NOTE TO THE FILE
SERIAL NUMBER: 88904746
DATE: 06/24/2020
NAME: rnkojo
NOTE:
Searched:
Lexis/Nexis
OneLook
Wikipedia
Acronym Finder Protest evidence reviewed
Other:Checked:
Geographic significance
Surname
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:Ms. Nkojo:
Can we please adopt the following:
International Class 5: Insecticides; insect repellents; pesticides; rodenticides; miticides; preparations for destroying vermin; anti-allergy preparations and sprays; disinfectants; germicides; fungicides; herbicides; preparations for killing weeds and vermin; insect repellent incense; mosquito repellent incense; insect repellent coils; mosquito repellent coils; citronella for use as an insect repellant in the form of candles; personal spray-on protection in the nature of insect repellent for use against flies, mosquitoes and other insects; insect repellant for personal use in aerosol form; medicated sun screen preparations containing insect repellent; pharmaceutical preparations for the treatment of bites and stings.
Please let me know if there are any issues or questions.
Mark Lerner
Partner
Duane Morris LLP
230 Park Avenue, Suite 1130
New York, NY 10169-0079
P: +1 212 404 8714
F: +1 212 818 9606
MALerner@duanemorris.com
www.duanemorris.com
From: Nkojo, Rhoda <Rhoda.Nkojo@USPTO.GOV>
Sent: Tuesday, June 23, 2020 11:33 AM
To: Lerner, Mark <MALerner@duanemorris.com>
Subject: U.S. Trademark Application Serial No. 88904746
Dear Mr. Lerner:
This message concerns the above-referenced trademark application for the mark “MORTEIN” in Serial No. 88904746.
Thank you for the above-referenced application to the U.S. Patent and Trademark Office. I have reviewed your client’s application and there are few minor issues with the identification of goods that we can resolve by Examiner’s Amendment and then I can approve the mark for publication right away. If you would like to discuss the below via telephone, I am available to do so today until 6pm EST as well as tomorrow, Wednesday, June 24, 2020, between 10am and 6pm EST.
REQUIREMENT – AMEND IDENTIFICATION OF GOODS
The wording “personal spray-on protection against flies…” is indefinite and must be clarified because the nature of the goods remains unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend the identification to further clarify the nature of the goods.
The wording “pharmaceutical preparations in this class…” is indefinite and must be clarified because the wording “in this class” is unnecessary as is does not identify a specific good or purpose or function of the goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend the identification to remove this wording from the identification.
Accordingly, applicant may adopt any or all of the following identifications, with suggested language specified in bold, if accurate:
International Class 5: Insecticides; insect repellents; pesticides; rodenticides; miticides; preparations for destroying vermin; anti-allergy preparations and sprays; disinfectants; germicides; fungicides; herbicides; preparations for killing weeds and vermin; insect repellent incense; mosquito repellent incense; insect repellent coils; mosquito repellent coils; citronella for use as an insect repellant in the form of candles; personal spray-on protection in the nature of [clarify nature of the goods, e.g., insect repellent] for use against flies, mosquitoes and other insects; insect repellant for personal use in aerosol form; medicated sun screen preparations containing insect repellent; pharmaceutical preparations for the treatment of bites and stings.
Scope Advisory
Applicant should note that it may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods and/or services may not later be reinserted. See TMEP §1402.07(e).
RESPONSE GUIDELINES
If the above-referenced amended identification of goods is acceptable to you, I can make the changes myself with an “Examiner’s Amendment”. I would simply need a response and approval by email or telephone at the number below, from you, the authorized attorney of record for the applicant, Reckitt Benckiser LLC.
If, however, you would like to discuss the above via telephone we can schedule a phone call for anytime today until 6pm EST as well as tomorrow, Wednesday, June 24, 2020, between 10am and 6pm EST. You may also respond to this email with your approval or concerns regarding the above-referenced change to the application record. I would like to discuss resolution of this issue by close of business Wednesday, June 24th. However if you are unavailable prior to June 24th, then I can issue Office Actions to you and you will have 6 months to respond.
Thank you for your time,
Rhoda
Rhoda Nkojo
Trademark Examining Attorney - Law Office 117
United States Patent & Trademark Office
(PH): (571) 272-8468
Email: rhoda.nkojo@uspto.gov
Please note that although all relevant e-mail communications will be placed in the official application record, an email communication does not constitute a formal response to an office action. Although the trademark examining attorney may provide additional explanation pertaining to the application, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.