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
WWWWWWWWWJW
In re Applicant:
Simboi Mining Corp.
Filed: August 3, 2009
Trademark Examining Attorney
Andrea R. Hack, Law Of?ce 108
Serial No.: 77/795,874
For: GREENLICL Docket No. 076165000026
RESPONSE TO THE OFFICE ACTION
DATED OCTOBER 16, 2009
Commissioner for Trademarks
PO. Box 1451
Alexandria, Virginia 223 134451
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
GREENLICL 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
Attorneys refusal to register the Applicant’s GREENLICL mark.
HOUSTON2376414.2
Examining Attorney Improperly Dissected Applicant’s Mark
When conducting analysis of the Applicant’s mark, the Examining Attorney dissected the
GREENLICL mark.
Applicants mark, GREENLICL is a combination of the terms GREEN and
LICL. GREEN clearly refers to environmentally friendly characteristics of
applicants chemicals, and LICL clearly refers to lithium chloride, as shown by
the attached evidence. Additional attached evidence shows that lithium chloride
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.
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 fro m it as a who le, not fro m its ele men ts sep ara ted and con sid ere d in deta il. For this
reason it should be considered in its entiretyil Estate of P. D. Beckwith, Inc. v. Commissioner of
Patents, 252 US. 538, 545 46 (192 0); see also In re Hutc hins on Tech nolo gy, 852 F.2d 552, 554
(Fed. Cir. 1998) (holding that “a mark sought to be registered must be considered in its
entirety”) The Exa min ing Atto rney has not cons ider ed the GRE ENL ICL mar k in its enti rety
and has not examined the commercial impression of the GREENLICL mark as a whole. Rather,
the Exa min ing Atto rney has mere ly diss ecte d the mar k and anal yzed its indi vidu al com pon ent s
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
.. ,.,i.;ui;.4_zs_n__._….m.e…… 4,. i.
note that the GREENLICL mark has a variety of meanings. For example, the MerriamWebster
Onl ine Dic tio nar y list s the ter m GR EE N as an adje ctiv e, verb , and nou n, wit h ove r eig hte en (18)
de?nition s (Se e Exh ibi t A, att ach ed) . The ter m GR EE N ma y hav e any one of the fol low ing
selected de?nitions:
HOUSTON23764l4.2 ~2-
not fully processed or treated
not in condition for a particular use
fresh, new
rejuvenate, revitalize
If we wer e to ass ume that LIC L indi cate s lith ium chlo ride , any one of the de?n itio ns of the term
GREEN cited above could be viewed in conjunction with lithium chioride to impart a different
meanin g of the mar k GRE ENL ICL , if the mar k is diss ecte d as the Exa min ing Atto rney has done .
For example, GREENLICL could mean lithium chloride that was not in condition for a particular
use, or lith ium chlo ride that is not full y proc esse d or trea ted. Whi le thes e mea nin gs of the mar k
GREENLICL are both plausible and reasonable, these meanings are not descriptive in relation to
the App lic ant ‘s goo ds. A do ubl e ent end re is a wor d or exp res sio n cap abl e of mor e tha n one
interpretation. For trademark purposes, a double entendre is an expression that has a double
con not ati on or sig ni? can ce as app lie d to the goo ds or serv ices . The mar k that com pri ses the
double ente ndre will not be refu sed regi stra tion as mere ly desc ript ive if one of its mea nin gs is
not mer ely desc ript ive in rela tion to the goo ds or serv ices . TM EP § 1213 .05( c). As a resu lt, if
dissection of the App lic ant ‘s mar k by the Exa min ing Att orn ey is prop er, App lic ant resp ectf ully
reques ts rec ons ide rat ion of the refu sal to regi ster the App lic ant ‘s GR EE NL IC L mar k as
descriptive, as the mar k has seve ral mea nin gs that are not mer ely desc ript ive in rela tion to the
speci?ed goods.
