Notation to File

NOTE TO THE FILE

SERIAL NUMBER:            88006074

DATE:                                11/09/2018

NAME:                               ddonegan

NOTE:         

Searched:                                                             
     Google                            
     Lexis/Nexis                       
     OneLook
     Wikipedia
     Acronym Finder                         Protest evidence reviewed
     Other:

Checked:                                                             
     Geographic significance          
     Surname                          
     Translation
     ID with ID/CLASS mailbox

     Checked list of approved Canadian attorneys and agents

Discussed file with
Attorney/Applicant via:
        phone                               Left message with
    X   email                               Attorney/Applicant

     Requested Law Library search       X   Issued Examiner’s Amendment
     for:                                   and entered changes in TRADEUPS

        PRINT        DO NOT PRINT           Added design code in TRADEUPS
     Description of the mark
     Translation statement                  Re-imaged standard character
                                            drawing
     Negative translation statement             
     Consent of living individual           Contacted TM MADRID ID/CLASS
                                            about misclassified definite ID
     Changed TRADEUPS to:

 X   OTHER:

From: Song-Chu Lee [mailto:song-chu_lee@colpal.com]
Sent: Friday, November 09, 2018 11:49 AM
To: Donegan, Daniel <daniel.donegan@USPTO.GOV>
Cc: BP_Melissa Antonecchia <bp_melissa_antonecchia@colpal.com>; Muriel Viteritti <muriel_viteritti@colpal.com>
Subject: Re: Trademark Application - COLGATE - Serial No. 88006074

 

Hi Daniel,

 

Yes, I agree to the description of goods in your email directly below.

 

Thanks,

Song-Chu

__________________________________________________________________________________________________________________

Song-Chu Lee, Esq. | Trademark Counsel (Oral Care, Toothbrush, Tom's of Maine) & Marketing Counsel (EltaMD, PCASkin)

Colgate-Palmolive Company | 300 Park Avenue | New York, NY 10022

( (212) 310-2204 | * Song-Chu_Lee@colpal.com

This email communication is intended only for the use of the individual or entity to which it is addressed and may contain information that is proprietary, privileged, confidential and exempt from disclosure under applicable law.  If you are not the intended recipient of the email communication, or if it reasonably appears that this communication was sent to you in error, please do not disseminate, distribute or copy the communication, by email or otherwise.  Instead, please notify me immediately by return email (including the original message in your reply) and by telephone 212-310-2204 and then delete and discard all copies of the communication. Thank you.

 

 

 

On Thu, Nov 8, 2018 at 7:18 PM, Donegan, Daniel <daniel.donegan@uspto.gov> wrote:

Song-Chu,

 

After a little further consideration, I believe we can keep this in class 5 if we indicate the tooth whitening gels are “medicated.”  I think this would be appropriate given the prefatory wording was “Medicated oral care products.”  Speaking of the prefatory language, I would like to add that back in, since otherwise I am concerned its omission would be a broadening of the identification.  Also, I would like to add in the original language in class 3, which was “cosmetic whiteners.”  Please see my proposed identifications below (in bold), and let me know if I am authorized to make these changes:

 

Class 3: Non-medicated toothpaste, non-medicated mouthwash, cosmetic whiteners in the nature of cosmetic teeth whitening preparations.

 

Class 5: Medicated toothpaste, medicated mouth rinse; Medicated oral care products, namely, a professional tooth whitening kit comprised primarily of medicated tooth whitening gel, and also syringes and mouth trays, for at-home use

 

Class 21: Toothbrushes, interdental cleaners, dental floss

 

 

Daniel P. Donegan

Trademark Examining Attorney

Law Office 104

(571) 270-0455

 

From: Song-Chu Lee [mailto:song-chu_lee@colpal.com]
Sent: Thursday, November 08, 2018 6:54 PM
To: Donegan, Daniel <daniel.donegan@USPTO.GOV>
Cc: BP_Melissa Antonecchia <bp_melissa_antonecchia@colpal.com>; Muriel Viteritti <muriel_viteritti@colpal.com>
Subject: Re: Trademark Application - COLGATE - Serial No. 88006074

 

Ok, thank you, Daniel.

 

Would it be possible to issue an Examiner's Amendment agreeing to the proposed description of the mark (The mark consists of the word “COLGATE” in white inside a red, rectangular, semi-circle design.  The background color white is not claimed as a feature of the mark.) and the identification of goods below?

 

Class 3: Non-medicated toothpaste, non-medicated mouthwash, cosmetic teeth whitening preparations; a professional tooth whitening kit comprised primarily of tooth whitening gel, and also syringes and mouth trays, for at-home use

 

Class 5: Medicated toothpaste, medicated mouth rinse

 

Class 21: Toothbrushes, interdental cleaners, dental floss

 

Thanks,

Song-Chu

__________________________________________________________________________________________________________________

Song-Chu Lee, Esq. | Trademark Counsel (Oral Care, Toothbrush, Tom's of Maine) & Marketing Counsel (EltaMD, PCASkin)

Colgate-Palmolive Company | 300 Park Avenue | New York, NY 10022

( (212) 310-2204 | * Song-Chu_Lee@colpal.com

This email communication is intended only for the use of the individual or entity to which it is addressed and may contain information that is proprietary, privileged, confidential and exempt from disclosure under applicable law.  If you are not the intended recipient of the email communication, or if it reasonably appears that this communication was sent to you in error, please do not disseminate, distribute or copy the communication, by email or otherwise.  Instead, please notify me immediately by return email (including the original message in your reply) and by telephone 212-310-2204 and then delete and discard all copies of the communication. Thank you.

