To: UNITED STATES PATENT AND TRADEMARK OFFICE
Commissioner for Trademarks
2900 Crystal Drive
Arlington, VA 22202-3513
ecom116@uspto.gov
Trademark Attorney: Brian D. Brown
Law Office 105
From: Amanda C. Samuel, Esq.
Trademark and Copyright Attorney
Colgate-Palmolive Company
300 Park Avenue
New York, NY 10022
Email correspondent address: amanda_samuel@colpal.com
Date: September 8, 2003
Re: SERIAL NO: 78218975
MARK: WHITENING (Design)
APPLICANT: Colgate-Palmolive Company
FILING DATE: February 26, 2003
OFFICE ACTION RESPONSE
This letter is in response to the Office Action dated August 17, 2003
issued against the above-referenced application. Applicant hereby
responds to the issue raised by the Examiner.
Disclaimer
Applicant hereby submits the following disclaimer:
No claim is made to the exclusive right to use WHITENING apart from the
mark as shown.
Conclusion
Applicants respectfully submits that this application is now in order
and requests that the Examining Attorney allow the application to
progress to publication.
If the Examining Attorney believes that a telephone conference will
facilitate publication of this application, please contact me at the
telephone number below.
Amanda C. Samuel, Esq.
Trademark and Copyright Attorney
Colgate-Palmolive Company
300 Park Avenue
New York, NY 10022
Tel.: (212) 310-2121
Fax: (212) 310-3406
email: Amanda_Samuel@colpal.com
ecom105@USPTO.GOV on 08/17/2003 01:54:16 PM
To: Amanda Samuel/USANY/NA/COLPAL@COLPAL
cc:
bcc:
Subject: TRADEMARK APPLICATION NO. 78218975 - WHITENING - N/A
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 78/218975
APPLICANT: Colgate-Palmolive Company
CORRESPONDENT ADDRESS:
Amanda Samuel
Colgate-Palmolive Company
300 Park Avenue
New York NY USA 10022
RETURN ADDRESS:
Commissioner for Trademarks
2900 Crystal Drive
Arlington, VA 22202-3514
ecom105@uspto.gov
MARK: WHITENING
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.
OFFICE ACTION
TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE
ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE.
Serial Number 78/218975
The assigned examining attorney has reviewed the referenced application and
determined the following.
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.
CLASSIFICATION OF GOODS:
The applicant has classified the goods incorrectly. The applicant must
amend the application to classify the goods in International Class 021. 37
C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).
DISCLAIMER:
Estate of P.D. Beckwith v. Comm'r of Pats., 252 U.S. 538, 1920 C.D. 471
(1920), and other disclaimer decisions before the Trademark Act of 1946
dealt with disclaiming descriptive or generic matter. Section 6 of the Act
referred initially to "unregistrable matter" and, since the 1962 amendment,
now refers to "an unregistrable component."
Typically an unregistrable component of a registrable mark is the name of
the goods or services, other matter that does not indicate source, or
matter
that is merely descriptive or deceptively misdescriptive of the goods or
services, or primarily geographically descriptive of them. If an applicant
does not comply with a disclaimer requirement, the examining attorney may
refuse registration of the entire mark. TMEP §§1213.03(a)
Here, the term "WHITENING" is merely descriptive in relation to the
applicant's goods for the following reasons. First, the term is routinely
used in the dental care field. In addition, toothbrushes are used to clean
and whiten teeth, and "whiten" is defined as "making or becoming white."
See
attached definition and two federal registrations where the term is
disclaimed. Therefore, the applicant must insert a disclaimer of
"WHITENING" in the application. Trademark Act Section 6, 15 U.S.C. Section
1056; TMEP §§1213.03(a).
A properly worded disclaimer should read as follows:
No claim is made to the exclusive right to use WHITENING apart from the
mark
as shown.
If the applicant has any questions or needs assistance in responding to
this
Office action, please telephone the assigned examining attorney.
BBrown
/Brian D. Brown/
Trademark Attorney
Law Office 105
(703) 308-9105 ext. 178
(703) 746-9597fax
ecom105@uspto.gov
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
<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
<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.
To check the status of your application at any time, visit the Office's
Trademark Applications and Registrations Retrieval (TARR) system at
http://tarr.gov.uspto.report/ <http://tarr.gov.uspto.report/>
For general and other useful information about trademarks, you are
encouraged to visit the Office's web site at
http://www.gov.uspto.report/main/trademarks.htm
<http://www.gov.uspto.report/main/trademarks.htm>
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE
ASSIGNED EXAMINING ATTORNEY.
FEE INCREASE:
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.
whit·en
whit·en (hwìt¹n, wìt¹n) verb, transitive & intransitive
whit·ened, whit·en·ing, whit·ens
To make or become white, especially by bleaching.
- whit¹en·er noun [1]
_____
[1]The American Heritage® Dictionary of the English Language, Third Edition
copyright © 1992 by Houghton Mifflin Company. Electronic version licensed
from INSO Corporation; further reproduction and distribution restricted in
accordance with the Copyright Law of the United States. All rights
reserved.
(See attached file: 75821690P001OF002.JPG)
(See attached file: 75821690P002OF002.JPG)
(See attached file: 75872460P001OF002.JPG)
(See attached file: 75872460P002OF002.JPG)
