NOTE TO THE FILE
SERIAL NUMBER: 79189411
DATE: 12/15/2016
NAME: crinaldi
NOTE:
From: Scott Havlick [mailto:SHavlick@hollandhart.com]
Sent: Wednesday, December 14, 2016 6:25 PM
To: Rinaldi, Cynthia <Cynthia.Rinaldi@USPTO.GOV>
Cc: Debbie Rickers <DRickers@hollandhart.com>; Sandy Thoele <SThoele@hollandhart.com>; Kazuyo Morita <KMorita@hollandhart.com>
Subject: REBOOT, U.S. Trademark Application Serial No. 79-189411 / HH ref: 92327.0002
Kazuyo is out today, but we have heard back from the client in response to your email with instructions on the goods identification issue you have raised.
Specifically, the client seeks to amend the current Class 17 identification as follows:
Non-metallic sealing caps; non-metallic sealing rings for use as connection seals; non-metallic sealing membranes, namely, insulating water proofing membranes; sealing materials, namely, non-metallic sealing strips; sealing materials, namely, non-metallic sealing profiles; sealing devices, namely,
in the nature ofnon-metalseals andsealing ringsorand non-metal flanges for use as connectionin creatingseals used to connect and sealbetweenpipesandto other surfacesand for plumbing and other pipe connections; sealing devices in the nature of the non-metal seals and sealing rings for metal and non-metal pipes connections
The resulting amended identification would then read:
Non-metallic sealing caps; non-metallic sealing rings for use as connection seals; non-metallic sealing membranes, namely, insulating water proofing membranes; sealing materials, namely, non-metallic sealing strips; sealing materials, namely, non-metallic sealing profiles; sealing devices, namely, non-metal sealing rings and non-metal flanges for use as connection seals used to connect and seal pipes to other surfaces; sealing devices in the nature of the non-metal seals and sealing rings for metal and non-metal pipes connections
Please let me know if this does not adequate address the issues you have raised below (I think it does). Otherwise, we will look for your Examiner’s Amendment implementing this change. Thank you.
Scott S. Havlick
Attorney for Applicant, Colorado Bar Member
Scott S. Havlick, PC | Holland & Hart LLP
1800 Broadway Suite 300, Boulder CO 80302 | tel: 303.473.2710 | fax: 303.473.2720
CONFIDENTIALITY NOTICE: This message is confidential and may be privileged. If you believe that this email has been sent to you in error, please reply to the sender that you received the message in error; then please delete this e-mail. Thank you.
From: Kazuyo Morita [mailto:KMorita@hollandhart.com]
Sent: Monday, November 21, 2016 3:34 PM
To: Cynthia.Rinaldi@USPTO.GOV
Cc: Debbie Rickers; Sandy Thoele
Subject: RE: 79/189,411 (REBOOT) / HH ref: 92327.0002
Dear Ms. Rinaldi,
Thanks very much for your email below. I have reached out to the applicant in New Zealand for their further instructions and confirmation that your suggested amendments are acceptable.
I will try to get back to you this week, but understand that if that is not possible, a formal Office Action will issue.
Thanks,
Kazuyo
Kazuyo Morita | Holland & Hart LLP
1800 Broadway Suite 300, Boulder CO 80302 | tel: 303.473.2701 | fax: 303.473.2720
CONFIDENTIALITY NOTICE: This message is confidential and may be privileged. If you believe that this email has been sent to you in error, please reply to the sender that you received the message in error; then please delete this e-mail. Thank you.
From: Rinaldi, Cynthia [mailto:Cynthia.Rinaldi@USPTO.GOV]
Sent: Sunday, November 20, 2016 2:25 PM
To: HH Docket
Subject: 79/189,411 (REBOOT)
Dear Mr. Morita,
Thank you for your response to Office action. I am writing this email as a courtesy because there remains an identification requirement, that if not resolved in the coming days, requires issuance of a Final action. In particular, the wording “sealing devices in the nature of non-metal seals and sealing rings or flanges for use in creating seals between pipes and surfaces and for plumbing and other pipe connections” is indefinite because the use of “or” and the vagueness of the term “other” (the type of pipe connection is required for purposes of definiteness).
In addition, it’s not clearly within scope of the original wording “sealing devices used to connect pipes to other surfaces” because the new wording includes “and surfaces” as well as structure that deemphasizes the connecting function of the seals. The following wording is an acceptable substitute, if accurate: “sealing devices, namely, non-metal sealing rings and non-metal flanges for use as connection seals used to connect pipes to other surfaces.”
Please let me know if you authorize this change or have any questions. Thank you for your time.
Best regards,
Cynthia
Cynthia Y. Rinaldi
Trademark Examining Attorney | Law Office 107 | 571-272-4685