UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/406829
APPLICANT: Unichema Chemie BV
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CORRESPONDENT ADDRESS: PAUL W. KRUSE PILLSBURY WINTHROP LLP 1600 TYSONS BOULEVARD MCLEAN, VIRGINIA 22102
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom115@uspto.gov
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MARK: CLARUS
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CORRESPONDENT’S REFERENCE/DOCKET NO: 90128/291280
CORRESPONDENT EMAIL ADDRESS:
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Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/406829
This letter responds to the applicant's Request for Reconsideration filed on August 25, 2003.
The applicant has (1) filed a Notice of Appeal; (2) requested reconsideration of the final refusal under Section 2(d) of the Trademark Act. Action on the appeal is suspended and the file has been remanded to the undersigned examining attorney.
The examining attorney has considered the applicant’s arguments carefully but has found them unpersuasive. For the reasons below, the request for reconsideration is denied.
Registration was refused under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration No. 2339203 as to be likely, when used with the identified services, to cause confusion, or to cause mistake, or to deceive.
The applicant has argued that the marks are not confusingly similar because the applicant’s mark begins with the letter “c” whereas the registrant’s mark begins with the letter “k.” The examining attorney does not agree. The marks are phonetic equivalents. The goods sound exactly the same to consumers discussing or calling for the goods. Additionally, the other five letters in each of the marks are exactly the same and appear in the exact same order.
The applicant has also argued that the goods are not similar because the products in which the chemicals are used are different. The argument is unpersuasive. The fact that the goods of the parties differ is not controlling in determining likelihood of confusion. The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source of those goods. See In re Rexel Inc., 223 USPQ 830, 831, (TTAB 1984), and cases cited therein; TMEP §§1207.01 et seq. The examining attorney attached to the Final Office action evidence from the websites of the applicant and the registrant which indicates that the applicant manufactures goods of the same sort as that offered by the registrant and that the registrant manufactures goods of the same sort as that offered by the applicant. This evidence indicates that consumers are likely to be confused as to the source of the goods since manufacturers do produce goods of the same sort as those offered by both the applicant and the registrant. Additionally, the examining attorney refers to the excerpted evidence from the LEXIS/NEXIS research database from the NEWS library and ALLNEWS file which indicates that the applicant does offer chemicals for use in the manufacture of “lubricants.”
Further, the examining attorney must determine whether there is a likelihood of confusion on the basis of the goods identified in the application and registration. If the cited registration describes the goods broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, it is presumed that the registration encompasses all goods of the type described, that they move in all normal channels of trade, and that they are available to all potential customers. In re Elbaum, 211 USPQ 639 (TTAB 1981). TMEP §1207.01(a)(iii). The cited registration indicates that its goods are used for “lubricants.” There is no indication in the cited registration as to the nature of the “lubricants.” The identification of goods in the cited registration could encompass goods such as “personal lubricants” which are related to the “personal care products” in the applicant’s identification of goods.
For the reasons stated above, the request for reconsideration is denied and the final refusal to register the applicant’s mark is maintained. The applicant’s file will be returned to the Trademark Trial and Appeal Board and appeal proceedings will be resumed in due course.
/Michael Souders/
Trademark Attorney
Law Office 115
ecom115@uspto.gov
(703) 308-9115 ext. 208
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SEND TO: SOUDERS, MICHAEL
TRADEMARK LAW LIBRARY
2101 CRYSTAL PLAZA ARC
MAILBOX 314
ARLINGTON, VIRGINIA 22202-4600
MAIL-IT REQUESTED: OCTOBER 27, 2003 10083K
CLIENT: MS
LIBRARY: NEWS
FILE: ALLNWS
YOUR SEARCH REQUEST AT THE TIME THIS MAIL-IT WAS REQUESTED:
UNICHEMA AND LUBRICANT*
NUMBER OF STORIES FOUND WITH YOUR REQUEST THROUGH:
LEVEL 1... 106
LEVEL 1 PRINTED
THE SELECTED STORY NUMBERS:
3,5-6,23,75,81,90
DISPLAY FORMAT: 30 VAR KWIC
SEND TO: SOUDERS, MICHAEL
TRADEMARK LAW LIBRARY
2101 CRYSTAL PLAZA ARC
MAILBOX 314
ARLINGTON VIRGINIA 22202-4600
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Copyright 2002 Financial Times Information
All rights reserved
Global News Wire - Asia Africa Intelligence Wire
Copyright 2002 Kasturi & Sons Ltd (KSL)
Business Line
May 12, 2002
FT-ACC-NO: A2002051313A-D1F-GNW
LENGTH: 668 words
HEADLINE: SPECIALTY CHEMICALS -- MNC EQUATIONS: MANY OF THE MULTINATIONALS HAVE HAD TO RESTRUCTURE THEIR INDIAN OPERATIONS ON THE LINES OF DIVESTURES, MERGERS OR ACQUISITIONS EFFECTED BY THEIR PARENTS ABROAD
BODY:
Globally, Uniqema was formed in January 1999 with the merger of five ICI Group businesses - ICI Surfactants, ICI Synthetic Lubricants, Unichema, Solaveil and Mona Industries. The division is in the businesses of surfactants, specialty performance chemicals and oleochemical derivatives. In India, Uniqema caters to segments as varied as textiles, fibre processing, health and personal care, lubricants, polymerisation, resin emulsification, crop protection and so on. The manufacturing unit and Research and Technology Centre are located at Thane near Mumbai, one of the 21 manufacturing sites for Uniqema around the globe.
