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 09/20/2020)

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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 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88559433 PERIOE TOOTHBALM(Standard Characters, see http://uspto.report/TM/88559433/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:
Current: Class 003Dentifrices; dental rinses; teeth whitening patches; cream dentifrices; tooth cleaning preparations; teeth whitening preparations; teeth whitening preparations in the form of pen; non-medicated mouthwashes and gargles; dentifrices for babies; cosmetic preparations for the care of mouth and teeth; tooth polishes; dental bleaching gels; breath freshening preparations for personal hygiene; breath freshening strips; breath freshening sprays
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Korea, South application number 40-2019-0117 filed 07/29/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Dentifrices; dental rinses; non-medicated dental rinses; teeth whitening patches; cream dentifrices; tooth cleaning preparations; teeth whitening preparations; teeth whitening preparations in the form of pen; non-medicated mouthwashes and gargles; dentifrices for babies; cosmetic preparations for the care of mouth and teeth; tooth polishes; dental bleaching gels; breath freshening preparations for personal hygiene; breath freshening strips; breath freshening sprays
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Korea, South application number 40-2019-0117189 filed 07/29/2019]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Owner AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: LG HOUSEHOLD & HEALTH CARE LTD., a corporation of Korea, South, having an address of
      58, Saemunan-ro, Jongno-gu
      Seoul, 03184
      Korea, South
      +82-
Proposed: LG HOUSEHOLD & HEALTH CARE LTD., a corporation of Korea, South, having an address of
      58, Saemunan-ro, Jongno-gu
      Seoul, 03184
      Korea, South
       Email Address: web@lghnh.com
      +82-

The owner's/holder's current attorney information: Mark H. Tidman. Mark H. Tidman of BAKER & HOSTETLER LLP, is located at

      WASHINGTON SQUARE, SUITE 1100
      1050 CONNECTICUT AVENUE N.W.
      WASHINGTON, District of Columbia 20036
      United States
The docket/reference number is 115262.00270.

The phone number is 202-861-1500.

The fax number is 202-861-1783.

The email address is bhipdocket@bakerlaw.com

The owner's/holder's proposed attorney information: Mark H. Tidman. Other appointed attorneys are Harry H Park and All Other Attorneys of Baker & Hostetler LLP. Mark H. Tidman of BAKER & HOSTETLER LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      WASHINGTON SQUARE, SUITE 1100
      1050 CONNECTICUT AVENUE N.W.
      WASHINGTON, District of Columbia 20036
      United States
The docket/reference number is 115262.00270.

The phone number is 202-861-1500.

The fax number is 202-861-1783.

The email address is bhipdocket@bakerlaw.com

Mark H. Tidman submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.Correspondence Information (current):
      JENNY KUH
      PRIMARY EMAIL FOR CORRESPONDENCE: bhipdocket@bakerlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): hpark@bakerlaw.com; jkuh@bakerlaw.com

The docket/reference number is 115262.00270.
Correspondence Information (proposed):
      Mark H. Tidman
      PRIMARY EMAIL FOR CORRESPONDENCE: bhipdocket@bakerlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): hpark@bakerlaw.com; jkuh@bakerlaw.com

The docket/reference number is 115262.00270.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use "TOOTHBALM" apart from the mark as shown.


Miscellaneous Statement
With respect to the foreign registration requirement, the Applicant's Korean Application, Serial No. 40-2019-0117189, has not yet matured to registration. Since the Applicant wishes to perfect the Section 44(e) filing basis, the Applicant respectfully requests that further action on its application be suspended until a copy of the Korean registration is available.


SIGNATURE(S)
Response Signature
Signature: /hhp/     Date: 02/20/2020
Signatory's Name: Harry H. Park
Signatory's Position: Attorney for Applicant, DC bar member

Signatory's Phone Number: 202-861-1738

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); 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.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    JENNY KUH
   BAKER & HOSTETLER LLP
   WASHINGTON SQUARE, SUITE 1100
   1050 CONNECTICUT AVENUE N.W.
   WASHINGTON, District of Columbia 20036
Mailing Address:    Mark H. Tidman
   BAKER & HOSTETLER LLP
   WASHINGTON SQUARE, SUITE 1100
   1050 CONNECTICUT AVENUE N.W.
   WASHINGTON, District of Columbia 20036
        
Serial Number: 88559433
Internet Transmission Date: Thu Feb 20 15:25:16 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-202002201525169
24654-88559433-710c5dc7f6f9078f77023221f
7954c7b9dacfa5f8e30ea45ead41eca56085392f
-N/A-N/A-20200220152058956802