned, there are a variety of possible rejections. The present rejection is apparently based on "informational matter" in Section 1202.04. This section reads as follows:
"Slogans that are considered to be merely informational in nature or to be common laudatory phrases or statements that would ordinarily be used in business or in the particular trade or industry are not registrable."
"SAFETY DENTAL FLOSS" is not a slogan, and is not merely informational in nature. Instead, it is a three word mark.
Applicant is not trying to inform the user that this dental floss will not be harmful to them when they use it. No dental floss is harmful to the user other than occasionally causing miner bleeding of the gums. The word "SAFETY" is unusual and surprising when used with the words "DENTAL FLOSS." Therefore, the word "SAFETY" is not merely informational.
Applicant is unaware of any warnings on dental floss packages to the effect that injury might occur to the teeth or gums when using the dental floss product. There are no warnings to the effect that it is unsafe to use dental floss for cleaning the teeth of the user.
Applicant's mark "SAFETY DENTAL FLOSS" is not a common laudatory phrase or statement. To the knowledge of the Applicant, "SAFETY DENTAL FLOSS" is not commonly used as a trademark to identify dental floss. On the other hand, "SAFETY DENTAL FLOSS" is unique and unusual for a trademark and is not a common laudatory phrase or statement. It is clearly used as a trademark in this trademark sense to identify the source of the goods.
|
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME | \\TICRS\EXPORT10\IMAGEOUT 10\765\934\76593497\xml2\ ROA0003.JPG |
| DESCRIPTION OF EVIDENCE FILE | new drawing |
| GOODS AND/OR SERVICES SECTION (class deleted) | |
| INTERNATIONAL CLASS | 010 |
| DESCRIPTION | Dental floss |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | 04/12/2004 |
| FIRST USE IN COMMERCE DATE | 04/12/2004 |
| GOODS AND/OR SERVICES SECTION (class added) | |
| INTERNATIONAL CLASS | 021 |
| DESCRIPTION | Dental floss |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | 04/12/2004 |
| FIRST USE IN COMMERCE DATE | 04/12/2004 |
| ADDITIONAL STATEMENTS SECTION | |
| DISCLAIMER | No claim is made to the exclusive right to use DENTAL FLOSS apart from the mark as shown. |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | /Bernard L. Kleinke/ |
| SIGNATORY NAME | Bernard L. Kleinke |
| SIGNATORY POSITION | Attorney of Record |
| SIGNATURE DATE | 06/23/2005 |
| RESPONSE SIGNATURE | /Bernard L. Kleinke/ |
| SIGNATORY NAME | Bernard L. Kleinke |
| SIGNATORY POSITION | Attorney of Record |
| SIGNATURE DATE | 06/23/2005 |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu Jun 23 20:56:22 EDT 2005 |
| TEAS STAMP | USPTO/OA-XXXXXXXXXX-20050 623205622402306-76593497- 20018f61ef08ab13da95744ca 935b93ff9d-N-N-2005062320 4724478595 |
| PTO Form 1957 (Rev 8/2005) |
| OMB Control #0651-0050 (Exp. 04/30/2006) |
| Application serial no. 76593497 is amended as follows: | |
| Mark | |
| Applicant proposes to amend the mark as follows: | |
| Original: SAFETY (Stylized and/or with Design) |
|
| Proposed: SAFETY DENTAL FLOSS (Stylized and/or with Design, see mark) | |
The mark consists of standard characters, without claim to any particular font, style, size, or color. |
|
| Argument(s) | |
| In response to the substantive refusal(s), please note the following: | |
|
SUBSTANTIVE REFUSAL - Section 1, 2, and 45: The Office Action states that the "Registration is refused because the proposed mark, as used on the specimen of record, does not function as a trademark to indicate the source of the identified goods." The Office Action further states: "The specimen consists of packaging for the goods and the mark does not function as a trademark on the specimen because the mark "SAFETY" is not used to indicate source of the goods of dental floss. Rather, the mark is used to inform the user that the dental floss will be "safe" to use, and will not indicate the source of these goods."
Applicant has amended the drawing to read: "SAFETY DENTAL FLOSS," which is the mark used on the specimens. The whole trademark is "SAFETY DENTAL FLOSS." The specimen submitted at the time of filing clearly bears the trademark "SAFETY DENTAL FLOSS," which is sought to be registered.
The word "SAFETY" is a surprising or unusual term to be used with "DENTAL FLOSS" as dental floss is not usually considered unsafe to use. One does not ordinarily concern themselves that dental floss would not be safe to use when cleaning ones teeth, and therefore the mark is not merely descriptive and is not laudatory in nature.
In TMEP §§ 1202 and following, the use of a trademark is discussed. As mentioned, there are a variety of possible rejections. The present rejection is apparently based on "informational matter" in Section 1202.04. This section reads as follows:
"Slogans that are considered to be merely informational in nature or to be common laudatory phrases or statements that would ordinarily be used in business or in the particular trade or industry are not registrable."
"SAFETY DENTAL FLOSS" is not a slogan, and is not merely informational in nature. Instead, it is a three word mark.
Applicant is not trying to inform the user that this dental floss will not be harmful to them when they use it. No dental floss is harmful to the user other than occasionally causing miner bleeding of the gums. The word "SAFETY" is unusual and surprising when used with the words "DENTAL FLOSS." Therefore, the word "SAFETY" is not merely informational.
Applicant is unaware of any warnings on dental floss packages to the effect that injury might occur to the teeth or gums when using the dental floss product. There are no warnings to the effect that it is unsafe to use dental floss for cleaning the teeth of the user.
Applicant's mark "SAFETY DENTAL FLOSS" is not a common laudatory phrase or statement. To the knowledge of the Applicant, "SAFETY DENTAL FLOSS" is not commonly used as a trademark to identify dental floss. On the other hand, "SAFETY DENTAL FLOSS" is unique and unusual for a trademark and is not a common laudatory phrase or statement. It is clearly used as a trademark in this trademark sense to identify the source of the goods.
|
|
| Evidence | |
| Evidence in the nature of new drawing has been attached. | |
| Evidence-1 | |
| Classification and Listing of Goods/Services | |
| Applicant hereby deletes the following class of goods/services from the application. | |
| Class 010 for Dental floss | |
| Applicant hereby adds the following class of goods/services to the application: |
|
| New: Class 021 for Dental floss |
|
| Section 1(a), Use in Commerce: Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, or the applicant's predecessor in interest used the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used on 04/12/2004 and first used in commerce on 04/12/2004, and is now in use in such commerce. | |
| Additional Statements | |
| No claim is made to the exclusive right to use DENTAL FLOSS apart from the mark as shown. | |
| Declaration Signature |
|
| The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true. | |
| Signature: /Bernard L. Kleinke/ Date: 06/23/2005 | |
| Signatory's Name: Bernard L. Kleinke | |
| Signatory's Position: Attorney of Record | |
| Response Signature | |
| Signature: /Bernard L. Kleinke/ Date: 06/23/2005 | |
| Signatory's Name: Bernard L. Kleinke | |
| Signatory's Position: Attorney of Record | |
| Serial Number: 76593497 | |
| Internet Transmission Date: Thu Jun 23 20:56:22 EDT 2005 | |
| TEAS Stamp: USPTO/OA-XXXXXXXXXX-20050623205622402306 -76593497-20018f61ef08ab13da95744ca935b9 3ff9d-N-N-20050623204724478595 |
