NOTE TO THE FILE
Sent to TICRS as Serial Number: 88501983SERIAL NUMBER: 88501901
DATE: 08/26/2019
NAME: aclark2
NOTE:
Searched:
X Google
Lexis/Nexis
X OneLook
X Wikipedia
Acronym Finder Protest evidence reviewed
Other:Checked:
Geographic significance
X Surname
Translation
ID with ID/CLASS mailboxChecked list of approved Canadian attorneys and agents
Discussed file with
Attorney/Applicant via:
X phone Left message with
X email Attorney/ApplicantRequested Law Library search X Issued Examiner’s Amendment
for: and entered changes in TRADEUPSPRINT DO NOT PRINT Added design code in TRADEUPS
Description of the mark
Translation statement Re-imaged standard character
drawing
Negative translation statement
Consent of living individual Contacted TM MADRID ID/CLASS
about misclassified definite ID
Changed TRADEUPS to:From: HellerS@gtlaw.com <HellerS@gtlaw.com>
Sent: Saturday, August 24, 2019 11:18 AM
To: Clark, Andrew <Andrew.Clark@USPTO.GOV>
Cc: linkerg@gtlaw.com
Subject: RE: U.S. Trademark Applications for HOWMET CORPORATION - RESPONSE REQUIRED BY FRIDAY, 8/23/2019
Dear Andrew,
Thank you for working with us to resolve the outstanding ID issues.
As you requested, this is to confirm that the amendments you and Grace discussed are acceptable. Accordingly, we respectfully request that you issue the Examiner’s Amendments.
Please let me know if you need anything further to approve these applications for publication.
Thank you,
Susan
Susan L. Heller
Co-Managing Shareholder – Orange County OfficeChair – Global Trademark & Brand Management Practice
Greenberg Traurig, LLP | 3161 Michelson Drive
Suite 1000 | Irvine, CA 92612
Tel 949.732.6810 | Fax 949.266.9326HellerS@gtlaw.com | www.gtlaw.com | View GT Biography
From: Clark, Andrew [mailto:Andrew.Clark@USPTO.GOV]
Sent: Friday, August 23, 2019 11:56 AM
To: Linker, Grace (Para-OC-IP-Tech) <linkerg@gtlaw.com>
Cc: Heller, Susan L. (Shld-OC-IP-Tech) <HellerS@gtlaw.com>
Subject: RE: U.S. Trademark Applications for HOWMET CORPORATION - RESPONSE REQUIRED BY FRIDAY, 8/23/2019
Hi Grace,
Thank you very much for your help. The below amendment for Class 2 looks to be acceptable.
With Susan’s consent, either email or via phone call, I can move forward with issuing the Examiner’s Amendments.
Best,
Andrew
__________________________________
Andrew T. Clark
Examining Attorney, Law Office 107
United States Patent and Trademark Office
(571)270-7304
Notice to applicants and attorneys: relevant e-mail communications will be uploaded to the official application record in accordance with 37 C.F.R. §2.191 and TMEP §§709.04 - .05
From: linkerg@gtlaw.com <linkerg@gtlaw.com>
Sent: Friday, August 23, 2019 2:32 PM
To: Clark, Andrew <Andrew.Clark@USPTO.GOV>
Cc: HellerS@gtlaw.com
Subject: RE: U.S. Trademark Applications for HOWMET CORPORATION - RESPONSE REQUIRED BY FRIDAY, 8/23/2019
Hi Andrew,
It was a pleasure speaking with you today.
Per the client’s instructions, please amend the description in Class 2 to read as follows:
“Protective, chemical, sacrificial, anti-tarnishing, lubricating, heat resistant, and texture altering coatings for metal surfaces in the nature of castings and extrusions.”
Please confirm that this amended ID is acceptable. We look forward to hearing from you.
Best,
Grace Linker
Assistant Director - Global Trademark & Brand Management PracticeGreenberg Traurig, LLP
3161 Michelson Drive, No. 1000
Irvine, CA 92612
Tel 949.732.6803 | Fax 949.266.9468linkerg@gtlaw.com | www.gtlaw.com
From: Clark, Andrew [mailto:Andrew.Clark@USPTO.GOV]
Sent: Wednesday, August 21, 2019 3:55 PM
To: Heller, Susan L. (Shld-OC-IP-Tech) <HellerS@gtlaw.com>; GTIPMail <gtipmail@gtlaw.com>
Cc: Linker, Grace (Para-OC-IP-Tech) <linkerg@gtlaw.com>; Bianco, Christopher (BStf-NY-IP-Tech) <BIANCOC@gtlaw.com>
Subject: U.S. Trademark Applications for HOWMET CORPORATION - RESPONSE REQUIRED BY FRIDAY, 8/23/2019
*EXTERNAL TO GT*
Dear Ms. Heller:
I hope this email finds you well. This is a follow up email to the message I left earlier and the discussion I had with your associate. I am the examining attorney assigned to 28 applications applied for by Howmet Corporation and have an Identification of Goods and services requirement, disclaimer requirements, and mark description requirements we should be able to resolve via Examiner’s Amendment before moving the application forward.
