Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

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 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.

 

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/

 

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

 

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]