NOTE TO THE FILE
Sent to TICRS as Serial Number: 88057377SERIAL NUMBER: 88057381
DATE: 10/09/2018
NAME: nkenealy
NOTE:
Searched:
X Google
X Lexis/Nexis
X OneLook
X Wikipedia
X Acronym Finder Protest evidence reviewed
Other:Checked:
Geographic significance
X Surname
X Translation
ID with ID/CLASS mailboxChecked list of approved Canadian attorneys and agents
Discussed file with
Attorney/Applicant via:
phone Left message with
X email Attorney/ApplicantRequested Law Library search X Issued Examiner’s Amendment
for: and entered changes in TRADEUPSPRINT 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:
From: Shores Lambert, Stephanie (Legal) [mailto:Stephanie.ShoresLambert@Staples.com]
Sent: Friday, October 05, 2018 2:36 PM
To: Kenealy, Natalie <Natalie.Kenealy@USPTO.GOV>
Cc: IPmailbox <IPmailbox@Staples.com>
Subject: FW: [EXT]:Trademark Application Serial Nos. 88057368, 88057369, 88057377, 88057381, and 88057383 (PROGAGE) – Possible Examiner’s Amendment
Importance: High
Hi Natalie,
Thank you very much for your email on our trademark filings. I would like you to send priority action for Classes 5 (toilet and urinal cleaner) and 20 (fixed paper towel dispenser) as noted below. I have indicated our preferences as requested. Please let me know if I can assist with anything further.
Regards,
Stephanie
--
Stephanie S. Lambert
Vice President, Associate General Counsel & Assistant Secretary
Legal Department
T: 508-253-2035
Stephanie.shoreslambert@staples.com
500 Staples Drive,
Framingham, MA 01702
This message (including any attachments) may contain confidential information intended for a specific individual and purpose, and is protected by law. If you are not the intended recipient, you should delete this message and are hereby notified that any disclosure, copying, or distribution of this message, or the taking of any action based on it, is strictly prohibited.
From: Kenealy, Natalie <Natalie.Kenealy@USPTO.GOV>
Sent: Thursday, October 04, 2018 1:04 PM
To: IPmailbox <IPmailbox@Staples.com>
Subject: [EXT]:Trademark Application Serial Nos. 88057368, 88057369, 88057377, 88057381, and 88057383 (PROGAGE) – Possible Examiner’s Amendment
Importance: High
Dear Ms. Lambert,
I am the assigned trademark examining attorney for the above-referenced applications. The identification of goods in each of these applications requires clarification because some of the wording is overly broad or indefinite. If you would like to limit each of these files to wording that is definite in one class, I can fix them for you via examiner’s amendment. If you prefer to add a class, I will send you a priority action to enable you to pay the additional fee to add a class. Please let me know by phone or email if I may amend these applications to be definite in one class as suggested below or if you would like to discuss these issues.
My suggested changes are below in bold and the application number for each of the respective applications is indicated at the top.
88057368 Progage (Class 5)
In Serial No. 88057368, the wording “detergent an spray” is overly broad because this could include both antibacterial detergent in Class 5 and household detergent in Class 3.
Class 3:
detergent an spray for household use
Class 5: Disinfecting chemicals in the nature of disposable wipes, aerosol sprays, ready to use liquids and concentrated liquids for use on hard surfaces; hand sanitizing preparations; disposable sanitizing wipes; disposable wipes impregnated with disinfecting chemicals for use on, hard surface; antibacterial alcohol skin sanitizing wipes; disposable wipes impregnated with sanitizing chemicals for personal or household use; sanitizing wipes; antibacterial liquid soap; {antibacterial} antibacterial detergent spray; disinfectant bathroom cleaners
88057369 Progage (Class 3)
In Serial No. 88057369 the wording “wet and dry wipes for screen cleaning” is overly broad – this wording can include cleaning cloths in Class 21 and cloths impregnated with cleaning preparations in Class 3. Additionally, the wording “glass and surface cleaners;” and “washroom tub and tile cleaners;” is indefinite – it is not clear if these are cleaning preparations in Class 3 or another variety of cleaner. The wording “toilet and urinal cleaner and odor eliminator” is overly broad because odor eliminators and cleaning products in the nature of disinfectants are properly classified in Class 5, not Class 3. Similarly, “liquid soaps” encompass both non-medicated soaps in Class 3 and medicated soaps in Class 5. The wording “air freshening and odor neutralizing preparations for non-electric air freshening units” is also overly broad because this wording could encompass air freshening preparations in the nature of air deodorizing preparation in Class 5 and odor neutralizing preparations in Class 5.