DISCLAIMER
In the applicable marks, the wording “AEROSPACE” must be disclaimed, as this is descriptive wording for applicant’s field of use of its goods and services. Specifically, the applicant is producing goods and providing services to the aerospace industry. The following disclaimer statement is suggested:
No claim is made to the exclusive right to use “AEROSPACE” apart from the mark as shown.
MARK DESCRIPTION
In the applicable marks appearing in color, the color white must be referenced because it was included in the color claim.
The mark consists of a white the letter "H" inside an incomplete box; the top half of the box is blue and the bottom half of the box is black.
Alternatively, the applicant can remove the color white from the color claim, and amend the mark description as follows:
The mark consists of the design of a box made of two separate halves; the top half of the box is blue and the bottom half of the box is black. The negative space between the two halves of the box creates the letter “H”.
IDENTIFICATION OF GOODS AND SERVICES
Particular entries in the identification of goods and services are indefinite and must be clarified. After a brief discussion with your associate, guidance was given to refer to the related “Arconic” application and registrations. I also reviewed information on applicant’s website to better I develop the below suggested amendments to the identification of goods and services.
To note, no changes are being proposed for International Class 042.
Applicant may substitute the following wording, if accurate:
Please note bolded wording has been added to the identification of goods to indicate suggested amendments.
Class 001: Chemicals for use in the manufacture of pre-treatment coatings for castings and extrusions
Class 002: Pre-treatment coatings for inorganic metal surfaces in the nature of castings and extrusions to improve adhesion and corrosion resistance
Class 006: Metal alloys in the form of plates, forgings, all for use in the further manufacture of molds and tools; metal rivets; Small items of metal hardware, namely, nuts, screws, bolts, washers, springs; metal fasteners, namely, quarter turn fasteners and panel locking fasteners; threaded screw inserts of common metal; kits primarily comprised of threaded metal screw inserts, all sold as a unit with installation equipment therefor; pipes and tubes of metal; Metals and alloys used for castings; superalloys, titanium and its alloys, and aluminum and its alloys for use in the further manufacture of finished goods
Class 007: Machines and machine tools, namely, panel beating machines, embossing machines, rammers being machines, leather paring machines; hydraulic control mechanisms for machines, engines and motors; cutting machines; lubricators, namely, power-operated lubricant dispensers for machines; drainage machines, namely, drain jetters, drain cocks, and oil drain pumps; foundry machines, namely, casting machines; printing machines for use on sheet metal; lifting apparatus, namely, Mechanical and hydraulic lifts; metal working machines; crushing machines for industrial purposes; pumps for machines; Industrial machine presses; Industrial robots; glazing machines for processing metals; Saw machines; blowing machines for the compression, exhaustion and transport of gases; filling machines; lathes; sorting machines for industrial chemical processing
Class 012: Vehicles, namely, land vehicles and aircraft; vehicle wheels; components for land vehicles, namely, structural parts for automobiles and trucks; components for aircraft, namely, structural parts for airplanes
Class 020: Cores made of ceramic and patterns made of wax and plastic for metal casting; non-metal fasteners, namely, rivets, bolts, nuts, threaded inserts, and screws
Class 040: Treatment of materials in the nature of metal
With your authorization to do so, I can add amend the identification of goods, amend the mark description and enter the disclaimer via Examiner’s Amendment. Please let me know by FRIDAY, AUGUST 23 if you have any questions, and if the above option is acceptable.
Please feel free to give me a call if you would like to discuss the above in further detail.
Thank you,
Andrew
__________________________________
Andrew T. Clark
Examining Attorney, Law Office 107
United States Patent and Trademark Office
(571)270-7304
Notice to applicants and attorneys: relevant e-mail communications will be uploaded to the official application record in accordance with 37 C.F.R. §2.191 and TMEP §§709.04 - .05