Applicants GREENLICL Mark is Unique and Unusual
. .t
Although the Examining Attorney has viewed the mark as a combination of the terms
AA .azwhvwiw. “1.4
GREEN and LIC L, the com bin ati on is uni que and unu sua l. App lic ant is una war e of and has not
been presented by the Examin ing Att orn ey wit h any ins tan ce in whi ch the se ter ms hav e bee n
used in com bin ati on. Fur the rmo re, the re is no evi den ce tha t the ter ms hav e bee n use d in the
HOUSTONZ3764M.2 r ~3
unique and unusual combination as in Applicants GREENLICL mark, as further illustrated by
the results of a Google search engine search for the term GREENLICL (See Exhibit 8, attached).
The Applicant’s combination of the terms GREEN and LICL results in a unitary mark that is
visually and phoneticaliy unique and unusual and may adequately serve as an indicator of the
origin of the specified 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
y 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 , mere ly sugg esti ve. Eve n ass umi ng that the term GRE EN has a mea nin g with in the
I electricity and energy indu stri es, it doe s not foll ow, how eve r, that the mar k in its enti rety , that is
GREENLICL, 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 con curr ent has a mea nin g in the com put er ?eld , CON CUR REN T TEC HNO LOG IES
CORP. is not merely descriptive of printed electronic circuit boards). Rather, the determination
of whe the r a mar k is mer ely desc ript ive mus t be mad e in rela tion to the goo ds or serv ices for
which registration is sou ght , not in the abst ract . See In re Oma ha Not I Cor p, 819 F.2 d 111 7, 2
U.S.P.Q.2 d 185 9 (Fed . Cir. 198 7); In re Abc or Dev elo pme nt Cor p, 588 F.2 d 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).
-4-
HOUSTON2376414.2
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
established meaning within the industrial chemical industry. The Examining Attorney provided
the Applicant with over forty (40) pages of website printouts that “show the importance of
‘GREEN’ processes and technologies to purchasers. . .” However, neariy each of the website
printouts refers to “GREEN POWER,” and further defines “GREEN POWER” as “electricity
produced from solar, wind, geothermal, biogas, biomass, and low-impact small hydroelectric
sources.” Although this evidence arguably suggests a particular 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, GREENLICL, the term GREEN does not describe an ingredient, quality, characteristic,
function, feature, purpose, or use of the speci?ed goods. As a result, the Applicant’s mark is not
descriptive of industrial chemicals.
Applicant’s Goods are Not “Green” as De?ned by the Examining Attorney
The Examining Attorney indicated that Applicant’s Website states that Applicant utilizes
“green” technology to manufacture its products. The Applicant reSpectfully disagrees with this
interpretation as the Applicant’s website merely states that “Simboi is an early stage company
commercializing zero waste, zero carbon footprint production processes . . .” The Applicant’s
website does not include the term GREEN, nor does it describe its products or processes as
“environmentally friendly” or “environmentally safe.” The statement by the Applicant on its
.mammnm .xr
website merely descri bes the man ner in whi ch var iou s port ions of its che mic als are pro duc ed and
states 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 Examining Att orn eys logi c, the ter m GR EE N will alw ays be desc ript ive if it is inc orp ora ted
HOUSTON23764I4.2 -S«
into a mar k if eve n the mos t rem ote con nec tio n can be dra wn to the env iro nme nt. Und er the
Examining Att orn ey’ s logi c, the fol low ing regi ster ed, all owe d, pub lis hed , or app rov ed for
publication marks are arguably merely descriptive:
GREENBUILD, U.S. Registration No. 2,833,369
GREEN-LDC, US. Registration No. 3,292,147
GREENSHIELD, US. Serial No. 77/978,674
GREENDEED, US. Serial No. 77/880,197
GREENSHIELD, U.S. Serial No. 77/666,235
GREENPAC, U.s. Registration No. 77/740,006
GREENFRAC, U.S. Serial No. 77/874,498
GREENFAB, U.S. Seriai No. 77/846,570
GREENGANIC, US. Registration No. 3,758,823
GREENFIELD, US. Serial No. 77/802,711
GREENSORB, U.S. Serial No. 77/769,825
GREENBID, US. Serial No. 77/746,495
GREENBID, US. Serial No. 77/746,487
GREENKURB, U.S. Serial No. 77/716,992
GREENLIGHTAC, U.S. Serial No. 77/674,814
HOUSTON2376414.2 -6~
GREENTEC FUELS, U.S. Registration No. 3,688,670
GREENSHIELD, US. Serial No. 77/663,830
GREENTREC, U.S. Registration No. 3,726,561
GREENIDEA, US. Registration No. 3,675,754
GREENCURB, U.S. Serial No. 77/625,182
GREENSPEED, US. Serial No. 77/544,229
GREENTEC, U.S. Registration No. 3,659,830
GREENSHIELD, U.S; Registration No. 3,661,424
GREENBUILD SOLUTIONS, U.S. Registration No. 3,496,706
GREENPICNIC, U.S. Registration No. 3,441,629
GREENGRID, US. Registration No. 2,802,851 r
GREENSPEC, U.S. Registration No. 2,536,079
(Exhibit C, attached).