Class 3: Cleaning preparations, namely, label removers; canned pressurized air for cleaning and dusting purposes; cloths and wipes impregnated with cleaning solution for cleaning of computer screens, mobile phone screens, tablet computer screens, gaming devices, phones, headphones and keyboards; wipes impregnated with a cleaning preparation, namely, disposable wipes impregnated with cleansing compounds for use on electronic devices and components; liquid cleaners for use on computers and computer screens; cloths impregnated with cleaning preparations, namely, wet
and drywipes for screen cleaning; whiteboard cleaning spray; disposable pre-moistened cleaning wipes impregnated with cleaning chemicals for removing labels, cleaning computer screens and keyboards, mobile phones, laptops and notebook computers; disposable wipes impregnated with cleaning chemicals or compounds for household, industrial and commercial use; spray cleaners for use on windows and home and office counters, desktops and hard surfaces; general purpose cleaning liquids and powders; cleaning agents and preparations; glass and surface cleaners in the nature of cleaning preparations; carpet cleaners; cleaning preparations, namely, washroom tub and tile cleaners; cleaning preparations, namely, toilet and urinal cleanerand odor eliminator; cleaning preparations; liquid non-medicated soaps; disposable pre-moistened cleaning wipes impregnated with cleaning chemicals for personal hygienic use as hand wipes; floor finishing preparations and floor finish stripper preparations; detergent soaps; Room fragrances; room fragrance refills for non-electric room fragrance dispenser; air freshening andodor neutralizingpreparations for non-electric air freshening units; disposable wipes impregnated with cleansing chemicals for personal hygiene or household use
class 5: toilet and urinal cleaner, namely, disinfectant for toilets and urinals and odor eliminator for toilets and urinals; liquid medicated soaps; air freshening preparations in the nature of air deodorizing preparations for non-electric air freshening units; odor neutralizing preparations for non-electric air freshening units [PRIORITY ACTION]
Class 21: cleaning cloths, namely, dry wipes for screen cleaning
88057377 PROGAGE (Class 11)
In Serial No. 88057377, the wording “battery-operated air freshener units” is indefinite – if these are “dispensers” the applicant may so specify. The wording “odor neutralizing and air fragrance containers and dispensers for commercial use” is overly broad – if these are dispensers they are classified in Class 11, but if they are preparations sold in a specific variety of container or in a filled dispenser, they would be classified in Class 3 or Class 5. I suggest amending the wording as suggested below in Class 11.
Class 3:air fragrancing preparations sold in containers and in a filled dispenser
Class 5:general purpose odor neutralizing preparations, sold in containers and in a filled dispenser
Class 11: Dispensing units for air fresheners; battery-operated air freshener dispenser units; odor neutralizing and air fragrance
containers anddispensers for commercial use, namely,{applicant must specify the common commercial name for these goods and classify as appropriate, e.g., dispensing units for air fresheners,dispensing units for general purpose odor neutralizing preparations}
88057381 PROGAGE (Class 16)
In Serial No. 88057381, the wording “packaging material, namely plastic shipping and storage boxes” is unacceptable in Class 16 because these goods are properly classified in Class 20. Additionally, it appears that the wording “padded paper envelopes for mailing of packaging” contains a minor typographical error – the word “of” appears to be intended to be “or.”
Class 16: Plastic film for packaging; polypropylene foil for packaging;
,paper table cloths; table mats and runners of paper; plastic bags for disposal of pet waste; paper and plastic garbage bag; trash can liners; paper napkins; disposable napkins; toilet paper; paper towels; facial tissue; toilet seat cover paper; disposable absorbent wipes not impregnated with chemicals or compounds; Adhesive packing tape for stationery or household use; adhesive labels; adhesive tape dispensers for household or stationery use;packaging material, namely plastic shipping and storage boxes;cardboard boxes; plastic bubble packs for wrapping or packaging; mailing labels; envelopes; plastic wrap for commercial or industrial use; paper mail pouches; padded paper envelopes for mailingofor packaging; boxes, cartons, storage containers, and packaging containers made of paper or cardboard; recycled paper; desk stands and holders for writing instruments
Class 20:packaging material, namely plastic shipping and storage boxes;
88057383 PROGAGE (Class 21)
In Serial No. 88057383, the wording “disposable and reusable fabric and microfiber wipes” is indefinite – if these are cleaning cloths, applicant should so specify. The wording “paper towel dispensers” is overly broad because towel dispensers that are not for household use are classified either in Class 6 if they are “fixed” and of metal or in Class 20 if they are “fixed” and not of metal.
Class 20: fixed paper towel dispensers not of metal; non-metal recycling bins for office use [PRIORITY ACTION]
Class 21: cleaning cloths, namely, disposable and reusable fabric and microfiber wipes; dispensers for plastic cutlery; drinking straw dispensers; drink stirrers; paper and plastic plates and bowls; paper and plastic hot and cold drink cups and lids; paper hot cup sleeves; paper plates, bowls and cups; paper towel dispensers for household use; soap and sanitizer dispensers; empty spray bottles; plastic spray nozzles; trash cans; waste baskets; buckets; non-metal recycling bins for household
or office use; utility caddies for holding cleaning tools and supplies; toilet paper dispensers and holders
Kind Regards,
Natalie L. Kenealy
Trademark Examining Attorney
Law Office 104
571-272-7817