| 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 09/20/2020) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88172771 |
| LAW OFFICE ASSIGNED | LAW OFFICE 109 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88172771/mark.png |
| LITERAL ELEMENT | GROOVE |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
|
All conventional prophy paste containers are round and about a half-inch in diameter. Applicant’s new prophy paste containers are shaped as an elongated rectangle, also referred to geometrically as a parallelepiped. The new rectangular shape for a prophy paste container is about an inch long and the prophy paste is retained within the hollow rectangular form of the container. The Office Action dated February 7, 2019, refuses registration on the basis that the trademark GROOVE is merely descriptive of a feature of Applicant’s goods. Applicant respectfully disagrees that the trademark is merely descriptive. Applicant would concede that the mark is suggestive of the feature, but describing this prophy paste container as a groove is not accurate or applicable. Photos of the product are attached as "Evidence" attached to this Response. Accordingly, the trademark GROOVE does not describe a long narrow cut or depression. Furthermore, the patents referenced in the Office Action do not relate to a prophy paste container, except in a very broad sense that the cited implements are used to apply prophy paste to the teeth of a dental patient. The prophy angles are engaged with the prophy paste in whatever form or configuration of the prophy paste container to acquire a supply of prophy paste for application in the cleaning of the patient’s teeth. Applicant concedes that the generic term “groove” is used to described features of prophy angles or many other mechanical devices from hay balers to diesel engines, but the term “groove” has not been applied in conjunction with a prophy paste container. Accordingly, Applicant’s mark is at worst suggestive. The Office Action has also refused registration as the mark on the drawing and the specimen differ. Applicant respectfully submits that this is not correct. Applicant would have the Trademark Attorney look again at the specimen provided with the application. In bold letters above the trademark referenced in the office action “Prophy Paste in the Groove”, is the trademark “GROOVE” properly and accurately used as an adjective for the generic term “Trays”. In other words, among other devices found within the packaging are “Groove Trays”. This is a proper use of the GROOVE trademark and clearly shows how the mark is used in commerce. Applicant would have the Examiner note that the trademark “Prophy Paste in the Groove” is a registered trademark of Applicant, Registration No. 5523931, granted on July 24, 2018. However, this phrase can also be a specimen for the trademark “GROOVE” as the phrase informs the consumer that the prophy paste found inside the package is found in the Groove (Tray). Applicant respectfully submits that the trademark for which the specimen applies is “GROOVE”, not “in the Groove”. Accordingly, Applicant respectfully requests that this rejection of the application be reconsidered and withdrawn, and that Applicant’s application be passed to Publication. Larry W. Miller Miller Law Group, PLLC
|
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) |
\\TICRS\EXPORT17\IMAGEOUT 17\881\727\88172771\xml4\ ROA0002.JPG |
| \\TICRS\EXPORT17\IMAGEOUT 17\881\727\88172771\xml4\ ROA0003.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Two photographs of Applicant's product are provided with a ruler behind the product to provide a sense of scale. The first photo is a side view of the prophy paste container, and the second photo is an end view of the prophy paste container. |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Larry W. Miller/ |
| SIGNATORY'S NAME | Larry W. Miller |
| SIGNATORY'S POSITION | Attorney of record, Pennsylvania |
| SIGNATORY'S PHONE NUMBER | 610-670-9000 |
| DATE SIGNED | 08/01/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu Aug 01 18:42:53 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.XX-20 190801184253057688-881727 71-620533ebb5e8d443c3b476 a255d029d479e599cebc24237 8a5f0a4e5526454239f-N/A-N /A-20190801183526685311 |
| 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 09/20/2020) |
All conventional prophy paste containers are round and about a half-inch in diameter. Applicant’s new prophy paste containers are shaped as an elongated rectangle, also referred to geometrically as a parallelepiped. The new rectangular shape for a prophy paste container is about an inch long and the prophy paste is retained within the hollow rectangular form of the container.
The Office Action dated February 7, 2019, refuses registration on the basis that the trademark GROOVE is merely descriptive of a feature of Applicant’s goods. Applicant respectfully disagrees that the trademark is merely descriptive. Applicant would concede that the mark is suggestive of the feature, but describing this prophy paste container as a groove is not accurate or applicable. Photos of the product are attached as "Evidence" attached to this Response.
Accordingly, the trademark GROOVE does not describe a long narrow cut or depression. Furthermore, the patents referenced in the Office Action do not relate to a prophy paste container, except in a very broad sense that the cited implements are used to apply prophy paste to the teeth of a dental patient. The prophy angles are engaged with the prophy paste in whatever form or configuration of the prophy paste container to acquire a supply of prophy paste for application in the cleaning of the patient’s teeth.
Applicant concedes that the generic term “groove” is used to described features of prophy angles or many other mechanical devices from hay balers to diesel engines, but the term “groove” has not been applied in conjunction with a prophy paste container. Accordingly, Applicant’s mark is at worst suggestive.
The Office Action has also refused registration as the mark on the drawing and the specimen differ. Applicant respectfully submits that this is not correct. Applicant would have the Trademark Attorney look again at the specimen provided with the application. In bold letters above the trademark referenced in the office action “Prophy Paste in the Groove”, is the trademark “GROOVE” properly and accurately used as an adjective for the generic term “Trays”. In other words, among other devices found within the packaging are “Groove Trays”. This is a proper use of the GROOVE trademark and clearly shows how the mark is used in commerce.
Applicant would have the Examiner note that the trademark “Prophy Paste in the Groove” is a registered trademark of Applicant, Registration No. 5523931, granted on July 24, 2018. However, this phrase can also be a specimen for the trademark “GROOVE” as the phrase informs the consumer that the prophy paste found inside the package is found in the Groove (Tray).
Applicant respectfully submits that the trademark for which the specimen applies is “GROOVE”, not “in the Groove”. Accordingly, Applicant respectfully requests that this rejection of the application be reconsidered and withdrawn, and that Applicant’s application be passed to Publication.
Larry W. Miller
Miller Law Group, PLLC
