To: | Colgate-Palmolive Company (ricketts-docket@fzlz.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86140417 - COLGATE - CPC 1312102 |
Sent: | 3/25/2014 2:24:12 PM |
Sent As: | ECOM113@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86140417
MARK: COLGATE
|
|
CORRESPONDENT ADDRESS: ALLISON STRICKLAND RICKETTS, ESQ. |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
|
APPLICANT: Colgate-Palmolive Company
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
|
OFFICE ACTION
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.
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}
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
/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.