Simbol Mining Corp.
Industrial Chemicals
United States Patent and Trademark Office (USPTO)
Office Action Response
Outgoing Trademark Office Action
Trademark Office Action Response
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
WDCO’JCODWDCMQOJKJOOOGCO’JCOD
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 Attorneys refusal to register the Applicant’s GREENZN mark.
HOUSTONZ376277.2
Examining Attorney Improperly Dissected Applicant’s Mark
When conducting analysis of the Applicant’s mark, the Examining Attorney dissected the
GREENZN mark.
Applicants mark, GREEN[ZN] is a combination of the terms GREEN and
ZN. GREEN clearly refers to environmentally friendly characteristics of
applicants 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 applicants 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 Applicants 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:
HOUSTON2376277.2 -2~
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 Applicants 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
Housronmrezvn -3-
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
ttousron-tmn ~4
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
HOUSTON2376277.2 -5
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
HOUSTON2376277.2 ~6
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
HOUSTON2376Z77.2 t7-
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
HOUSTON2376277.2 ~8-
down. Applicant uses off-the-shelf nano?lters, like those in watertreatment 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 Applicants 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,
HOUSTON2376277.2 9-
“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.
1~iousroN2376277.2 1 0
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
HOUSTON23 76277.2
-11-
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
WDCO’JCODWDCMQOJKJOOOGCO’JCOD
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 Attorneys refusal to register the Applicant’s GREENZN mark.
HOUSTONZ376277.2
Examining Attorney Improperly Dissected Applicant’s Mark
When conducting analysis of the Applicant’s mark, the Examining Attorney dissected the
GREENZN mark.
Applicants mark, GREEN[ZN] is a combination of the terms GREEN and
ZN. GREEN clearly refers to environmentally friendly characteristics of
applicants 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 applicants 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 Applicants 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:
HOUSTON2376277.2 -2~
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 Applicants 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
Housronmrezvn -3-
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
ttousron-tmn ~4
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
HOUSTON2376277.2 -5
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 watertreatment 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 Applicants 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,
HOUSTON2376277.2 9-
“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.
1~iousroN2376277.2 1 0
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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