IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

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In re Applicant:

Simbol Mining Corp.

Filed: July 14, 2009
Trademark Examining Attorney
Andrea R. Hack, Law Of?ce 108
Serial No.: 77/781,037

For: GREENZN Docket No. 076 i 65 .000021

RESPONSE TO THE OFFICE ACTION
DATED OCTOBER 16, 2009

Commissioner for Trademarks
PO. Box 1451
Alexandria, Virginia 22313-1451

Dear Madame:

In response to the Of?ce Action dated October 16, 2009, Applicant submits the

following:

Remarks

The Trademark Examining Attorney has refused registration of the Applicant’s

GREENZN mark on the basis of descriptiveness, stating that “the applied-for mark merely

describes the purpose and features of applicant’s goods, namely, that they are environmentally

friendly battery chemicals.” The Applicant respectfully disagrees and requests reconsideration

of the Examining Attorney‘s refusal to register the Applicant’s GREENZN mark.

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Examining Attorney Improperly Dissected Applicant’s Mark

When conducting analysis of the Applicant’s mark, the Examining Attorney dissected the

GREENZN mark.

Applicant’s mark, “GREEN[ZN]” is a combination of the terms “GREEN” and
“ZN.” “GREEN” clearly refers to environmentally friendly characteristics of
applicant’s chemicals, and “ZN” clearly refers to zinc, as shown by the attached
evidence. Additional attached evidence shows that zinc is a chemical used in the
manufacture of batteries. The applicant’s website[]states that the applicant
specializes in “commercializing zero waste, zero carbon footprint” battery
chemicals.

Office Action dated October 16, 2009.‘ Applicant believes that the Examining Attorney has

improperly dissected the Applicant’s mark. “The commercial impression of a trademark is

derived from it as a whole, not from its elements separated and considered in detail. For this

reason it should be considered in its entirety.” Estate ofPD. Beckwith, Inc. v. Commissioner of

Patents, 252 US. 538, 545~46 (l920); see also In re Hutchinson Technology, 852 F.2d 552, 554

(Fed. Cir. 1998) (holding that “a mark sought to be registered must be considered in its

entirety”) The Examining Attorney has not considered the GREENZN mark in its entirety and

has not examined the commercial impression of the GREENZN mark as a whole. Rather, the

Examining Attorney has merely dissected the mark and analyzed its individual components

before concluding that it is descriptive.

Applicant’s Mark is Not Descriptive

If the Applicant’s mark is dissected as done by the Examining Attorney, it is important to

note that the GRE ENZ N mar k has a vari ety of mean ings . For exam ple, the Mer ria m-W ebs ter

Online Dictionary lists the term GREEN as an adjective, verb, and noun, with over eighteen (18)

definiti ons (See Exhi bit A, atta ched ). The term GRE EN may hav e any one of the foll owin g

selected de?nitions:

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not fully processed or treated
not in condition for a particular use
fresh, new
rejuvenate, revitalize

If we were to assume that ZN indicates zinc, any one of the de?nitions of the term GREEN cited

above could be Viewed in conjunction with ZN to impart a different meaning of the mark

GREENZN, if the mark is dissected as the Examining Attorney has done. For example,

GREENZN couid mean zinc that was not in condition for a particular use, or zinc that is not fully

processed or treated. While these meanings of the mark GREENZN are both plausible and

reasonable, these meanings are not descriptive in relation to the Applicant’s goods. A “double

entendre” is a word or expression capable of more than one interpretation. For trademark

purposes, a “double entendre” is an expression that has a double connotation or signi?cance as

applied to the goods or services. The mark that comprises the “double entendre” will not be

refused registration as merely descriptive if one of its meanings is not merely descriptive in

relation to the goods or services. TMEP § 1213.05(c). As a result, if dissection of the

Applicant’s mark by the Examining Attorney is proper, Applicant respectfully requests

reconsideration of the refusal to register the Applicant’s GREENZN mark as descriptive, as the

mark has several meanings that are not merely descriptive in relation to the speci?ed goods.