 

 

 

On Tue, Nov 6, 2018 at 3:23 PM, Donegan, Daniel <daniel.donegan@uspto.gov> wrote:

Per TMEP §1401.05(a), “kits” comprised of a number of components around a theme are properly classified by the class that includes the majority of individual components.  If a majority of the components are secondary components, identifications must indicate the kits are composed “primarily” of the specific components and subsequently indicate the kits are “also consisting of” the secondary items.  Here, it seems that the primary component of the kids is the whitening gel, since the secondary items are merely for applying and using the gel.  Class 3 appears to be the most appropriate class. 

 

Please consult the relevant TMEP section for further analysis: http://tmep.gov.uspto.report/RDMS/TMEP/current#/current/TMEP-1400d1e8.html

 

Thanks,

 

Daniel P. Donegan

Trademark Examining Attorney

Law Office 104

(571) 270-0455

 

From: Song-Chu Lee [mailto:song-chu_lee@colpal.com]
Sent: Tuesday, November 06, 2018 3:11 PM
To: Donegan, Daniel <daniel.donegan@USPTO.GOV>
Cc: BP_Melissa Antonecchia <bp_melissa_antonecchia@colpal.com>; Muriel Viteritti <muriel_viteritti@colpal.com>
Subject: Re: Trademark Application - COLGATE - Serial No. 88006074

 

Hi Daniel,

 

Thanks for confirming.

 

One other question - since the whitening gel in the tooth whitening kit is only available at the dentist's office (and not available via over-the-counter retail stores because it contains a high level of hydrogen peroxide), would it be possible to keep the kit in Class 5?

 

 

Thanks,

Song-Chu

__________________________________________________________________________________________________________________

Song-Chu Lee, Esq. | Trademark Counsel (Oral Care, Toothbrush, Tom's of Maine) & Marketing Counsel (EltaMD, PCASkin)

Colgate-Palmolive Company | 300 Park Avenue | New York, NY 10022

( (212) 310-2204 | * Song-Chu_Lee@colpal.com

This email communication is intended only for the use of the individual or entity to which it is addressed and may contain information that is proprietary, privileged, confidential and exempt from disclosure under applicable law.  If you are not the intended recipient of the email communication, or if it reasonably appears that this communication was sent to you in error, please do not disseminate, distribute or copy the communication, by email or otherwise.  Instead, please notify me immediately by return email (including the original message in your reply) and by telephone 212-310-2204 and then delete and discard all copies of the communication. Thank you.

 

 

 

On Tue, Nov 6, 2018 at 11:02 AM, Donegan, Daniel <daniel.donegan@uspto.gov> wrote:

Hello,

 

Yes, that would be permissible.

 

Daniel P. Donegan

Trademark Examining Attorney

Law Office 104

(571) 270-0455

 

From: Song-Chu Lee [mailto:song-chu_lee@colpal.com]
Sent: Monday, November 05, 2018 5:33 PM
To: Donegan, Daniel <daniel.donegan@USPTO.GOV>
Cc: BP_Melissa Antonecchia <bp_melissa_antonecchia@colpal.com>
Subject: Re: Trademark Application - COLGATE - Serial No. 88006074

 

Hello Daniel,

 

Before responding to this Office Action, could you please let us know whether it would be possible to add "medicated toothpaste" and "medicated mouth rinse" to the Class 5 list of goods?

 

Thank you,

Song-Chu

__________________________________________________________________________________________________________________

Song-Chu Lee, Esq. | Trademark Counsel (Oral Care, Toothbrush, Tom's of Maine) & Marketing Counsel (EltaMD, PCASkin)

Colgate-Palmolive Company | 300 Park Avenue | New York, NY 10022

( (212) 310-2204 | * Song-Chu_Lee@colpal.com

This email communication is intended only for the use of the individual or entity to which it is addressed and may contain information that is proprietary, privileged, confidential and exempt from disclosure under applicable law.  If you are not the intended recipient of the email communication, or if it reasonably appears that this communication was sent to you in error, please do not disseminate, distribute or copy the communication, by email or otherwise.  Instead, please notify me immediately by return email (including the original message in your reply) and by telephone 212-310-2204 and then delete and discard all copies of the communication. Thank you.

 

 

 

On Tue, Oct 2, 2018 at 12:44 PM, Donegan, Daniel <daniel.donegan@uspto.gov> wrote:

Hello,

This is Daniel Donegan, I am currently reviewing your client’s application for COLGATE (Serial No. 88006074).  I would like your authorization to make amendments to the mark description as well as the identification of goods in Classes 3 and 5.  With regard to the identifications, additional information is required for some of the goods in order to render the entries definite.  Additionally, the goods recited in Class 5 are properly classified in Class 10, as indicated below.  Can you please provide authorization to enter the changes to the mark description and/or identifications?

 

Mark description: The mark consists of the word “COLGATE” in white inside a red, rectangular, semi-circle design.  The background color white is not claimed as a feature of the mark.

 

Identification of goods:

 

Class 3: Toothpaste, mouthwash not for medical purposes, cosmetic whiteners in the nature of [indicate specific form, e.g., tooth whitening gels]; Medicated oral care products, namely, a professional tooth whitening kit comprised primarily of tooth whitening gel, and also syringes and mouth trays, for at-home use

 

Class 5: Medicated oral care products, namely, a professional tooth whitening kit comprised of whitening gel, syringes and mouth tray, for at-home use

 

Thank you,

 

Daniel P. Donegan

Trademark Examining Attorney

Law Office 104

(571) 270-0455