NOTE TO THE FILE
SERIAL NUMBER: 88238874
DATE: 04/04/2019
NAME: dlee4
NOTE:
From: Davis, Govinda [mailto:Govinda.Davis@DINSMORE.COM]
Sent: Thursday, April 04, 2019 1:25 PM
To: Lee, Douglas (TM) <Douglas.Lee4@USPTO.GOV>
Subject: RE: Trademark Appl. SN 88238874 HALO
Thank you.
Kind regards,
Govinda
Govinda M. Davis
Attorney-at-Law
Dinsmore & Shohl LLP • Legal Counsel
255 East Fifth Street
Suite 1900
Cincinnati, OH 45202
T (513) 977-8200 • F (513) 977-8141E govinda.davis@dinsmore.com • dinsmore.com
From: Lee, Douglas (TM) <Douglas.Lee4@USPTO.GOV>
Sent: Thursday, April 4, 2019 1:17 PM
To: Davis, Govinda <Govinda.Davis@DINSMORE.COM>
Subject: RE: Trademark Appl. SN 88238874 HALO
Examiner's amendment will be issued and the application will be subsequently approved for publication in the Official Gazette.
Sincerely
/Douglas M. Lee/
Trademark Examining Attorney
Law Office 113
U.S. Trademark Office
571-272-9343
From: Davis, Govinda [mailto:Govinda.Davis@DINSMORE.COM]
Sent: Thursday, April 04, 2019 12:50 PM
To: Lee, Douglas (TM) <Douglas.Lee4@USPTO.GOV>
Subject: RE: Trademark Appl. SN 88238874 HALO
Thank you. Yes, please proceed with the changes via examiner’s amendment.
/Govinda M. Davis/
Govinda M. Davis
Attorney-at-Law
Dinsmore & Shohl LLP • Legal Counsel
255 East Fifth Street
Suite 1900
Cincinnati, OH 45202
T (513) 977-8200 • F (513) 977-8141E govinda.davis@dinsmore.com • dinsmore.com
From: Lee, Douglas (TM) <Douglas.Lee4@USPTO.GOV>
Sent: Thursday, April 4, 2019 12:42 PM
To: Davis, Govinda <Govinda.Davis@DINSMORE.COM>
Subject: RE: Trademark Appl. SN 88238874 HALO
It appears acceptable. If you would like me to issue an EA, let me know.
Sincerely
/Douglas M. Lee/
Trademark Examining Attorney
Law Office 113
U.S. Patent and Trademark Office
571-272-9343
From: Davis, Govinda [mailto:Govinda.Davis@DINSMORE.COM]
Sent: Thursday, April 04, 2019 12:36 PM
To: Lee, Douglas (TM) <Douglas.Lee4@USPTO.GOV>
Cc: Besl, April L. <april.besl@dinsmore.com>
Subject: RE: Trademark Appl. SN 88238874 HALO
Hello Mr. Lee:
Thank you for speaking with me on Tuesday. We have had the chance to discuss the identification of goods with our client and the intended products will be both chemicals and metals. Therefore, both Classes 01 and 06 should be included in the application. Hammond Group finds your suggested language accurate for the most part, but would like to make the following changes. Can you please advise whether the following will be acceptable?
Class 01: Chemicals in the nature of metallic particles and powered metals for use in the manufacture of lead acid batteries, lubricants, radiological personal protective equipment, X-ray shielding coatings, glass and ceramics, optical quality glass, anti-corrosive paints, weight balancing or counter balance devices, ammunition, explosives, propellants, pyrotechnics, electronic glass and ceramics, rubber, paste and polymer dispersions and metal containing chemicals, metal and metal alloy solders; Powdered metal oxides for use in the manufacture of lead acid batteries, lubricants, radiological personal protective equipment, X-ray shielding coatings, glass and ceramics, optical quality glass, anti-corrosive paints, weight balancing or counter balance devices, ammunition, explosives, propellants, pyrotechnics, electronic glass and ceramics, rubber, paste and polymer dispersions and metal containing chemicals, metal and metal alloy solders; Mixtures of powdered metal oxides for use in the manufacture of lead acid batteries, lubricants, radiological personal protective equipment, X-ray shielding coatings, glass and ceramics, optical quality glass, anti-corrosive paints, weight balancing or counter balance devices, ammunition, explosives, propellants, pyrotechnics, electronic glass and ceramics, rubber, paste and polymer dispersions, and metal containing chemicals, metal and metal alloy solders; Powdered metal oxides, and mixtures of powdered metal oxides all used in chemical reactions, chemical processes or electro-chemical systems
Class 06: Semi-wrought common metals in particle and powdered form, for further manufacture into parts made from compressed metal powders to be sintered, heat treated or machined; Semi-wrought common metals in particle and powdered form, for further manufacture into metal parts made from extruded metal powders to be sintered, heat treated or machined; Semi-wrought common metals in particle and powdered form, for further manufacture into metal parts made from 3D printed metal powders to be sintered, heat treated or machined; Semi-wrought common metals in particle and powdered form, for further manufacture into parts made from polymer or ceramic encapsulated metal powders; Semi-wrought common metals in particle and powdered form, for further manufacture into metal powder containing lubricants; Semi-wrought common metals in particle and powdered form, for further manufacture into metal powder containing propellants; Semi-wrought common metals in particle and powdered form, for further manufacture into metal powder containing explosives; Semi-wrought common metals in particle and powdered form, for further manufacture into metal powder containing pyrotechnics; Mixtures of semi-wrought common metals in particle and powdered form, for further manufacture into metal powder containing solders; Mixtures of semi-wrought common metals in particle and powdered form, for further manufacture into metal powder containing radiological personal protective equipment and X-ray shielding coatings
We look forward to hearing from you.