The Exa min ing Atto rney indi cate s that evid ence atta ched to the Of? ce Acti on supp orts a
determination that green technology is important to a signi?cant portion of relevant consumers
. ,
purchasi ng deci sion s. The Exa min ing Atto rney stat es that “Th e evid ence cons ists of thir d-pa rty
…_u…_l_u__:;._._.,.s_._.s.,..a_..
registrations for chemic als that sho w a dis cla ime r of ‘GR EEN ‘. . . How eve r, eac h of the thir d
party regi stra tion s cite d by the Exa min ing Att orn ey con tai n com pou nd wor d mar ks that con tai n
HOUSTON2376414.2 -7-
the word GRE EN in comb inat ion with at leas t one othe r word . Wit h each of thes e thir d-pa rty
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 GREENLICL 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
ll
green processes to manufacture battery chemicals. . . Applicant wishes to note that the
Applicant’s application for the GREENLICL mark covers “industrial chemicals” in International
Class 001, and is not rest rict ed to bat tery chem ical s” as indi cate d by the Exa min ing Atto rney .
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 che mic als . The App lic ant has pro vid ed the fol low ing des cri pti on in an effo rt to
bri e?y des cri be the pro ces s by whi ch the App lic ant obta ins port ions of its indu stri al che mic als .
Jtn-1,444,lu._n.wi. : ,
Geothermal pow er plan ts bri ng sili ca, lith ium, zinc , man gan ese , and oth er val uab le mate rial s in a
hot stew of brine from 10, 000 feet und erg rou nd to the ear th’ s sur fac e, the n inj ect the m bac k
HOUSTON23764I4.2 ~8-
down. Applicant uses offthe~shelf nane?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 chloride? 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
chloride, however, the mark covers “industrial chemicals” in International Class 001, and is not
restricted to “lithium chloride.” 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 de?ned 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 Applicants 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 chem ical s for the manu fact ure of batt erie s.” Appl ican t agai n wou ld like to clar ify that
it does not believe that it uses “green processes” as. de?ned by the Examining Attorney.
Furthermore, Applicant respectfully disagrees with the Examining Attorney that the wording in
the identi?cation of goods must be amended. The Applicant selected the identi?cation of goods,
HOUSTONZ3764I42 -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 lD 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
identification 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 GREENLICL mark,
and thus, has not considered the GREENLICL mark in its entirety and has not examined the
commercial impression of the GREENLICL mark as a whole. The Applicant’s GREENLICL
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 (713)-221-1383. I
HOUSTON2376414.2 10
Respectfully submitted,
BRACEWELL &_ GIULIANI LLP
7} 1 Louisiana, Suite 2300
Houston, Texas 77002
Phone: 713/221-1383, Fax: 713/222-3221
E-mailz zm;[email protected]
H0USTON2376414.2 4 1-
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
WWWWWWWWWJW
In re Applicant:
Simboi Mining Corp.
