Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 86140417 COLGATE (Stylized and/or with Design, see http://uspto.report/TM/86140417/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 010 for Dental apparatus and instruments; apparatus for care of teeth, gums and mouth; an applicator cartridge pen pre-filled with a tooth whitening preparation; syringes for applying dental preparations

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 003 for Oral care preparations; cosmetic oral care preparations; oral care products; toothpaste; mouthwash; dental rinses; dentifrices; tooth-whitening preparations
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Oral care preparations; Toothpaste; cosmetic oral care preparations; mouthwash; oral care products; non-medicated dental rinses; dentifrices; tooth-whitening preparations; dental rinses; a professional tooth whitening system consisting of whitening preparations, syringes and mouth trays; an applicator cartridge pen pre-filled with a tooth whitening preparationClass 003 for 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
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 005 for Medicated oral care preparations; medicines for dental purposes; medicated oral care products; 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
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Medicated oral care preparations; Medicines for dental purposes; medicated oral care products, namely, dental varnish for use by dentists; medicated oral care products; medicated toothpaste; medicated mouthwash; medicated dental rinses; pre-filled dental trays for applying dental compositions to teeth; a professional tooth whitening system consisting of whitening preparations, syringes and mouth trays; dental lacquerClass 005 for Medicines for dental purposes; medicated oral care products, namely, dental varnish for use by dentists; medicated toothpaste; medicated mouthwash; medicated dental rinses; pre-filled dental trays for applying dental compositions to teeth; dental lacquer
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 021 for Oral care products; toothbrushes; electric toothbrushes; dental floss; interdental cleaners; dental applicator brushes
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Oral care products; Toothbrushes; electric toothbrushes; dental floss; interdental cleaners; dental applicator brushesClass 021 for Toothbrushes; electric toothbrushes; dental floss; interdental cleaners
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

SIGNATURE(S)
Response Signature
Signature: /Allison Strickland Ricketts/     Date: 09/22/2014
Signatory's Name: Allison Strickland Ricketts
Signatory's Position: Attorney of Record

Signatory's Phone Number: 212-813-5900

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 86140417
Internet Transmission Date: Mon Sep 22 13:11:33 EDT 2014
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.X-20140922131133965
240-86140417-500d86b124af8b6b52d8d1d8f61
8acbe43da9dc0a2fc2eeec5c396c8cca7b136c-N
/A-N/A-20140919104830160563