Synetix, the new business name for ...
... organisations of ICI Katalco, which makes up more than half of Synetix; Tioxide's Vertec, including organo-metallic catalysts as well as chemicals for inks and coatings; Tracerco's measurement and diagnostics service based on radioisotope technology; Crosfield's catalyst activities and Unichema's oils and fats catalyst business. Synetix is a global business for ICI with 1,000 customers in over 70 countries. With R&D centred in the UK, production is concentrated in Germany, India and the UK.
On the other hand, ...
SUBJECT:
... 90%); MISC CHEMICAL PRODUCTS MFG (90%); MFG FACILITIES (90%); OILS & FATS (87%); DYES & PIGMENTS (78%); FOOD & BEVERAGE INDUSTRY (78%); RESEARCH & DEVELOPMENT (78%); BIOTECHNOLOGY (78%); ENTERPRISE GLOBALIZATION (78%); GLOBALIZATION (78%); INDUSTRIAL LUBRICANTS (73%); AGRICULTURAL CHEMICALS (73%); CHEMICAL ALCOHOLS (73%); BASIC INORGANIC CHEMICALS MFG (71%); RADIOACTIVE COMPOUNDS MFG (71%);
Copyright 2001 Gale Group, Inc.
ASAP
Copyright 2001 Schnell Publishing Company, Inc.
Chemical Market Reporter
December 17, 2001
SECTION: No. 23, Vol. 260; Pg. 35; ISSN: 1092-0110
IAC-ACC-NO: 81007523
LENGTH: 1326 words
HEADLINE: Chemical Profile; glycerine market information; Statistical Data Included
BODY:
... producer, High Plains Corp., announced plants to install a 10-million-pound- per-year glycerine recovery unit at its ethanol plant in Colwich, Kan. But earlier this year, this project too was put on indefinite hold.
Unichema International was acquired by ICI in May 1997 as part of its acquisition of Unilever's specialty chemicals businesses. Its name was changed to Uniqema on January 1, 1999, and became part of a new ICI business, the Uniqema Group. Uniqema also includes ICI surfactants and synthetic lubricants, Mona Industries and Solaveil.
The Unilever glycerine and surfactants plant at Hammond, Ind., operates as part of its Lever Brothers Company subsidiary.
In 1999, Crompton & Knowles and Witco merged to form CK Witco. The company was renamed Crompton Corp. in ...
... soap products, 23 percent; oral care products (toothpaste and mouthwash), 17 percent; tobacco, 11 percent; polyether polyols for urethanes, 8 percent; drugs, 7 percent; miscellaneous, including cellophane, explosives and miscellaneous plasticizer, humectant and lubricant uses, 7 percent; alkyd resins, 3 percent;
STRENGTH
The market sector for personal care products is growing at 3.5 percent annually as an aging baby-boom generation consumes more skin care creams. The strong ...
... Memphis, Tenn. 30
Total 557
Demand (Millions of pounds)
1996 420
1997 400
1998 385
1999 427
2000 453
Note: Table made from bar graph
Miscellaneous, including collophane,
explosives and miscellaneous
plasticizer, humectant and lubricant
uses 7%
Alkyd resins 3%
Food products 24%
Personal care products, including skin
and hair and soap products 23%
Oral care products 17%
Tobacco 11%
Polyester polyols for urethanes 8%
Drugs 7%
...
SUBJECT:
... MFG (90%); SOAPS & DETERGENTS (89%); COSMETICS & TOILETRIES COMPANIES (89%); PETROLEUM REFINERIES (89%); OIL & GAS INDUSTRY (89%); PETROLEUM & COAL PRODUCTS MFG (89%); DIVESTITURES (78%); COSMETICS & TOILETRIES (78%); TOILET SOAPS (78%); INDUSTRIAL LUBRICANTS (78%); FOOD & BEVERAGE INDUSTRY (78%); STATISTICS (61%);
Copyright 2001 Gale Group, Inc.