Filed: August 3, 2009
Trademark Examining Attorney
Andrea R. Hack, Law Of?ce 108
Serial No.: 77/795,874
For: GREENLICL Docket No. 076165000026
RESPONSE TO THE OFFICE ACTION
DATED OCTOBER 16, 2009
Commissioner for Trademarks
PO. Box 1451
Alexandria, Virginia 223 134451
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
GREENLICL 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
Attorneys refusal to register the Applicant’s GREENLICL mark.
HOUSTON2376414.2
Examining Attorney Improperly Dissected Applicant’s Mark
When conducting analysis of the Applicant’s mark, the Examining Attorney dissected the
GREENLICL mark.
Applicants mark, GREENLICL is a combination of the terms GREEN and
LICL. GREEN clearly refers to environmentally friendly characteristics of
applicants chemicals, and LICL clearly refers to lithium chloride, as shown by
the attached evidence. Additional attached evidence shows that lithium chloride
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.
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 fro m it as a who le, not fro m its ele men ts sep ara ted and con sid ere d in deta il. For this
reason it should be considered in its entiretyil Estate of P. D. Beckwith, Inc. v. Commissioner of
Patents, 252 US. 538, 545 46 (192 0); see also In re Hutc hins on Tech nolo gy, 852 F.2d 552, 554
(Fed. Cir. 1998) (holding that “a mark sought to be registered must be considered in its
entirety”) The Exa min ing Atto rney has not cons ider ed the GRE ENL ICL mar k in its enti rety
and has not examined the commercial impression of the GREENLICL mark as a whole. Rather,
the Exa min ing Atto rney has mere ly diss ecte d the mar k and anal yzed its indi vidu al com pon ent s
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
.. ,.,i.;ui;.4_zs_n__._….m.e…… 4,. i.
note that the GREENLICL mark has a variety of meanings. For example, the MerriamWebster
Onl ine Dic tio nar y list s the ter m GR EE N as an adje ctiv e, verb , and nou n, wit h ove r eig hte en (18)
de?nition s (Se e Exh ibi t A, att ach ed) . The ter m GR EE N ma y hav e any one of the fol low ing
selected de?nitions:
HOUSTON23764l4.2 ~2-
not fully processed or treated
not in condition for a particular use
fresh, new
rejuvenate, revitalize
If we wer e to ass ume that LIC L indi cate s lith ium chlo ride , any one of the de?n itio ns of the term
GREEN cited above could be viewed in conjunction with lithium chioride to impart a different
meanin g of the mar k GRE ENL ICL , if the mar k is diss ecte d as the Exa min ing Atto rney has done .
For example, GREENLICL could mean lithium chloride that was not in condition for a particular
use, or lith ium chlo ride that is not full y proc esse d or trea ted. Whi le thes e mea nin gs of the mar k
GREENLICL are both plausible and reasonable, these meanings are not descriptive in relation to
the App lic ant ‘s goo ds. A do ubl e ent end re is a wor d or exp res sio n cap abl e of mor e tha n one
interpretation. For trademark purposes, a double entendre is an expression that has a double
con not ati on or sig ni? can ce as app lie d to the goo ds or serv ices . The mar k that com pri ses the
double ente ndre will not be refu sed regi stra tion as mere ly desc ript ive if one of its mea nin gs is
not mer ely desc ript ive in rela tion to the goo ds or serv ices . TM EP § 1213 .05( c). As a resu lt, if
dissection of the App lic ant ‘s mar k by the Exa min ing Att orn ey is prop er, App lic ant resp ectf ully
reques ts rec ons ide rat ion of the refu sal to regi ster the App lic ant ‘s GR EE NL IC L mar k as
descriptive, as the mar k has seve ral mea nin gs that are not mer ely desc ript ive in rela tion to the
speci?ed goods.
