NOTE TO THE FILE
SERIAL NUMBER: 88450434
DATE: 07/29/2019
NAME: msinger
NOTE:
Searched:
X Google
Lexis/Nexis
X OneLook
X Wikipedia
Acronym Finder Protest evidence reviewed
Other:Checked:
Geographic significance
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 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:X OTHER:
From: House, Dyan [mailto:Dyan.House@bakermckenzie.com]
Sent: Friday, July 26, 2019 4:55 PM
To: Singer, Melanie <Melanie.Singer@USPTO.GOV>; *DAL - Trademarks <dallastrademarks@bakermckenzie.com>
Cc: GIPSCOfficeSupport <gipscofficesupport@bakermckenzie.com>; GIPSC <GIPSC@bakermckenzie.com>
Subject: RE: United States Trademark Application Serial No. 88450434_SYNTHESE OCEANIQUE
Dear Ms. Singer,
I will confer with my client, but do not anticipate having a response quickly. Therefore, would you kindly issue an office action?
Best,
Dyan
Dyan House
Counsel, IP
Baker & McKenzie LLP
1900 North Pearl
Suite 1500
Dallas, TX 75201
United States
Tel: +1 214 978 3000
Direct: +1 214 978 3090
Fax: +1 214 978 3099
dyan.house@bakermckenzie.com
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From: Singer, Melanie <Melanie.Singer@USPTO.GOV>
Sent: Monday, July 22, 2019 7:13 AM
To: *DAL - Trademarks <dallastrademarks@bakermckenzie.com>
Cc: GIPSCOfficeSupport <gipscofficesupport@bakermckenzie.com>; GIPSC <GIPSC@bakermckenzie.com>
Subject: [EXTERNAL] United States Trademark Application Serial No. 88450434_SYNTHESE OCEANIQUE
Importance: High
This email is intended for Dyan M. House, as counsel for Conopco, Inc., or any other authorized party. In reference to the following Trademark Application:
United States Trademark Application Serial No. 88450434
Good afternoon,
I am the examining attorney assigned to the above-referenced file. There are 3 issues preventing the application from being approved, but with your authorization, this can be resolved by email.
Specifically, the identification of goods for Class 3 needs further clarification the nature of the goods and whether they are medicated which is classified in Class 5 or non-medicated which is classified in Class 3. Also the applicant must replace the “and/or” in the identification because this wording is indefinite. Additionally, applicant must identify the hair treatment goods by common commercial name.
I suggest the following language and amendments, if accurate:
AMENDED IDENTIFICATION OF GOODS AND SERVICES
Class 3: non-medicated Soaps, namely, {specify type of soaps, “skin soap, bar soaps, liquid soaps, etc.”}; perfumery; essential oils; deodorants and antiperspirants; hair care products, namely, {please list types of hair care products classified in Class 3, e.g. “heat protection sprays”}; hair colorants, hair dyes, hair lotions, hair waving preparations, shampoos, {specify type of conditioners classified in Class 3, e.g. “hair conditioners”} conditioners, hair sprays, hair powder {specify purpose of hair powder, e.g. “hair-washing powder”}, hair dressings for {specify intended audience or purpose of hair dressings, e.g. “hair dressings for women and men”}, hair lacquers, hair mousses, hair glazes, hair gels, non-medicated hair moisturisers, non-medicated hair liquid, non-medicated hair preservation treatments, non-medicated hair desiccating treatments, namely, {please list common commercial name of hair drying treatments classified in Class 3, e.g. “dry shampoo”} , hair oils, hair tonic, hair creams, cosmetic preparations for the bath
and/orand shower; non-medicated toiletry preparations; non-medicated skin care preparations; cosmetics
Class 5 (NEW): medicated liquid soaps; medicated hair moisturizer; medicated hair liquid; medicated hair desiccating treatments, namely dry shampoo; medicated skin care preparations
With your authorization, I would be happy to enter the suggested changes in Class 3 through an Examiner’s Amendment for you today, and if you wish to add some or all of the suggested goods in Class 5, I can issue a Priority Action allowing the applicant to add an additional class of goods to the application and pay the additional fees associated with adding a class.
REQUIRED TRANSLATION OF “SYNTHESE”
To permit proper examination of the application, applicant must submit an English translation of the foreign wording in the mark “SYNTHESE”. 37 C.F.R. §§2.32(a)(9), 2.61(b); see TMEP §809. Applicant may adopt the following translation if accurate:
The English translation of “SYNTHESE” is “the synthesis or combination of chemicals producing a chemical compound”.
If you would like for me to make the suggested changes, please reply to this email with the requested fill-in language and a statement regarding whether you would like to add the goods listed in Class 5. Also please provide a statement regarding the suggested translation statement.
Please let me know by phone or email if you have any questions about the application. Thank you so much for your prompt cooperation!
Best regards,
Melanie Singer
**************PLEASE BE ADVISED OF THE FOLLOWING*************
Although the USPTO will not accept a formal response by e-mail, an applicant may communicate informally by phone or e-mail with the trademark examining attorney to agree to a proposed amendment to the application that will immediately place the application in condition for publication for opposition, issuance of a registration, or suspension. See 37 C.F.R. §2.62(c); TMEP §707. All relevant e-mail communications will be placed in the official application record.