UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE: 3/25/2014

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Applicant is encouraged to telephone or e-mail the assigned trademark examining attorney to resolve the issues raised in this Office action by examiner’s amendment.  Although a formal response may never be submitted by e-mail, an applicant may communicate informally by phone or e-mail with the trademark examining attorney to agree to a proposed amendment to the application that will immediately place the application in condition for publication for opposition, issuance of a registration, or suspension.  See TMEP §707.

 

Search Results

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

Summary of Issues

 

In response to this Office action, applicant must address the following issues:

 

(1)  Identification of goods requirement;

 

(2)  Multiple-class application requirements, if applicable.

 

Identification of Goods

 

The identification of goods must be clarified because it contains wording that is too broad and could include goods in other international classes.  See TMEP §§1402.01, 1402.03. 

 

In International Class 3, the wording “oral care preparations” and “oral care products” is indefinite and must be clarified by listing the specific items with the mark is intended to be used.  Furthermore, the wording is overly broad because it could include cosmetic oral care preparations, with are in Class 3, medicated oral care preparations, which are in Class 5, or oral care devices, which could be in a variety of classes, including Classes 10 and 21.  Therefore, applicant must clarify the nature of the goods and classify them accordingly.

 

Additionally, the wording “dental rinse” must be clarified by indicated whether the goods are non-medicated or medicated.  Non-medicated dental rinses are in Class 3, and medicated dental rinses are in Class 5.

 

In International Class 5, applicant must list the specific “medicated oral care preparations” and “medicated oral care products” intended to be provided. 

 

Also, the goods “a professional tooth whitening system consisting of whitening preparations, syringes and mouth trays” are classified incorrectly.  Tooth whitening kits are in International Class 3.  Applicant must therefore amend the application to classify the goods in Class 3.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

In International Class 10, the wording “dental apparatus and instruments” and “apparatus for care of teeth, gums and mouth” must of clarified to list the specific items or to describe their specific function.  The wording would also include goods in several international classes, since toothbrushes, for example, are in Class 21.  Applicant must also clarify whether the “syringes for applying dental preparations” are sold empty, as pre-filled syringes are in Class 5.   In addition, the goods “an applicator cartridge pen pre-filled with a tooth whitening preparation” are classified incorrectly.  Tooth whitening preparations are in International Class 3.  Applicant must therefore amend the application to classify the goods in Class 3.  See id.

 

In International Class 21, applicant must specify the “oral care products” provided; since this wording could include goods in multiple classes, applicant must ensure that the goods are classified correctly.  For instance, toothpaste is in Class 3, medicated mouthwash is in Class 5, and toothbrushes are in Class 21.  Finally, applicant must clarify the function of “dental applicator brushes” to ensure proper classification of the goods.  If the goods are for medical purposes, they are likely in Class 10, but if they are a household product such as toothbrushes, they are likely in Class 21.

 

Applicant may substitute the following wording, if accurate:

 

International Class 3: Oral care preparations, namely, {specify goods in Class 3, e.g., toothpaste, mouthwash}; cosmetic oral care preparations; oral care products, namely, {specify goods in Class 3, e.g., toothpaste, mouthwash}; toothpaste; mouthwash; non-medicated dental rinses; dentifrices; tooth-whitening preparations; a professional tooth whitening system consisting of whitening preparations, syringes and mouth trays; an applicator cartridge pen pre-filled with a tooth whitening preparation

 

International Class 5: Medicated oral care preparations, namely, {specify goods in Class 5, e.g., medicated brush-on oral care gels, medicated dental rinses}; medicines for dental purposes; medicated oral care products, namely, {specify goods in Class 5, e.g., medicated dental floss}; medicated toothpaste; medicated mouthwash; medicated dental rinses; a professional tooth whitening system consisting of whitening preparations, syringes and mouth trays; pre-filled dental trays for applying dental compositions to teeth; dental lacquer

 

International Class 10: Dental apparatus and instruments, namely, {specify goods, e.g., dental drills, dental mirrors}; apparatus for care of teeth, gums and mouth, namely, {specify goods, e.g., dental drills, dental mirrors}; an applicator cartridge pen pre-filled with a tooth whitening preparation; syringes for applying dental preparations, sold empty

 

International Class 21: Oral care products, namely, {specify goods specify goods in Class 21, e.g., toothbrushes, dental floss}; toothbrushes; electric toothbrushes; dental floss; interdental cleaners; dental applicator brushes, namely, {specify goods in Class 21, e.g., toothbrushes}

 

An applicant may amend an identification of goods and services only to clarify or limit the goods and services; adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

Multiple-Class Application Requirements

  

To the extent that applicant’s amended list of goods includes goods in classes not currently included in the application,   applicant must meet all the requirements below for those international classes based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)       LIST GOODS AND/OR SERVICES BY INTERNATIONAL CLASS:  Applicant must list the goods and/or services by international class.

 

(2)       PROVIDE FEES FOR ALL INTERNATIONAL CLASSES:  Applicant must submit an application filing fee for each international class of goods and/or services not covered by the fee(s) already paid (confirm current fee information at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

The filing fees for adding classes to an application are as follows:

 

(1)  A $325 fee per class, when the fees are submitted with an electronic response filed online at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp, via the Trademark Electronic Application System (TEAS).

 

(2)  A $375 fee per class, when the fees are submitted with a paper response.

 

37 C.F.R. §2.6(a)(1)(i)-(ii); TMEP §§810, 1403.02(c).

 

Assistance

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

 

 

 

/April A. Hesik/

Trademark Examining Attorney

Law Office 113

(571) 272-4735

april.hesik@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 3/25/2014 FOR U.S. APPLICATION SERIAL NO. 86140417

 

Your trademark application has been reviewed.  The trademark examining attorney assigned by the USPTO to your application has written an official letter to which you must respond.  Please follow these steps:

 

(1)  Read the LETTER by clicking on this link or going to http://tsdr.gov.uspto.report/, entering your U.S. application serial number, and clicking on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification. 

 

(2)  Respond within 6 months (or sooner if specified in the Office action), calculated from 3/25/2014, using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. 

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions. 

 

(3)  Questions about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your application, identified below. 

 

/April A. Hesik/

Trademark Examining Attorney

Law Office 113

(571) 272-4735

april.hesik@uspto.gov

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp. 

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.