Applicants GREENLICL Mark is Unique and Unusual
. .t
Although the Examining Attorney has viewed the mark as a combination of the terms
AA .azwhvwiw. “1.4
GREEN and LIC L, the com bin ati on is uni que and unu sua l. App lic ant is una war e of and has not
been presented by the Examin ing Att orn ey wit h any ins tan ce in whi ch the se ter ms hav e bee n
used in com bin ati on. Fur the rmo re, the re is no evi den ce tha t the ter ms hav e bee n use d in the
HOUSTONZ3764M.2 r ~3
unique and unusual combination as in Applicants GREENLICL mark, as further illustrated by
the results of a Google search engine search for the term GREENLICL (See Exhibit 8, attached).
The Applicant’s combination of the terms GREEN and LICL results in a unitary mark that is
visually and phoneticaliy unique and unusual and may adequately serve as an indicator of the
origin of the specified 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
y 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 , mere ly sugg esti ve. Eve n ass umi ng that the term GRE EN has a mea nin g with in the
I electricity and energy indu stri es, it doe s not foll ow, how eve r, that the mar k in its enti rety , that is
GREENLICL, 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 con curr ent has a mea nin g in the com put er ?eld , CON CUR REN T TEC HNO LOG IES
CORP. is not merely descriptive of printed electronic circuit boards). Rather, the determination
of whe the r a mar k is mer ely desc ript ive mus t be mad e in rela tion to the goo ds or serv ices for
which registration is sou ght , not in the abst ract . See In re Oma ha Not I Cor p, 819 F.2 d 111 7, 2
U.S.P.Q.2 d 185 9 (Fed . Cir. 198 7); In re Abc or Dev elo pme nt Cor p, 588 F.2 d 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).
-4-
HOUSTON2376414.2
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
established meaning within the industrial chemical industry. The Examining Attorney provided
the Applicant with over forty (40) pages of website printouts that “show the importance of
‘GREEN’ processes and technologies to purchasers. . .” However, neariy each of the website
printouts refers to “GREEN POWER,” and further defines “GREEN POWER” as “electricity
produced from solar, wind, geothermal, biogas, biomass, and low-impact small hydroelectric
sources.” Although this evidence arguably suggests a particular 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, GREENLICL, the term GREEN does not describe an ingredient, quality, characteristic,
function, feature, purpose, or use of the speci?ed goods. As a result, the Applicant’s mark is not
descriptive of industrial chemicals.
Applicant’s Goods are Not “Green” as De?ned by the Examining Attorney
The Examining Attorney indicated that Applicant’s Website states that Applicant utilizes
“green” technology to manufacture its products. The Applicant reSpectfully disagrees with this
interpretation as the Applicant’s website merely states that “Simboi is an early stage company
commercializing zero waste, zero carbon footprint production processes . . .” The Applicant’s
website does not include the term GREEN, nor does it describe its products or processes as
“environmentally friendly” or “environmentally safe.” The statement by the Applicant on its
.mammnm .xr
website merely descri bes the man ner in whi ch var iou s port ions of its che mic als are pro duc ed and
states 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 Examining Att orn eys logi c, the ter m GR EE N will alw ays be desc ript ive if it is inc orp ora ted
HOUSTON23764I4.2 -S«
into a mar k if eve n the mos t rem ote con nec tio n can be dra wn to the env iro nme nt. Und er the
Examining Att orn ey’ s logi c, the fol low ing regi ster ed, all owe d, pub lis hed , or app rov ed for
publication marks are arguably merely descriptive:
GREENBUILD, U.S. Registration No. 2,833,369
GREEN-LDC, US. Registration No. 3,292,147
GREENSHIELD, US. Serial No. 77/978,674
GREENDEED, US. Serial No. 77/880,197
GREENSHIELD, U.S. Serial No. 77/666,235
GREENPAC, U.s. Registration No. 77/740,006
GREENFRAC, U.S. Serial No. 77/874,498
GREENFAB, U.S. Seriai No. 77/846,570
GREENGANIC, US. Registration No. 3,758,823
GREENFIELD, US. Serial No. 77/802,711
GREENSORB, U.S. Serial No. 77/769,825
GREENBID, US. Serial No. 77/746,495
GREENBID, US. Serial No. 77/746,487
GREENKURB, U.S. Serial No. 77/716,992
GREENLIGHTAC, U.S. Serial No. 77/674,814
HOUSTON2376414.2 -6~
GREENTEC FUELS, U.S. Registration No. 3,688,670
GREENSHIELD, US. Serial No. 77/663,830
GREENTREC, U.S. Registration No. 3,726,561
GREENIDEA, US. Registration No. 3,675,754
GREENCURB, U.S. Serial No. 77/625,182
GREENSPEED, US. Serial No. 77/544,229
GREENTEC, U.S. Registration No. 3,659,830
GREENSHIELD, U.S; Registration No. 3,661,424
GREENBUILD SOLUTIONS, U.S. Registration No. 3,496,706
GREENPICNIC, U.S. Registration No. 3,441,629
GREENGRID, US. Registration No. 2,802,851 r
GREENSPEC, U.S. Registration No. 2,536,079
(Exhibit C, attached).