Business and Industry
Copyright 2001 Chemical Week Associates
Chemical Specialties
November 2001
SECTION: Vol. 3, No. 7; Pg. 28(3)
RDS-ACC-NO: 03193956
LENGTH: 890 words
HEADLINE: Putting the pieces together: Uniqema CEO Len Berlik is building one business from five. CS London correspondent Scott Morrison recently met with him to discuss his organizing principle as well as his long term strategies and expectation for growth. (CS Interview)
CS: What's the origin of businesses that belong to Uniqema?
LB: We are built of five businesses: The Unichema business of Unilever, ICI Synthetic Lubricants, ICI Surfactants, Solaveil, which is sunscreen ingredients, and Mona Industries, which ICI acquired as the business was being formed.
CS: You have put together ten business principles that cover every thing from safety to collaborative work to having a positive attitude and aiming high. Is this basic ...
... focus in fast growing segments. A prime example is skin care and sun care ingredients. With the baby boomers and the ageing population, there are certain segments there that are growing well over GDP, so that's where we're putting our chips. Another example is synthetic lubricants--there's a segment that's growing at almost double GDP. Then there's innovative technology. If you don't have a good innovation pipeline, you're not going to be a top player in specialty chemicals right now. There is also geographic expansion. Twenty percent of Uniqema's ...
... rate. Its first years of existence Uniqema hit the 10% mark. This year is proving to be more challenging.
CS: What are your best innovations?
LB: This is not a business that lends itself to big blockbusters. Some of the projects we're most proud of are in the lubricant area. Some that get refrigerators to unprecedented levels of efficiency. We've got some interesting new technologies for the automotive industry for continuous variable transmission (CVT) where you need a lubricant that aim provides friction. Then there is Promidium 2 in personal care. It's a cleansing ingredient for shampoos and soaps replacing D.E.A. type materials. There is Arlatone Versaflex, a stabilising ingredient for personal care. One we like to talk ...
SUBJECT: All company; All product and service information; Corporate strategy; Financial data; Product development COSMETICS & TOILETRIES COMPANIES (90%); PACKAGED GOODS INDUSTRY (90%); COMPANY STRATEGY (90%); INDUSTRIAL LUBRICANTS (89%); ENTREPRENEURSHIP (78%); INTERNATIONAL ECONOMIC ORGANIZATIONS (69%); ECONOMIC NEWS (69%); AGING (50%);
Copyright 1999 Chemical Week Associates
Chemical Week
July 21, 1999
SECTION: NEWSBRIEFS; The Week; Pg. 7
LENGTH: 81 words
HEADLINE: ICI Restructures Uniqema
BODY:
ICI is reorganizing its Uniqema specialties subsidiary into 10 business units, integrating the five businesses that were combined last year to form Uniqema: ICI Surfactants, ICI Synthetic Lubricants, Mona Industries, Solaveil, and Unichema. The new units are lubricants, personal and health care, polymers, process intermediates, crop protection, oil field chemicals, cleaning products, food emulsifiers, polymer additives, and textiles. Uniqema has sales of more than $1 billion.
SUBJECT: INDUSTRIAL LUBRICANTS (91%);
COMPANY: ICI SURFACTANTS ICI SYNTHETIC LUBRICANTS MONA INDUSTRIES (67%);
Copyright 1997 AAP Information Services Pty. Ltd.
AAP Company News
May 07, 1997 07:86
SECTION: Part 3 of 7
ANNOUNCEMENT: GENERAL
LENGTH: 818 words
HEADLINE: ICI AUST LTD - ICI PLC BUYS UNILEVER CHEMICALS
DATELINE: SYDNEY
BODY:
... applied bioscience. It serves customers in the
household, personal care and food and beverage sectors. In 1996,
Quest had revenues of Pds/stg 696 million and operating profit of
Pds/stg 69 million. Quest is headquartered in the Netherlands.
. The Unichema business is one of the world's leading producers of
oleochemicals (commonly called fatty acids). It has also built a
specialties business that develops value added fatty acid
derivatives for use in personal care, polymers and synthetic
lubricants, complementary with ICI's existing businesses. In 1996,
Unichema had revenues of Pds/stg 476 million and operating profit of
Pds/stg 43 million. Unichema is headquartered in the Netherlands.
. Crosfield is a major manufacturer of premium products, including
silicates, zeolites and silicas for use in detergents, personal
care, beverages, paper and coatings and a manufacturer of catalysts
derived from silica and alumina. In 1996, ...
... Specialty Chemicals businesses have experienced and
international management teams with outstanding track records of
financial performance and growth.
The successful Specialty Chemicals management teams will continue to
manage their businesses. Integration with the existing ICI
businesses will centre on combining Unichema and ICI's Performance
Chemicals business.
The acquisition adds to ICI's growing cadre of entrepreneurial
managers.
Mr James A Kennedy, President and CEO of National Starch, has
accepted an invitation to join the Board of ICI on completion.
MOVING ICI TO THE LIGHTER ...
