Notation to File

NOTE TO THE FILE

SERIAL NUMBER:            88170747

DATE:                                12/06/2019

NAME:                               mrademacher

NOTE:  

From: Rademacher, Mark
Sent: Wednesday, December 4, 2019 6:39 PM
To: Donaldson, Kirsten E. <Kirsten.Donaldson@gpmlaw.com>
Subject: RE: RT (Ser. No. 88170747)

 

Dear Kirsten,

 

I’m sorry, but recovery is different than recycling.  Recovery is just the collection of refrigerant.  Recycling is reuse of the refrigerant.  Again, distinct processes.

 

http://www.phaseoutfacts.org/common+recovery+methods+explained.aspx

http://www.hvacknowitall.com/blogs/blog/187768-refrigerant-recovery#.XehCrCNKiF4

 

The identification can only be narrowed or limited, not broadened or otherwise changed in scope. 

 

Thank you,

Mark Rademacher

 

From: Donaldson, Kirsten E. <Kirsten.Donaldson@gpmlaw.com>
Sent: Wednesday, December 4, 2019 6:03 PM
To: Rademacher, Mark <Mark.Rademacher@USPTO.GOV>
Cc: Donaldson, Kirsten E. <Kirsten.Donaldson@gpmlaw.com>
Subject: RE: RT (Ser. No. 88170747)

 

Dear Mark,

 

Many thanks again for talking just now.  I’ve kept digging and it looks like a synonym for recycle according to Merriam Webster is “recover” (see http://www.merriam-webster.com/thesaurus/recycle).  It also looks like “recovery” more squarely describes the services of my client (for instance, one testimonial states, “We’ve been working with Reclamation Technologies, since our first recovery cylinder we purchased. They have always been fair and delivered on all their promises. ---Gilbert Mechanical (Edina, MN)”).  Accordingly, do you think a goods and services amendment of the following might work since it is no broader than “recycling”?

 

Class 040: Material treatment and recycling services, namely, recycling recovery of refrigerant gases.

 

Many thanks.

 

Best,

Kirsten

 

 

Kirsten Donaldson Special Counsel Gray Plant Mooty 500 IDS Center 80 South Eighth Street
Minneapolis, MN  55402
Direct: 612.632.3461 | Fax: 612.632.4461
Kirsten.Donaldson@gpmlaw.com
www.gpmlaw.com
Lathrop GPM coming 1.1.2020! Click here to learn more

This e-mail (including any attachments) may contain material that (1) is confidential and for the sole use of the intended recipient, and (2) may be protected by the attorney-client privilege, attorney work product doctrine or other legal rules. Any review, reliance or distribution by others or forwarding without express permission is strictly prohibited. If you are not the intended recipient, please contact the sender and delete all copies.

From: Rademacher, Mark <Mark.Rademacher@USPTO.GOV>
Sent: Wednesday, December 4, 2019 3:39 PM
To: Donaldson, Kirsten E. <Kirsten.Donaldson@gpmlaw.com>
Subject: RE: RT (Ser. No. 88170747)

 

External Email

 

---

Dear Kristen,

 

The proposed amendment is beyond the scope of the original identification.  Specifically, as indicated in the final Office action, refrigerant reclamation is a distinct process from refrigerant recycling.  The resulting products of the processes are used differently.  Recycled refrigerant is limited to use within the same system.  Reclaimed refrigerant may be used in a system different from which it came.  The two processes are also regulated differently. 

 

The applicant will need to provide a specimen showing use of the mark in connection with refrigerant recycling.  As you know the applicant also has the option of amend the filing basis to a Section 1b filing basis. 

 

Regards,

Mark Rademacher

(571) 272-9723

 

From: Donaldson, Kirsten E. <Kirsten.Donaldson@gpmlaw.com>
Sent: Wednesday, December 4, 2019 4:04 PM
To: Rademacher, Mark <Mark.Rademacher@USPTO.GOV>
Cc: Donaldson, Kirsten E. <Kirsten.Donaldson@gpmlaw.com>
Subject: RT (Ser. No. 88170747)

 

Dear Mark,

 

I write with regard to the mark RT (Ser. No. 88170747), as the deadline to respond to the Office Action on the RT application is December 17, 2019. 

 

We believe that a slight change to the goods and services along the lines of the following may the best path forward, but please let me know if you agree with this approach.  Ideally, we can resolve the issue raised in the Office Action through an examiner’s amendment.

 

The Office Action states that “Registration is refused because the specimen does not show the applied-for mark in use in commerce in connection with any of the services specified in International Class(es) 40 in the application.  Specifically, the specimens of record only show use of the mark with refrigeration reclamation services…” 

 

Accordingly, we are wondering if the following amendments to the Class 40 goods and services description would be acceptable to you:

 

Class 040: Material treatment and recycling reclamation services, namely, recycling reclamation of refrigerant gases.

 

Many thanks for your consideration.  I’d be glad to discuss as well if that is easier.

 

Best regards,

Kirsten

 

 

Kirsten Donaldson Special Counsel Gray Plant Mooty 500 IDS Center 80 South Eighth Street
Minneapolis, MN  55402
Direct: 612.632.3461 | Fax: 612.632.4461
Kirsten.Donaldson@gpmlaw.com
www.gpmlaw.com
Lathrop GPM coming 1.1.2020! Click here to learn more

This e-mail (including any attachments) may contain material that (1) is confidential and for the sole use of the intended recipient, and (2) may be protected by the attorney-client privilege, attorney work product doctrine or other legal rules. Any review, reliance or distribution by others or forwarding without express permission is strictly prohibited. If you are not the intended recipient, please contact the sender and delete all copies.