Applicant’s GREENZN Mark is Unique and Unusual

Although the Examining Attorney has viewed the mark as a combination of the terms

GREEN and ZN, the combination is unique and unusual. Applicant is unaware of and has not

been presented by the Examining Attorney with any instance in which these terms have been

used in comb inat ion. Furt herm ore, ther e is no evid ence that the term s have bee n used in the

unique and unu sua l com bin ati on for the spe ci? ed goo ds as in App lic ant ‘s GR EE NZ N mar k, as

further illustrated by the resu lts of a Goo gle sea rch eng ine sea rch for the ter m GR EE NZ N (Se e

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Exhibit B, attached). The App lic ant ’s com bin ati on of the ter ms GR EE N and ZN res ult s in a

unitary mark that is visu ally and pho net ica lly uni que and unu sua l and may ade qua tel y ser ve as

an indicato r of the orig in of the spe ci? ed goo ds. In fact , a mar k com pri sin g a com bin ati on of

merely descript ive com pon ent s is regi stra ble if the com bin ati on of ter ms crea tes a uni tar y mar k

with a unique, nondescripti ve mea nin g, or if the com pos ite has a biz arr e or inc ong ruo us mea nin g

as applied to the goo ds. See In re Col oni al Sto res Inc , 394 F.2 d 549 , 157 U.S .P. Q. 382

(C.C.P.A. 1968) (SUG AR & SPI CE hel d not mer ely des cri pti ve of bak ery pro duc ts) ; In re

Shutts, 217 U.S .P. Q. 363 (T. T.A .B. 198 3) (S NO -R AK E hel d not mer ely des cri pti ve of a sno w

removal hand tool).

Applicant’s Mark is at Most Merely Suggestive

The ter m GR EE N whe n use d in the con tex t of the mar k as cla ime d is not desc ript ive, and

is, at most, merely sug ges tiv e. Eve n ass umi ng tha t the ter m GR EE N has a mea nin g wit hin the

electricity and ene rgy indu stri es, it doe s not foll ow, how eve r, that the mar k in its enti rety , that is

GREENZN, is merely descriptive as it pertains to industrial chemicals. See Concurrent

Technologies Inc. v. Con cur ren t Tec hno log ies Cor p, 12 U.S .P. Q.2 d 105 4 (T. T.A .B. 198 9)

(While “concurre nt” has a mea nin g in the com put er fiel d, CO NC UR RE NT TE CH NO LO GI ES

CORP. is not merely descripti ve of pri nte d ele ctr oni c circ uit boa rds ). Rat her , the det erm ina tio n

of whether a mar k is mer ely des cri pti ve mus t be mad e in rel ati on to the goo ds or ser vic es for

which regist rat ion is sou ght , not in the abst ract . See In re Om ah a Nat ’l Cor p, 819 F.2 d 111 7, 2

U.S.P.Q.2d 1859 (Fe d. Cir. 198 7); In re Abc or Dev elo pme nt Cor p, 588 F.2 d SH , 200 U.S .P. Q.
. .__xmu_:mv”._mw.._. …….

215 (C.C.P .A. 197 8); In re Ven tur e Len din g Ass oci ate s, 226 U.S .P. Q. 285 (T. T.A .i3 . 198 5).

GREEN has no establ ish ed mea nin g in the con tex t of the ind ust ria l che mic al ind ust ry.

The Examining Attorney has not pro vid ed the App lic ant wit h any evi den ce tha t GR EE N has an

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established meaning within the industrial chemical industry. The Examining Attorney provided

the App lic ant wit h ove r fort y (40) pag es of web sit e prin tout s that “sh ows the imp ort anc e of

‘GREEN’ processes and tec hno log ies to pur cha ser s . . .” How eve r, nea rly eac h of the web sit e

prin tout s refe rs to “G RE EN POW ER, ” and furt her de? nes “G RE EN PO WE R” as “ele ctri city

produced from solar, win d, geo the rma l, biog as, bio mas s, and low -im pac t sma ll hydr oele ctri c

source’s .” Alt hou gh this evi den ce arg uab ly sug ges ts a part icul ar mea nin g to the ter m GR EE N

within the electricity and energy industries, it does not provide evidence of a particular meaning

of the term GRE EN with in the indu stri al chem ical indu stry . in the cont ext of the Appl ican t’s

mark, GREENZN, the ter m GR EE N doe s not des cri be an ingr edie nt, qual ity, char acte rist ic,

function , feat ure, pur pos e, or use of the spe ci? ed goo ds. As a resu lt, the App lic ant ‘s mar k is not

descriptive of industrial chemicals.