SUBJECT:
... 90%); COMPANY EARNINGS (90%); COSMETICS & TOILETRIES COMPANIES (90%); PACKAGED GOODS INDUSTRY (90%); PROFITS (90%); ADHESIVES & SEALANTS (78%); FOOD & BEVERAGE INDUSTRY (78%); ENTREPRENEURSHIP (78%); BEVERAGE INDUSTRY (77%); MARKET SEGMENTATION (77%); INDUSTRIAL LUBRICANTS (75%); FOOD ADDITIVES (67%); BASIC ORGANIC CHEMICALS MFG (64%); OLEOCHEMICALS MFG (64%);
Copyright 1997 AFX News Limited
The Regulatory News Service
February 11, 1997 Tuesday
LENGTH: 9520 words
HEADLINE: Unilever PLC - 4th Qtr & Final Rslts-Amendmt
... innovation and the new organisation, will enable us to improve profitability further in 1997."
UNILEVER SPECIALITY CHEMICALS Unilever today announced it intends to sell its international Speciality Chemicals businesses -- National Starch and Chemical Company, Quest International, Unichema International and Crosfield -- as part of the strategic development of its portfolio. See attached announcement for details.
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UNILEVER RESULTS
Fourth Quarter 1996 Full Year Final Dividends
----------------------------------------------------------------
Full Year 1996
Financial Results
Sales rose by 8%, at ...
... rates ** at average exchange rates current in each year
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UNILEVER TO SELL SPECIALITY CHEMICALS BUSINESSES
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Unilever announced today that it intends to sell its international speciality chemicals businesses -- National Starch and Chemical Company, Quest International, Unichema International and Crosfield -- as part of the strategic development of its portfolio.
Commenting on the intention, Unilever chairman Niall FitzGerald said: "A sale of our speciality chemicals businesses would enable Unilever to concentrate resources on achieving superior long-term growth in our ...
... Company: a worldwide producer of industrial adhesives, resins and speciality chemicals, and speciality starches, with headquarters in the United States;
Quest International: one of the world's leading companies in fragrances as well as food flavour and ingredients,with headquarters in the Netherlands;
Unichema International: a global leader in speciality oleochemicals and nickel catalysts, with headquarters in the Netherlands; Crosfield: a major international producer of inorganic chemicals based upon silica and alumina, with headquarters in the United Kingdom.
The operations had a combined ...
... use in a wide range of consumer goods, such as prestige fragrances, personal and oral care products, household products and air fresheners, soaps and detergents. The group employs some 4,400 people, and operates from its global headquarters in Naarden, the Netherlands.
Unichema International is one of the world's largest manufacturers of oleochemicals which are derived from processing natural oils and fats such as palm oil, coconut oil and tallow. Speciality derivatives have a variety of applications from lubricants to ingredients in polymers and cosmetics products such as soaps, skincare and shampoos. Unichema is also a leading supplier of catalysts for the hardening of edible oils and fatty acids. Unichema's headquarters are in Gouda, the Netherlands. It employs approximately 1,600 people worldwide.
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Crosfield creates unique particles derived from naturally abundant silica and alumina. Through manipulation of size, structure and surface character, novel ingredients and processing aids are ...
Copyright 1996 Crain Communications Inc.
Rubber and Plastics
February 12, 1996
SECTION: People; Pg. 11
HEADLINE: CRI-TECH, CRI-SIL MAKE EXEC CHANGES
... executive vice president of Cri-Sil, will assume day-to-day management of that company.
Us Unlimited is a new collaboration of investors and managers, and includes Cri-Tech, Cri-Sil and Emerson & Cuming Composite Materials Inc. of Canton, Mass.
Unichema appoints marketing manager
CHICAGO-Unichema North America has named Robert A. Nosal as marketing manager of its specialty chemicals division.
Nosal is responsible for the day-to-day business activities of all Unichema's full line of specialty chemical products and synthetic lubricants within North America, including those produced and imported from other Unichema operations.
Prior to joining Unichema, Nosal spent the past 18 years working in various manufacturing and marketing positions within the specialty chemicals industry.
The executive holds a master's degree in business administration from the Babcock School of Management at Wake Forest and a ...
SUBJECT: executive action CHEMICAL INDUSTRY (91%); ENGINEERING (90%); MARKETING (87%); APPOINTMENTS (78%); RUBBER ( 75%); COMPOSITE MATERIALS (72%); ECONOMIC NEWS (70%); IMPORT TRADE (70%); TIRE MANUFACTURING (69%); INDUSTRIAL LUBRICANTS (66%); CUSTOMER SERVICE (62%);
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SEND TO: SOUDERS, MICHAEL
TRADEMARK LAW LIBRARY
2101 CRYSTAL PLAZA ARC
MAILBOX 314
ARLINGTON, VIRGINIA 22202-4600