Serial No. 77/640,486
Law Office 114
Examining Attorney: David I

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

Re App : Cortec Corporation
June 9, 2010
S. N. : 77/640,486
Int’l Class: 016
Filed : December 29, 2009
Docket No. 2008-3928
Mark : ECO BUBBLE

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COMMISSIONER FOR TRADEMARKS
P.O. BOX 1451
ALEXANDRIA, VA 22313-1451

Dear Examining Attorney David I:

I. AMENDMENT

In connection with the above-captioned trademark application, in the description of

goods, please add the word “biodegradable” to the beginning of the description of goods. Thus,

the description of goods at issue in the application should now read as follows:

“Biodegradable plastic bubble packs for wrapping or packaging.”

II. REMARKS

This communication responds to the December 9, 2009 Office Action relevant to the

above-captioned trademark application. Two issues are present as concerns this application: a

Section 2(e)(1) descriptiveness refusal and an assertion by the Examining Attorney that “the

applied-for mark consists of or includes deceptive matter in relation to the identified goods”.

Each of these items are discussed below.
Serial No. 77/640,486
Law Office 114
Examining Attorney: David I

With regard to the second basis of rejection, the Examining Attorney indicates that “if the

goods are environmentally friendly, applicant must amend the identification of goods to state this

fact, and the refusal will be withdrawn”. As can be seen above, applicant has, in fact, amended

its description of goods to properly indicate that the plastic bubble packs for wrapping or

packaging at issue in the application are biodegradable. With regard to the amended description

of goods, applicant specifically notes three existing registrations owned by it that incorporate

very similar descriptions of goods. Applicant owns U.S. Reg. No. 3,296,873 on the mark ECO

WRAP as used in connection with “biodegradable plastic film used to wrap industrial,

commercial, and agricultural-based materials”. Applicant owns U.S. Reg. No. 3,307,076 on the

mark ECO FILM as used in connection with “biodegradable plastic packaging film for

industrial, commercial, agricultural and consumer-based uses; biodegradable plastic film used in

the manufacturing of plastic bags for industrial, commercial, agricultural and consumer-based

uses”. Finally, Applicant owns U.S. Reg. No. 3,522,542 on the mark ECO-CARD as used in

connection with “biodegradable plastic sheets for use in manufacturing credit cards and other

commercial use cards; biodegradable plastic cards in sheet form for use in making credit cards

and other commercial cards”.

Applicant respectfully contends that its amended identification of goods is now fully

accurate and proper. As such, applicant believes that this aspect of the subject Office Action has

been fully complied with.

The Examining Attorney has also continued the Section 2(e)(1) descriptiveness rejection.

At this juncture, applicant incorporates by reference all of the arguments made in its September

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Serial No. 77/640,486
Law Office 114
Examining Attorney: David I

22, 2009 Office Action response. Applicant strongly contends that its mark is at best suggestive

of the goods at issue, and wishes to expand on the arguments set forth in the earlier Office

Action response.

The Trademark Trial and Appeal Board has indicated in published decisions that ECO is,

in the context of goods such as those at issue in this situation, suggestive, not descriptive of such

goods. These cases, while not precedent of the TTAB, are, in applicant’s opinion, extremely

instructive as concerns the issue.

In the Board proceeding designated In re Fisi Fibre Sintetiche, S.p.A., 2007 TTAB Lexis

517, [*9] (TTAB 2007), the Trademark Trial and Appeal Board states that “while the prefix ECO

may suggest an ecological product, that does not exclude the use of down”.

Similarly, just last year the Board indicated “as to the strength of the cited mark, while

we acknowledge that these marks may be deemed to be somewhat suggestive of a claimed

ecological or environmental benefit of the goods, none of the third-party registrations for marks

containing the term ECOSAFE involves goods in any way related to the respective goods at

issue herein”. In re EH Europe, 2009 TTAB Lexis 694, [*10] (TTAB 2009).

Finally, applicant notes the registrations that it submits herewith. As can be seen, each

and every one of them uses ECO. Applicant’s mark is no more suggestive than any of the marks

at issue in the subject registrations. Nevertheless, as can be seen, not once is the ECO portion of

any of these marks disclaimed. Furthermore, applicant reminds the Examining Attorney that it

owns a family of ECO marks, and not once has it been required to disclaim the ECO portion of

its marks.

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Serial No. 77/640,486
Law Office 114
Examining Attorney: David I

Applicant simply wants to receive the same equitable treatment that it has received from

the Trademark Office in the past. Similarly, applicant simply wants to receive the same

equitable treatment that has been shown to the innumerable other entities who have registered

ECO-based marks in the past.

Applicant acknowledges that the attachment submitted herewith is somewhat

voluminous. Applicant will be relying on these registrations if this matter advances to an appeal

before the Trademark Trial and Appeal Board. As such, please feel free to contact the

undersigned if you have any access-based issues with regard to the attachments submitted

herewith.

III. CONCLUSION

The Commissioner is authorized to charge any additional fees or refund any overpayment

under 37 CFR 2.6 which may be required by this paper to Deposit Account No. 50-0789.

Of course, contact the undersigned with any questions or comments you may have

regarding the above.

Respectfully submitted,

HAUGEN LAW FIRM PLLP

Dated: June 9, 2010 Eric O. Haugen
Attorney for Applicant
121 South Eighth Street
Suite 1130
Minneapolis, MN 55402
Phone: (612) 339-8300
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