UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

 

Serial Number  78/544867

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

Search Results

 

The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

Disclaimers

 

The applicant must disclaim the descriptive wording “PREVENT TOOTH DECAY 1 PREVENT EXPOSED ROOT CAVITIES 2 PREVENT GUM INFLAMMATION 3 PREVENT TARTAR 4 PREVENT PLAQUE BUILD UP 5 KEEP FIGHTING BACTERIA 6 7 REMOVE PLAQUE 8 WHITENS TEETH 9 FIGHT BAD BREATH 10 REDUCE GUM BLEEDING 11 CLEAN BETWEEN TEETH 12 STRENGHTHEN WEAK TOOTH ENAMEL” apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).  The wording is merely descriptive because these would be seen as common instructions and uses for mouthwash and toothpaste rather than a mark.

 

The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer.   TMEP §1213.08(a)(i).  A properly worded disclaimer should read as follows:

 

No claim is made to the exclusive right to use PREVENT TOOTH DECAY 1 PREVENT EXPOSED ROOT CAVITIES 2 PREVENT GUM INFLAMMATION 3 PREVENT TARTAR 4 PREVENT PLAQUE BUILD UP 5 KEEP FIGHTING BACTERIA 6 7 REMOVE PLAQUE 8 WHITENS TEETH 9 FIGHT BAD BREATH 10 REDUCE GUM BLEEDING 11 CLEAN BETWEEN TEETH 12 STRENGHTHEN WEAK TOOTH ENAMEL apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

Drawing

 

The drawing is not acceptable because it will not reproduce satisfactorily.  The applicant must submit a new drawing showing the mark clearly and conforming to 37 C.F.R. §2.52.  TMEP §807.07(a). The faint gray stippling around the wording will not reproduce accurately.

 

To submit a special form drawing electronically, applicant must attach a digitized image of the mark to the submission.  The digitized image must be in .jpg format, formatted at no less than 300 dots per inch and no more than 350 dots per inch.  The Office recommends that the digitized image of the mark have a length and width of no smaller than 250 pixels and no larger than 944 pixels.  37 C.F.R. §2.53(c); TMEP §807.05(c).  All lines in the image must be clean, sharp and solid, and not fine or crowded, and produce a high quality image when copied. 

 

Claim of Ownership

 

If applicant is the owner of U.S. Registration No. 2232156, then applicant must submit a claim of ownership.  37 C.F.R. §2.36; TMEP §812.  The following standard format is suggested:

 

Applicant is the owner of U.S. Registration No. 2232156.

 

Basis for Filing

 

Registration is refused because it does not appear that applicant is the owner of a valid registration in applicant’s country of origin, and clarification is needed.  Trademark Act Section 44(e), 15 U.S.C. §1126(e).  If applicant is not the owner of a valid registration in the applicant’s country of origin, then applicant must delete the §44(e) basis from the application, and rely solely on §1(b) as a basis.  See 37 C.F.R. §2.35 and TMEP §§806.03 et seq. regarding amendment of the basis.

 

The application record shows that applicant has a domicile in the United States, but has submitted a foreign registration from Columbia as a basis for registration in the United States.  In order to have a valid basis for registration, applicant must show that it has a bona fide and effective industrial or commercial establishment in Columbia.  In other words, applicant must provide evidence that Columbia is a “country of origin.”  Trademark Act Section 44(c), 15 U.S.C. §1126(c); TMEP §§1002.01 and 1002.04.

 

Certificate Required

 

If applicant is asserting §44(e) as a basis for registration (based on the foreign registration that will issue from the application that the applicant relied on for priority), then applicant must submit a true copy, photocopy, certification or certified copy of a foreign registration from the applicant’s country of origin.  Applicant’s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  See TMEP §§1002.01, 1003.03 and 1004.

 

If the foreign certificate of registration is not written in English, then applicant must provide an English translation signed by the translator.  See TMEP §§1004.01 and 1004.01(b).

 

Option to Delete Basis

 

If applicant wishes to proceed relying on use in commerce under Trademark Act Section 1(a) as the sole basis for registration, with the claim of priority under Trademark Act Section 44(d), then applicant should so advise the examining attorney.  If applicant chooses to do so, this Office will approve the mark for publication without waiting for applicant to submit a copy of the foreign registration, once all other outstanding issues are resolved.  TMEP §§806.02(f) and 806.04(b).

 

If applicant does not indicate otherwise, this Office will presume that applicant wishes to rely on the foreign registration as an additional basis for registration and will require applicant to submit the copy of the foreign registration and, if appropriate, an English translation signed by the translator.  TMEP §§1004.01 and 1004.01(b).

 

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

 

 

 

/Irene D. Williams/

Trademark Examining Attorney

LO 112

571-272-9239

fax:  571-273-9112

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.