Applicant’s Goods are Not “Green” as De?ned by the Examining Attorney

The Examining Att orn ey indi cate d that Appl ican t’s web sit e stat es that App lic ant util izes 7

“green” tec hno log y to man ufa ctu re its prod ucts . The App lic ant resp ectf ully dis agr ees wit h this

interpretation as the App lic ant ‘s web sit e mer ely stat es that “Si mbo l is an earl y stag e com pan y

commercializ ing zer o wast e, zer o car bon foo tpr int pro duc tio n pro ces ses . . .” The App lic ant ’s

website does not inc lud e the ter m GRE EN, nor doe s it des cri be its pro duc ts or pro ces ses as

“environm ent all y frie ndly ” or “en vir onm ent all y safe .” The sta tem ent by the App lic ant on its

website merely des cri bes the man ner in whi ch var iou s port ions of its che mic als are pro duc ed and
,

foo tpr int pro ces s. Bas ed on
-mwmmwg “A… H

states the fac t tha t the y are pro duc ed by a zer o was te, zer o car bon

the Examining Att orn eys logi c, the ter m GR EE N wil l alw ays be des cri pti ve if it is inc orp ora ted

into a mark if even the mos t rem ote con nec tio n can be dr aw n to the env iro nme nt. Un de r the

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Examining Atto mey’ s logi c, the foll owin g regi ster ed, allo wed, publ ishe d, or appr oved for

publication marks are arguably merely descriptive:

SREENBUILD, U.S. Registration No. 2,833,369

GREEN-LOG, us. Regisiration No. 3,292,147

GREENSHIELD, U.S. Serial No. 77/978,674

GREENDEED, U.S. Serial No. 77/880,197

GREENSHIELD, U.S. Serial No. 77/666,235

GREENPAC, US. Registration No. 77/740,006

GREENFRAC, U.S. Serial No. 77/874,498

GREENFAB, U.JS. Serial No. 77/ 846,570

GREENGANIC, U.S. Registration No. 3,758,823

GREENFIELD, U.S. Serial No. 77/802,7i1

GREENSORB, U.S. Serial No. 77/769,825

GREENBID, US. Serial No. 77/746,495

GREENBID, U.S. Serial No. 77/746,487

GREENKURB, US. Serial No. 77/716,992

GREENLIGHTAC, US. Serial No. 77/674,814

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GREENTEC FUELS, U.S. Registration No. 3,688,670

GREENSHIELD, U.S. Serial No. 77/663,830

GREBNTREC, US. Registration No. 3,726,561

GREENIDEA, US. Registration No. 3,675,754

GREENCURB, US. Serial No. 77/625,182

GREENSPEED, U.S. Serial No. 77/544,229

GREENTEC, Registration No. 3,659,830

GREENSHIELD, U.S. Registration No. 3,661,424

GREENBUILD SOLUTIONS, U.S. Registration No. 3,496,706

GREENPICNIC, Registration No. 3,441,629

GREENGRID, U.S. Registration No. 2,802,851

GREENSPEC, U.S. Registration No. 2,536,079

(Exhibit C, attached).

The Examining Attorney indicates that evidence attached to the Of?ce Action supports a

determinatio n that gre en tec hno log y is imp ort ant to a sig ni? can t por tio n of rele vant con sum ers ’

purchasing decisi ons . The Exa min ing Att orn ey stat es that , “Th e evi den ce con sis ts of thi rd— par ty
. __. _.._..ummut.mwxwu,

registrations for chemicals tha t sho w a dis cla ime r of ‘GR EEN ‘. . .” How eve r, eac h of the thi rd-

party registration s cit ed by the Exa min ing Att orn ey con tai n com pou nd wor d mar ks tha t con tai n

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the word GREEN in combination with at least one other word. With each of these third-party

registrations, it is clear that the word GREEN was included to connote “environmentally

friendly” or “environmentally safe” goods or services. However, as previously indicated, the

Applicant’s mark is not a compound word mark, but rather is a unitary mark that is visually and

phonetically unique and unusual, and may adequately serve as an indicator of the origin of the

speci?ed goods. The Examining Attorney has not provided the Applicant with evidence of a

unitary mark that is found to contain the term GREEN when dissected, as is the case with

Applicant’s GREENZN mark. However, the Applicant has provided the Examining Attorney

with a number of unitary trademarks that contain the term GREEN that have been registered,

allowed, published, or approved for publication (Exhibit C).

