Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

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

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

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

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 87301462 PREMIER (Stylized and/or with Design, see http://uspto.report/TM/87301462/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 005 for Dental pharmaceutical preparations, namely, denture base and filling materials, topical anesthetic, hemostatic solution, sodium fluoride solution, prophylaxis paste, enamel micro abrasion material, dental cement, and sealant and solvents; hemostatic/retraction pastes; tooth whitening agents; re-mineralizing agents; restorative compounds; fluoride and non-fluoride varnishes, rinse, pastes, and treatment gels; bonding agents; resin composites used to adhere crowns; root canal cleansers; root canal lubricants; composite core buildup materials; cleaning agents, namely, enzymatic instrument cleaners, evacuation system cleaners, and dental appliance cleaners; permanent and temporary dental cement; dental sealants; and dental solvents
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: Dental pharmaceutical preparations, namely, denture base and filling materials, topical anesthetic, hemostatic solution, sodium fluoride solution, prophylaxis paste, enamel micro abrasion material, dental cement, and sealant and solvents; Dental pharmaceutical preparations, namely, denture base and filling materials, topical anesthetic, hemostatic solution, sodium fluoride solution, prophylaxis paste, enamel micro abrasion material, kits containing moldable compounds used in podiatric applications; hemostatic/retraction pastes; tooth whitening agents; medicated tooth whitening preparations; re-mineralizing agents; re-mineralizing agents for strengthening teeth; restorative compounds; restorative compounds for tooth restoration; fluoride and non-fluoride varnishes, rinse, pastes, and treatment gels; anti-cavity fluoride and non-fluoride varnishes, medicated rinses, medicated pastes, and medicated treatment gels; bonding agents; bonding agents for dental purposes; resin composites used to adhere crowns; dental resin composites used to adhere crowns; root canal cleansers; medical root canal cleansers; root canal lubricants; dental root canal lubricants for use by dentists; composite core buildup materials; composite core buildup materials for repairing teeth and for dental crowns and bridges; cleaning agents, namely, enzymatic instrument cleaners, evacuation system cleaners, and dental appliance cleaners; disinfecting agents, namely, enzymatic instrument cleaners, evacuation system cleaners, and dental appliance cleaners; permanent and temporary dental cement; dental sealants; and dental solvents; and dental solvents for use by dentistsClass 005 for Dental pharmaceutical preparations, namely, denture base and filling materials, topical anesthetic, hemostatic solution, sodium fluoride solution, prophylaxis paste, enamel micro abrasion material, kits containing moldable compounds used in podiatric applications; hemostatic/retraction pastes; medicated tooth whitening preparations; re-mineralizing agents for strengthening teeth; restorative compounds for tooth restoration; anti-cavity fluoride and non-fluoride varnishes, medicated rinses, medicated pastes, and medicated treatment gels; bonding agents for dental purposes; dental resin composites used to adhere crowns; medical root canal cleansers; dental root canal lubricants for use by dentists; composite core buildup materials for repairing teeth and for dental crowns and bridges; disinfecting agents, namely, enzymatic instrument cleaners, evacuation system cleaners, and dental appliance cleaners; permanent and temporary dental cement; dental sealants; and dental solvents for use by dentists
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 010 for Dental instruments, namely, periotomes, disposable burs, multi-use burs, diamond burs and cutting tools, polishing discs and pastes, retraction caps, prophy angles and hand pieces, ultrasonic inserts cleaners, endodontic posts, amalgam carriers, articulators, matrices, retraction cords, scalers and curettes, polymer based instruments, cryosurgical devices, excavators, burnishers, elevators, carvers, spatulas, mandrels, grinding disks, drills, burs, broaches, reamers, files, chisels, angulators, ejectors, explorers, knives, probes, hemostats, crown removers, crown gauges, syringes, and impression trays, root canal instruments, cavity preparation instruments, cord packers, condensers, filling instruments, periodontal instruments, aspiration tubes, skin hooks and needle holders; medical instruments, namely, tracheostomy and laryngectomy tubes and tube brushes, dilators and retractors, suction tubes, forceps, punches, clamps, borers, curettes, cannulae, tenacula, hooks, needle and catheter guides, speculas, extractors, probes, scissors, trocars, manipulators, podiatry burs and sterilizers, needle holders, mallets, elevators and rasps, electrosurgical generators, electrodes, needle adaptors, evacuators, air filtration system for electrosurgical procedures comprised of a surgical evacuator, air filtration unit, and filter pack, sounds, urethral catheters, dermal punches, hooks, retractors, dermabraders, nippers, sterilizers, kits containing moldable compounds used for podiatric applications