The Exa min ing Atto rney indi cate s that evid ence atta ched to the Of? ce Acti on supp orts a
determination that green technology is important to a signi?cant portion of relevant consumers
. ,
purchasi ng deci sion s. The Exa min ing Atto rney stat es that “Th e evid ence cons ists of thir d-pa rty
…_u…_l_u__:;._._.,.s_._.s.,..a_..
registrations for chemic als that sho w a dis cla ime r of ‘GR EEN ‘. . . How eve r, eac h of the thir d
party regi stra tion s cite d by the Exa min ing Att orn ey con tai n com pou nd wor d mar ks that con tai n
HOUSTON2376414.2 -7-
the word GRE EN in comb inat ion with at leas t one othe r word . Wit h each of thes e thir d-pa rty
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 GREENLICL 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
ll
green processes to manufacture battery chemicals. . . Applicant wishes to note that the
Applicant’s application for the GREENLICL mark covers “industrial chemicals” in International
Class 001, and is not rest rict ed to bat tery chem ical s” as indi cate d by the Exa min ing Atto rney .
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 che mic als . The App lic ant has pro vid ed the fol low ing des cri pti on in an effo rt to
bri e?y des cri be the pro ces s by whi ch the App lic ant obta ins port ions of its indu stri al che mic als .
Jtn-1,444,lu._n.wi. : ,
Geothermal pow er plan ts bri ng sili ca, lith ium, zinc , man gan ese , and oth er val uab le mate rial s in a
hot stew of brine from 10, 000 feet und erg rou nd to the ear th’ s sur fac e, the n inj ect the m bac k
HOUSTON23764I4.2 ~8-
down. Applicant uses offthe~shelf nane?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 chloride? 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
chloride, however, the mark covers “industrial chemicals” in International Class 001, and is not
restricted to “lithium chloride.” 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 de?ned 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 Applicants 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 chem ical s for the manu fact ure of batt erie s.” Appl ican t agai n wou ld like to clar ify that
it does not believe that it uses “green processes” as. de?ned by the Examining Attorney.
Furthermore, Applicant respectfully disagrees with the Examining Attorney that the wording in
the identi?cation of goods must be amended. The Applicant selected the identi?cation of goods,
HOUSTONZ3764I42 -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 lD 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
identification 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 GREENLICL mark,
and thus, has not considered the GREENLICL mark in its entirety and has not examined the
commercial impression of the GREENLICL mark as a whole. The Applicant’s GREENLICL
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 (713)-221-1383. I
HOUSTON2376414.2 10
Respectfully submitted,
BRACEWELL &_ GIULIANI LLP
7} 1 Louisiana, Suite 2300
Houston, Texas 77002
Phone: 713/221-1383, Fax: 713/222-3221
E-mailz zm;[email protected]
H0USTON2376414.2 4 1-