Information Request

The Examining Attorney has stated that the “Applicant must indicate whether it is using

green processes to manufacture battery chemicals . . .” Applicant wishes to note that the

Applicant’s application for the GREENZN mark covers “industrial chemicals” in International

Class 001, and is not restricted to “battery chemicals” as indicated by the Examining Attorney.

As previously indicated, the Applicant has not described its products or processes as “GREEN,”

“environmentally friendly,” or “environmentally safe.” Furthermore, the Applicant does not

believe that it uses any “green processes” as de?nedby the Examining Attorney to manufacture

its industrial chemicals. The Applicant has provided the following description in an effort to

brie?y describe the process by which the Applicant obtains portions of its industrial chemicals.

Geothermal power plants bring silica, lithium, zinc, manganese, and other valuable materiais in a

hot stew of brine from 10,000 feet underground to the earth’s surface, then inject them back

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down. Applicant uses off-the-shelf nano?lters, like those in water—treatment systems, to extract

minerals and metals from the salty water.

The Examining Attorney has also asked, “Is applicant providing zinc? Are there any

patents that relate to the green processes used? Are there any other advertisements used by the

applicant’ to identify the green processes?” Yes, Applicant is providing zinc, however, the mark

covers “industrial chemicals” in International Class 001, and is not restricted to “zinc.”

Applicant respectfully reiterates that it does not believe that it uses any “green processes” as

de?ned by the Examining Attorney. However, Applicant does own several pending patent

applications that relate to the production of Applicant’s industrial chemicals. With respect to

advertisements, the Applicant does not believe that its advertisements identify “green processes”

as defined by the Examining Attorney, and is therefore unaware of any additional

advertisements. The Applicant’s advertisements simply explain the process by which portions of

the Applicant’s industrial chemicals are obtained. The Applicant’s advertisements do not refer to

the processes as “GREEN,” “environmentally friendly,” or “environmentally safe.”

Identi?cation of the Goods

The Examining Attorney stated that, “if applicant uses , or intends to use, the mark on

goods other than environmentally friendly battery chemicals, such use would be deceptive . . .

Therefore, appiicant must amend the identi?cation by limiting it to environmentally friendly

industrial chemicals for the manufacture of batteries.” Applicant again would like to clarify that

it does not believe that it uses “green processes” as de?ned by the Examining Attorney.

Furthermore, App lic ant resp ectf ully dis agr ees wit h the Exa min ing Att orn ey that the wor din g in

the identi?cation of goods must be amended. The Applicant selected the identi?cation of goods,

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“industrial chemicals” in International Class 001, from the USPTO ID Manual (See Exhibit D,

attached).

The USPTO maintains a listing of acceptable identi?cations of goods and services
compiled by the Administrator for Trademark Identi?cations, Classi?cation and
Practice. The USPTO ID Manual contains identi?cations of goods and services
and their classi?cations that are acceptable in the USPTO Without further inquiry
by an examining attorney . . . Using identi?cation language from the Manual
enables trademark owners to avoid objections by examining attorneys concerning
indefinite identi?cations of goods or services.

TMEP § 1402.04. Furthermore, Applicant’s mark, as discussed above, is a unitary and unique

mark that is not descriptive or misdescriptive of the character, quality, function, composition or

use of Applicant’s goods. TMEP § 1203.02. Therefore, Applicant respectfully submits that its

identi?cation of goods is de?nite and in acceptable form, and does not wish to adopt the

Examining Attorney’s amendment.

Conclusion

The Examining Attorney has improperly dissected the Applicant’s GREENZN mark, and

thus, has not considered the GREENZN mark in its entirety and has not examined the

commercial impression of the GREENZN mark as a whole. The Applicant’s GREENZN mark is

a unitary mark that is visually and phonetically unique and unusual and may adequately serve as

an indicator of the origin of the speci?ed goods. The term GREEN when used in the context of

the mark as claimed is not descriptive, and is, at most, merely suggestive. As a result, Applicant

respectfully requests that the previous objections be withdrawn and that the subject application

proceed to publication. Should you have any inquiries concerning this matter, please direct

. telephone calls to the undersigned at (71 3)~22l-l383.

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Respectfully submitted,

R an um

BRACEWELL & GIULIANI LLP
711 Louisiana, Suite 2300
Houston, Texas 77002
Phone: 713/221-1383, Fax: 713/222-3221
Email: *Ltrmnfézllzgigmgm

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