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: Dental instruments, namely, periotomes, disposable burs, multi-use burs, diamond burs and cutting tools, polishing discs and pastes, retraction caps, prophy angles and hand pieces, ultrasonic inserts cleaners, endodontic posts, amalgam carriers, articulators, matrices, retraction cords, scalers and curettes, polymer based instruments, cryosurgical devices, excavators, burnishers, elevators, carvers, spatulas, mandrels, grinding disks, drills, burs, broaches, reamers, files, chisels, angulators, ejectors, explorers, knives, probes, hemostats, crown removers, crown gauges, syringes, and impression trays, root canal instruments, cavity preparation instruments, cord packers, condensers, filling instruments, periodontal instruments, aspiration tubes, skin hooks and needle holders; Dental instruments, namely, excavators, burnishers, elevators, carvers, spatulas, mandrels, grinding disks, drills, burs, broaches, reamers, files, chisels, angulators, ejectors, explorers, knives, probes, hemostats, crown removers, crown gauges, syringes and impression trays, root canal instruments, cavity preparation instruments, namely, periodontal probes, prophy angles, dental picks; medical instruments, namely, tracheostomy and laryngectomy tubes and tube brushes, dilators and retractors, suction tubes, forceps, punches, clamps, borers, curettes, cannulae, tenacula, hooks, needle and catheter guides, speculas, extractors, probes, scissors, trocars, manipulators, podiatry burs and sterilizers, needle holders, mallets, elevators and rasps, electrosurgical generators, electrodes, needle adaptors, evacuators, air filtration system for electrosurgical procedures comprised of a surgical evacuator, air filtration unit, and filter pack, sounds, urethral catheters, dermal punches, hooks, retractors, dermabraders, nippers, sterilizers, kits containing moldable compounds used for podiatric applications; dental instruments, namely, cord packers, condensers, filling instruments, periodontal instruments, aspiration tubes, skin hooks and needle holders; medical instruments, namely, tracheostomy and laryngectomy tubes and tube brushes, dilators and retractors, suction tubes, forceps, punches, clamps, borers, curettes, cannulae, tenacula hooks, needle and catheter guides, speculas, extractors, probes, scissors, trocars, manipulators, podiatry burs and sterilizers, needle holders, mallets, elevators and rasps, electrosurgical generators, electrodes, needle adaptors, evacuators, air filtration system comprised of an evacuator in combination with a dual stage filter pack for electrosurgical procedures, sounds, urethral catheters, dermal punches, hooks, retractors, dermabraders, nippers, sterilizers; polishing discs and pastes, retraction caps, prophy angles and hand pieces, ultrasonic inserts cleaners, endodontic posts, amalgam carriers, articulators, matrices, retraction cords, scalers and curettes, polymer based instruments, cryosurgical devicesClass 010 for Dental instruments, namely, excavators, burnishers, elevators, carvers, spatulas, mandrels, grinding disks, drills, burs, broaches, reamers, files, chisels, angulators, ejectors, explorers, knives, probes, hemostats, crown removers, crown gauges, syringes and impression trays, root canal instruments, cavity preparation instruments, namely, periodontal probes, prophy angles, dental picks; dental instruments, namely, cord packers, condensers, filling instruments, periodontal instruments, aspiration tubes, skin hooks and needle holders; medical instruments, namely, tracheostomy and laryngectomy tubes and tube brushes, dilators and retractors, suction tubes, forceps, punches, clamps, borers, curettes, cannulae, tenacula hooks, needle and catheter guides, speculas, extractors, probes, scissors, trocars, manipulators, podiatry burs and sterilizers, needle holders, mallets, elevators and rasps, electrosurgical generators, electrodes, needle adaptors, evacuators, air filtration system comprised of an evacuator in combination with a dual stage filter pack for electrosurgical procedures, sounds, urethral catheters, dermal punches, hooks, retractors, dermabraders, nippers, sterilizers; polishing discs and pastes, retraction caps, prophy angles and hand pieces, ultrasonic inserts cleaners, endodontic posts, amalgam carriers, articulators, matrices, retraction cords, scalers and curettes, polymer based instruments, cryosurgical devices
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 hereby adds the following class of goods/services to the application:
New: Class 003 for Tooth whitening preparations
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.

FEE(S)
Fee(s) in the amount of $275 is being submitted.

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Edward M. Weisz/      Date: 07/11/2017
Signatory's Name: Edward M. Weisz
Signatory's Position: Attorney for Applicant, New York State Bar Member
Signatory's Phone Number: 212-297-2660


Response Signature
Signature: /Edward M. Weisz/     Date: 07/11/2017
Signatory's Name: Edward M. Weisz
Signatory's Position: Attorney for Applicant, New York State Bar Member

Signatory's Phone Number: 212-297-2660

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 owner's/holder'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 owner/holder in this matter: (1) the owner/holder 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 owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder'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.

        
RAM Sale Number: 87301462
RAM Accounting Date: 07/12/2017
        
Serial Number: 87301462
Internet Transmission Date: Tue Jul 11 17:02:10 EDT 2017
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2017071117021047
4857-87301462-590c7b4462856f39c241f76955
020482feb98253fcb7568483371489aaa220c32a
-CC-4031-20170711153538968650