Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 07/31/2017)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 86651083 OLIN(Standard Characters, see ) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Applicant respectfully requests reconsideration of the refusal of registration on the ground that OLIN is primarily merely a surname.  The term OLIN has many meanings.  While it is a surname, this is not its primary meaning.  The primary meaning of the term OLIN to most consumers is to identify applicant, Olin Corporation, which is a well-know, publicly traded company, listed on the NYSE since 1917 under the ticker symbol OLN, and listed on the Fortune List of 1000 largest companies. See McIntosh Decl., Paragraph 1.  Olin Corporation has approximately 6,000 employees (See McIntosh Decl., Paragraph 2), and $2.2 billion in revenue form sales of ammunition and chemicals (See McIntosh Decl., Paragraph 3).  Olin has been in the chemical business for more than 60 years, since the formation of Olin-Mathieson in 1954 (See McIntosh Decl., Paragraph 4), and has been producing the some of the chemicals listed in the description of goods for more than 100 years (See McIntosh Decl., Paragraph 5).  Olin has been manufacturing and selling many of the goods listed in the application for at least ten years (See McIntosh Decl., Paragraph 6), and in fact is the largest supplier of chlorine and caustic soda, and the second largest supplier of potassium hydroxide, in North America (See McIntosh Decl., Paragraph 7).

As a result of a merger that made national news, Olin will begin selling the rest of the goods listed in the application, most of which are derivatives of the products that Olin has long been selling.  See McIntosh Decl., Paragraph 8. 

Olin also owns several registrations on OLIN, including 659503, 848870, 1468218, and 3414111.

Because of the long existence of OLIN corporation, OLIN's sixty year history of using the OLIN trademark in the chemical industry, the primary significance of OLIN in this country is to identify applicant and its products.  For this reason, applicant respectfully submits that the refusal of registration should be withdrawn.

 

EVIDENCE
Evidence in the nature of The Declaration of John McIntosh. has been attached.
Original PDF file:
evi_6325422234-20160225112657351957_._Declaration_for_OLIN__Executed_.PDF
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 001 for Chlorine; hydrochloric acid; potassium hydroxide; sodium hydroxide; sodium hypochlorite; hydrogen; sodium chloride; sulfuric acid; ethylene dichloride; vinyl chloride monomer; acetone; cumene; phenol; allyl chloride; epichlorohydrin; bisphenol A; novolac resins; epoxy resins; epoxy novolac resins; amine-based hardeners; polyphenolic-based hardeners; chlorinated hydrocarbons; chemical products for industrial purposes; synthetic resins; chlorinated organic chemicals; and chlorinated solvents
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Chlorine; hydrochloric acid; potassium hydroxide; sodium hydroxide; sodium hypochlorite; hydrogen; sodium chloride; sulfuric acid; ethylene dichloride; vinyl chloride monomer; acetone; cumene; phenol; allyl chloride; epichlorohydrin; bisphenol A; novolac resins; unprocessed synthetic novolac resins; epoxy resins; unprocessed epoxy resins, including unprocessed liquid epoxy resins and unprocessed advanced epoxy resins; epoxy novolac resins; unprocessed epoxy novolac resins; amine-based hardeners; amine-based hardeners, namely chemical additives for resins; polyphenolic-based hardeners; polyphenolic-based hardeners, namely chemical additives for resins; chlorinated hydrocarbons; chemical products for industrial purposes; synthetic resins; unprocessed synthetic resins; chlorinated organic chemicals; chlorinated organic chemicals for use in industry; and chlorinated solvents; chlorinated inorganic chemicals for use in industry, and chemical preparations, namely chlorinated solvents for industrial and commercial useClass 001 for Chlorine; hydrochloric acid; potassium hydroxide; sodium hydroxide; sodium hypochlorite; hydrogen; sodium chloride; sulfuric acid; ethylene dichloride; vinyl chloride monomer; acetone; cumene; phenol; allyl chloride; epichlorohydrin; bisphenol A; unprocessed synthetic novolac resins; unprocessed epoxy resins, including unprocessed liquid epoxy resins and unprocessed advanced epoxy resins; unprocessed epoxy novolac resins; amine-based hardeners, namely chemical additives for resins; polyphenolic-based hardeners, namely chemical additives for resins; chlorinated hydrocarbons; chemical products for industrial purposes; unprocessed synthetic resins; chlorinated organic chemicals for use in industry; chlorinated inorganic chemicals for use in industry, and chemical preparations, namely chlorinated solvents for industrial and commercial use
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant hereby adds the following class of goods/services to the application:
New: Class 017 for semi-processed synthetic novolac resins; semi-processed epoxy resins including semi-processed liquid epoxy resins and semi-processed advanced epoxy resins; semi-processed epoxy novolac resins; semi-processed synthetic resins
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

FEE(S)
Fee(s) in the amount of $275 is being submitted.

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Bryan K. Wheelock/      Date: 02/25/2016
Signatory's Name: Bryan K. Wheelock
Signatory's Position: Attorney, Member Missouri Bar
Signatory's Phone Number: (314) 726-7505


Response Signature
Signature: /Bryan K.Wheelock/     Date: 02/25/2016
Signatory's Name: Bryan K. Wheelock
Signatory's Position: Attorney, Member Missouri Bar

Signatory's Phone Number: (314) 726-7505

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
RAM Sale Number: 86651083
RAM Accounting Date: 02/25/2016
        
Serial Number: 86651083
Internet Transmission Date: Thu Feb 25 12:42:33 EST 2016
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2016022512423326
9679-86651083-550e0ea6924345fce9f72043f8
b523fe50456ed61df52977faa98823478d619-DA
-15322-20160225112657351957