| To: | Colgate-Palmolive Company (amanda_samuel@colpal.com) |
| Subject: | TRADEMARK APPLICATION NO. 78184936 - PORTABLE - N/A |
| Sent: | 4/28/03 9:17:30 AM |
| Sent As: | ECom112 |
| Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 78/184936
APPLICANT: Colgate-Palmolive Company
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CORRESPONDENT ADDRESS: Amanda Samuel Colgate-Palmolive Company 300 Park Avenue New York NY USA 10022
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3513 ecom112@uspto.gov
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MARK: PORTABLE
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: amanda_samuel@colpal.com |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 78/184936
The assigned examining attorney has reviewed the referenced application and determined the following.
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.
The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the applicant’s goods. Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP section 1209 et seq.
A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. 1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP section 1209.01(b). The applicant seeks to register the mark PORTABLE for “toothbrushes.” The mark is merely descriptive of the applicant’s goods because it identifies a feature of the good, namely, that they are portable.
The wording “portable” is commonly used to identify a feature of toothbrushes. The applicant is directed to the attached evidence from the LEXIS/NEXIS database, in particular story number 8 of 29, referring to marketing a “portable toothbrush.”
Moreover, the proposed mark appears to be generic as applied to the goods and, therefore, incapable of identifying the applicant's goods and distinguishing them from those of others. In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987); In re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991). Under these circumstances, the examining attorney cannot recommend an amendment to proceed under Trademark Act Section 2(f), 15 U.S.C. Section 1052(f), or an amendment to the Supplemental Register.
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration. If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informality.
The nature of the goods is not clear from the present record. In order to allow proper consideration of the goods on which the applicant intends to use the mark, the applicant must submit samples of advertisements or promotional materials for goods of the same type. If such materials are not available, the applicant must submit a photograph of similar goods and must describe the nature, purpose and channels of trade of the goods on which the applicant has asserted a bona fide intent to use the mark. 37 C.F.R. Section 2.61(b); TMEP sections 1103.04 and 1105.02.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Andy Corea/
Examining Attorney
Trademark Law Office 112
703/308-9112 x160
How to respond to this Office Action:
To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.
To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.
To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.
Fee increase effective January 1, 2003
Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class. The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00.
Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003.
108B8C
Print Request: Selected Document(s): 1,8,9,12,19
Time of Request: April 28, 2003 09:10 AM EDT
Number of Lines: 110
Job Number: 1861:0:89176679
Client ID/Project Name:
Research Information:
US Newspapers and Wires
toothbrush /3 portable
Send to: COREA, ANDY
TRADEMARK LAW LIBRARY
2101 CRYSTAL PLAZA ARC
MAILBOX 314
ARLINGTON, VIRGINIA 22202-4600
1 of 29 DOCUMENTS
Copyright 2002 The Tulsa World
Tulsa World (Oklahoma)
December 22, 2002 Sunday Final Home Edition
SECTION: ENTERTAINMENT; Performing Arts; Pg. H1
LENGTH: 1536 words
HEADLINE: Rock press bios offer writing that's sublime, ridiculous
BYLINE: THOMAS CONNER World Entertainment Writer
BODY:
...name. The debut of pop wunderkind Moses Leroy was titled "Growing Up Clean in America," and the press kits came with portable toothbrush and toothpaste kits.
Mid-'90s glam-rock failures Psychotica tried to grab our attention by sending a small ...
8 of 29 DOCUMENTS
Copyright 1999 Times Mirror Company
Los Angeles Times
August 20, 1999, Friday, Valley Edition
SECTION: Metro; Part B; Page 1; Zones Desk
LENGTH: 761 words
HEADLINE: SPOTLIGHT / PATRICIA WARD BIEDERMAN;
VALLEY LIFE;
Late Inventor's Brother Polishes Plan to Sell Portable Toothbrush
BYLINE: PATRICIA WARD BIEDERMAN
BODY:
...needed braces to straighten his lower teeth. The challenge of keeping his braces spinach-free inspired Bob to imagine something more portable than a conventional toothbrush. His bright idea: a dime-sized pad permeated with toothpaste and backed with adhesive. Affix the Dental Dot securely to your ...
9 of 29 DOCUMENTS
Copyright 1998 Little Rock Newspapers, Inc.
Arkansas Democrat-Gazette (Little Rock, AR)
October 27, 1998, Tuesday
SECTION: FEATURES; Pg. E1
LENGTH: 640 words
HEADLINE: Our Town:;
Zest for;
the zipper
BYLINE: Richard Allin
BODY:
...make in the rest of my career.
On two occasions when I came up with ideas -- one for a portable disposable travel toothbrush with the tooth paste in the handle; the other, a safety battery cable that puts the user far from the danger of a battery ...
12 of 29 DOCUMENTS
Copyright 1998 The Kansas City Star Co.
Kansas City Star (Kansas & Missouri)
July 9, 1998 Thursday METROPOLITAN EDITION
SECTION: ZONE/MIDTOWN; Pg. 12; COVER STORY
LENGTH: 1344 words
HEADLINE: Share America
St. Vincent's Operation Breakthrough sees benefit of agency's aid
BYLINE: DONNA McGUIRE, Staff Writer
BODY:
...lift her arms to shake a stranger's hand. Her mother had to
quit work to care for her. Share America provided a portable electric
toothbrush, a bed cushion and plate guards for Tanisha to use during
meals.
These days, as she reflects on the benefits provided ...
19 of 29 DOCUMENTS
Copyright 1996 The Providence Journal Company
Providence Journal-Bulletin (Rhode Island)
February 1, 1996, Thursday, ALL EDITIONS
SECTION: BUSINESS, Pg. 2F
LENGTH: 2942 words
HEADLINE: New businesses
BODY:
...J. Hoopis. Restaurant.
Anmar: P: Maria Moretti, 1211 Cranston St., Cranston, 02920. A: Same. Merchandising portable toothbrushes.
Clark'S Register: P: John Clark, 125 Main St., North Kingstown, 02852. A: Richard B. Carpenter. ...