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.: 77/781,043

For: GREENLIOH Docket No. 076165000019

RESPONSE TO THE OFFICE ACTION
DATED OCTOBER 16, 2009 4′

Commissioner for Trademarks
P.O.’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

GREENLIOH mark on the basis of descriptiveness, stating that “the applied—for mark merely

describes a feature 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 GREENLIOH 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

GREENLIOH mark.

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

Of?ce 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 (1920); 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 GREENLIOH mark in its entirety

and has not examined the commercial impression of the GREENLIOH 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 GREENLIOH mark has a variety of meanings. For example, the Merriam~Webster

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

de?nitions (See Exhibit A, attached). The term GREEN may have any one of the following

selected definitions:

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not fully processed or treated

0…
not in condition for a particular use
fresh, new
rejuvenate, revitalize

If we were to assume that LiOH indicates lithium hydroxide, any one of the de?nitions of the

term GREEN cited above could be viewed in conjunction with lithium hydroxide to impart a

different meaning of the mark GREENLIOH, if the mark is dissected as the Examining Attorney

has done. For example, GREENLIOH could mean lithium hydroxide that was not in condition

for a particular use, or lithium hydroxide that is not fully processed or treated. While these

meanings of the mark GREENLIOH 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

GREENLIOH mark as descriptive, as the mark has several meanings that are not merely

descriptive in relation to the speci?ed goods.

Appiicant‘s GREENLIOH Mark is Unique and Unusual

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

GREEN and LIOH, 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 combination. Furthermore, there is no evidence that the terms have been used in the

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unique and unusual combination as in Applicant‘s GREENLIOH mark, as further illustrated by

the results of a Google search engine search for the term GREENLIOH (See Exhibit B,

attached). The Applicant’s combination of the terms GREEN and LIOH results in 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. In fact, a mark comprising a combination of merely descriptive

components is registrable if the combination of terms creates a unitary mark with a unique,

nondescriptive meaning, or if the composite has a bizarre or incongruous meaning as applied to

the goods. See In re Colonial Stores Inc, 394 F.2d 549, 157 U.S.P.Q. 382 (C.C.P.A. 1968)

(SUGAR & SPICE held not merely descriptive of bakery products); In re Shutts, 217 U.S.P.Q.

363 (T.T.A.B. 1983) (SNO-RAKE held not merely descriptive of a snow removal hand tool).

Applicant’s Mark is at Most Merely Suggestive

The term GREEN when used in the context of the mark as claimed is not descriptive, and

is, at most, merely suggestive. Even assuming that the term GREEN has a meaning within the

electricity and energy industries, it does not follow, however, that the mark in its entirety, that is

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

Technologies Inc. v. Concurrent Technologies Corp, 12 U.S.P.Q.2d 1054 (T.T.A.B. 1989)

(While “concurrent” has a meaning in the computer ?eld, CONCURRENT TECHNOLOGIES

CORP. is not merely descriptive of printed eiectronic circuit boards). Rather, the determination

of whether a mark is merely descriptive must be made in relation to the goods or services for

which registration is sought, not in the abstract. See In re Omaha Nat ’l Corp, 819 F.2d 1117, 2

U.S.P.Q.2d 1859 (Fed. Cir. 1987); In re Abcor Development Corp, 588 F’.2d 811, 200 U.S.P.Q.

215 (C,C.P.A. 1978); In re Venture Lending Associates, 226 U.S.P.Q. 285 (T.T.A.B. 1985).

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GREEN has no established meaning in the context of the industrial chemical industry.

The Examining Attorney has not provided the Applicant with any evidence that GREEN has an

establis hed mea nin g with in the indu stri al chem ical indu stry . The Exa min ing Atto rney prov ided

the Applicant with over forty (40) pages of website printouts that “Show the importance of

’GR EEN ‘ proc esse s and tech nolo gies to purc hase rs. . .” How eve r, near iy each of the webs ite

printouts refers to “GREEN POWER,” and further de?nes “GREEN POWER” as “electricity

produced from solar, wind, geothermal, biogas, biomass, and Iow~impact small hydroelectric

sources.” Although this evidence arguably suggests a particuiar meaning to the term GREEN

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

of the term GREEN within the industrial chemical industry. In the context of the Applicant‘s

mark , GRE ENL IOH , the term GRE EN does not desc ribe an ingr edie nt, qual ity, char acte rist ic,

function, feature, purpose, or use of the speci?ed goods. As a result, the Applicant‘s mark is not

descriptive of industriai chemicals.

App lic ant ‘s Goo ds are Not “Gr een ” as De? ned by the Exa min ing Att orn ey

The Exa min ing Atto rney indi cate d that Appl ican t’s webs ite stat es that Appl ican t util izes

“green” technoiogy to manufacture its products. The Applicant reSpectfuliy disagrees with this

interpretation as the Applicant’s website merely states that “Simbol is an early stage company

comm erci aliz ing zero wast e, zero carb on foot prin t prod ucti on proc esse s . . .” The Appi ican t‘s

website does not incl ude the term GRE EN, nor does it desc ribe its prod ucts or proc esse s as

“environmentally friendly” or “environmentally safe.” The statement by the Applicant on its
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website merely des cri bes the man ner in whi ch var iou s por tio ns of its che mic als are pro duc ed and

stat es the fact that the y are pro duc ed by a zer o was te, zer o car bon foot prin t proc ess. Bas ed on

the Examin ing 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

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into a mark if even the most remote connection can be drawn to the environment. Under the

Examining Attorney’s logic, the following registered, allowed, published, or approved for

publication marks are arguably merely descriptive:

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

GREEN~LOC, U.S. Registration No, 3,292,147

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

GREENDEBD, 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.s. Serial No. 77/846,570

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

GREENFIELD, US. Serial No. 77/802,711

GREENSORB, U.S. SerialNo. 77/769,825

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

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

GREENKURB, U.S. Serial No. 77/716,992

GREENLIGHTAC, U.S. Serial No. 77/674,814

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

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

GREENTREC, U.S. Registration No. 3,726,561

GREENIDEA, U.S. Registration No. 3,675,754

GREENCURB, U.S. Serial No. 77/625,182

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

GREENTEC, U.S. Registration No. 3,659,830

GREENSHIELD, Registration No. 3,661,424

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

GREENPICNIC, U.S. 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

determination that green technology is important to a signi?cant portion of relevant consumers’

purchasing decisions. The Examining Attorney states that “The evidence consists of third—party

registrations for chemicals that show a disclaimer of ‘GREEN’. . .” However, each of the third-

party registrations cited by the Examining Attorney contain compound word marks that contain

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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 Appiicant with evidence of a

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

Applicant’s GREENLIOH 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 GREENLIOH 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?ned by 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 materials 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 lithium hydroxide? 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 lithium

hydroxide, however, the mark covers “industrial chemicals” in International Class 0m, and is not

restricted to “lithium hydroxide.” 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 simpiy 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, applicant 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, Appiicant respectfully disagrees with the Examining Attorney that the wording in

the identi?cation of goods must be amended. The Applicant seiected 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
inde?nite 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 GREENLIOH mark,

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

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

mark is a unitary mark that is visuaily 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 respectfuliy 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 (713)-221—1383.

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Respectfuliy submitted,

Ryan Gu

BRACEWELL & GIULIANI LLP
711 Louisiana, Suite 2300
Houston, Texas 77002
Phone: 713/221-1383, Fax: 713/222-3221
Email: mmwm?Elzgi?mgm

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