Kind regards,
Govinda
Govinda M. Davis
Attorney-at-Law
Dinsmore & Shohl LLP • Legal Counsel
255 East Fifth Street
Suite 1900
Cincinnati, OH 45202
T (513) 977-8200 • F (513) 977-8141E govinda.davis@dinsmore.com • dinsmore.com
From: Lee, Douglas (TM) <Douglas.Lee4@USPTO.GOV>
Sent: Monday, April 1, 2019 3:24 PM
To: Besl, April L. <april.besl@dinsmore.com>
Cc: Davis, Govinda <Govinda.Davis@DINSMORE.COM>
Subject: Trademark Appl. SN 88238874 HALO
I am the United States Patent and Trademark Office examining attorney reviewing the above trademark application. Before I can approve your application for publication, you must specifically authorize entry of the change(s) listed below, or clarify or resolve the issue(s) raised below. To expedite processing, please respond as soon as possible by email or telephone.
NOTE: This is an "informal" communication similar to a telephone call in an attempt to resolve issues more quickly without the need for a formal office action. However, if you do not respond within the deadline, a formal office action will be issued and you will have six months to respond.
In regard to your response, upon further consideration, the ID/CLASS Division has reviewed the identification and determined that the identification in Class 1 is indefinite and needs further clarification.
The guidance for Class 1 states the following:
Chemicals for use in industry, and other general applications, are in Class 1. If a particular use is indicated, however, some chemicals can belong to other classes. For example, hydrogen peroxide for industrial purposes is in Class 1, hydrogen peroxide for cosmetic purposes is in Cl. 3 and hydrogen peroxide for medical purposes is in Cl. 5.
According to the Explanatory Note, Class 1 includes mainly "chemical products for use in industry, science and agriculture, including those which go to the making of products belonging to other classes". The term "chemical products" in this instance refers to man-made as well as natural products. This justifies the inclusion in Class 1 of synthetic products, such as artificial resins, and of natural products or raw materials, such as raw salt, protein, albumin and lactose. However, certain natural materials in their raw state are not in Class 1, either because of their function or because they are closely associated with goods belonging to other classes, for example, natural resins in Cl. 2, wax and petroleum in Cl. 4, rubber in Cl. 17, and chalk in Cl. 19.
Many goods in this class are used for manufacturing products that belong to other classes. For example, unprocessed artificial resins, usually in the form of viscous liquids, are in Class 1. When artificial resins are manufactured into semi-finished products, for example, in the form of rods or sheets, they are no longer in Class 1 but in Cl. 17. Further manufacture turns these semi-processed resins into finished goods that are in other classes, such as Cl. 20.
Some “metals,” however, are in Cl 1. These are not common metals, of course. For example, alkaline metals consist of chemicals in the Period Table [chemical elements lithium (Li), sodium (Na), potassium (K), rubidium (Rb), caesium (Cs), and francium (Fr)]. Wikipedia. Vocabulary.com. Rare earth metals consist of a set of seventeen chemical elements in the periodic table, specifically the fifteen lanthanides, as well as scandium and yttrium. Wikipedia.
So metals can be basic chemical elements (Cl 1) and are distinguished from alloys and compounds (Cl 6).
The Cl 1 ID at issue is not clear. The wording “Metallic particles” and “Powered metal” is indefinite as it could be any type of metal, not just Cl 1 chemical elements, and the ending wording “for use in … metal containing chemicals, metal and metal alloy solders” seems to not make sense in this context. There is not sufficient information to substantiate these provisions ID in Cl 1.
The following would be acceptable in Class 1:
Powdered metal oxides for use in the manufacture of lead acid batteries, lubricants, radiological personal protective equipment, X-ray shielding coatings, glass and ceramics, optical quality glass, anti-corrosive paints, weight balancing or counter balance devices, ammunition, explosives, electronic glass and ceramics, rubber, paste and polymer dispersions and metal containing chemicals, metal and metal alloy solders.
Mixtures of powdered metal oxides
and powdered metalsfor use in the manufacture of lead acid batteries, lubricants, radiological personal protective equipment, X-ray shielding coatings, glass and ceramics, optical quality glass, anti-corrosive paints, weight balancing or counter balance devices, ammunition, explosives, electronic glass and ceramics, rubber, paste and polymer dispersions, and metal containing chemicals, metal and metal alloy solders;
Metallic particles, powdered metals,powdered metal oxides, and mixtures of powdered metal oxidesand powdered metals, all used in chemical reactions, chemical processes or electro-chemical systems
If accurate, applicant may also amend to the following regarding the metallic particles and powered metals:
Chemicals in the nature of metallic particles and powered metals for use in the manufacture of lead acid batteries, lubricants, radiological personal protective equipment, X-ray shielding coatings, glass and ceramics, optical quality glass, anti-corrosive paints, weight balancing or counter balance devices, ammunition, explosives, electronic glass and ceramics, rubber, paste and polymer dispersions and metal containing chemicals, metal and metal alloy solders
If you respond by e-mail or telephone no later than COB April 8th, this issue may be resolved through an Examiner's Amendment. Otherwise, as stated, an official office action will be issued.
To consent to any changes by reply email, the name of the attorney responding and a digital signature by the attorney is required (any combination of letters, numbers, spaces, and/or punctuation marks that the filer has adopted as a signature, placed between two forward slash ("/") symbols).
Sincerely
/Douglas M. Lee/
Trademark Examining Attorney
Law Office 113
U.S. Trademark Office
(571) 272-9343