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 09/20/2020)

---

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 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88607296 ZIRCOSTAR(Standard Characters, see http://uspto.report/TM/88607296/mark.png) has been amended as follows:

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

This responds to the Office Action that issued on December 10, 2019.

As a preliminary matter the Examining Attorney should note that the original attorney who filed the application is no longer a member of the firm of record. Applicant appointed the undersigned, with whom the Examining Attorney spoke on or around December 10, 2019, to continue prosecution of this application. A Revocation and Appointment of Attorney was filed in the U.S. Patent and Trademark Office on February 4, 2020. Further communications should, therefore, be directed to the attention of the undersigned.

The Examining Attorney raised the following issues in the Office Action:

• Section 2(d) Refusal—Likelihood of Confusion;

• Requirement for an Acceptable Identification of Goods; and

• Requirement for Basis Clarification.

Applicant, by its undersigned counsel, responds to each issue in turn below.

I. Section 2(d) Refusal – Likelihood of Confusion

The Examining Attorney refused registration of Applicant’s mark under Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d), based upon the existence of U.S. Trademark Registration No. 4,123,691 for the mark ZIRCOSTAR for “Pharmaceutical preparations, namely, ceramic materials for dental use for fillings, crowns, and bridges” in Class 5. The Examining Attorney and Applicant’s undersigned counsel spoke about this refusal on or around December 10, 2019 when the Examining Attorney contacted Applicant’s former attorney about a possible Examiner’s Amendment. At that time the Examining Attorney indicated that if Applicant were to include the language “none of the foregoing being for dental use” at the end of the description of goods, a likelihood of confusion refusal could be avoided. Thus, in response to the likelihood of confusion refusal Applicant has amended the description of goods to include the language “none of the foregoing being for dental use.” Applicant submits that the exclusionary language is sufficient to avoid confusion.

II. Requirement for an Acceptable Identification of Goods

The Examining Attorney objected to the wording “unprocessed plastics for lenses” in Class 1 as being too vague. The Examining Attorney suggested amending this wording to read as “unprocessed plastics for use in the manufacture of lenses.” Applicant has accepted the Examining Attorney’s proposal. Thus, with the exclusionary language discussed in Section I, the description of goods in Class 1 should be amended to read as follows:

Class 1

Industrial chemicals; chemical compositions for use in the manufacture of optical materials, namely, optical lenses, light guide plates, light diffusion plates, polarizing plates, optical compensation films, protective films for optics, optical filters, optical films for liquid crystal, optical films for organic electro-luminescence, optical adhesives, optical waveguide fabrication materials, and resist agents; unprocessed plastic resins for use in the manufacture of optical materials, namely, optical lenses, light guide plates, light diffusion plates, polarizing plates, optical compensation films, protective films for optics, optical filters, optical films for liquid crystal, optical films for organic electro-luminescence, optical adhesives, optical waveguide fabrication materials, and resist agents; metal oxide powders for industrial purposes; dispersants for industrial purposes comprised of metal oxide powders; industrial chemicals in liquid form comprised of metal oxide powders; unprocessed plastics comprised of metal oxide powders; unprocessed plastics for use in the manufacture of lenses; unprocessed plastics; unexposed photographic films; none of the foregoing being for dental use

III. Requirement for Basis Clarification

The Examining Attorney noted in the Office Action that the application asserts a dual basis relying upon a Japanese registration and intent-to-use basis. The Examining Attorney states that the application can proceed based upon the Japanese registration. Thus, Applicant has deleted the intent-to-use basis.

***

With the above, Applicant submits that all outstanding issues have now been resolved and respectfully requests that the application be approved for publication.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 001 for Industrial chemicals; chemical compositions for use in the manufacture of optical materials, namely, optical lenses, light guide plates, light diffusion plates, polarizing plates, optical compensation films, protective films for optics, optical filters, optical films for liquid crystal, optical films for organic electro-luminescence, optical adhesives, optical waveguide fabrication materials, and resist agents; unprocessed plastic resins for use in the manufacture of optical materials, namely, optical lenses, light guide plates, light diffusion plates, polarizing plates, optical compensation films, protective films for optics, optical filters, optical films for liquid crystal, optical films for organic electro-luminescence, optical adhesives, optical waveguide fabrication materials, and resist agents; metal oxide powders for industrial purposes; dispersants for industrial purposes comprised of metal oxide powders; industrial chemicals in liquid form comprised of metal oxide powders; unprocessed plastics comprised of metal oxide powders; unprocessed plastics for lenses; unprocessed plastics; unexposed photographic films
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.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Japan registration number 5444821 registered 10/14/2011 with a renewal date of __________ and an expiration date of 10/14/2021 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.


Proposed:

Tracked Text Description: Industrial chemicals; chemical compositions for use in the manufacture of optical materials, namely, optical lenses, light guide plates, light diffusion plates, polarizing plates, optical compensation films, protective films for optics, optical filters, optical films for liquid crystal, optical films for organic electro-luminescence, optical adhesives, optical waveguide fabrication materials, and resist agents; unprocessed plastic resins for use in the manufacture of optical materials, namely, optical lenses, light guide plates, light diffusion plates, polarizing plates, optical compensation films, protective films for optics, optical filters, optical films for liquid crystal, optical films for organic electro-luminescence, optical adhesives, optical waveguide fabrication materials, and resist agents; metal oxide powders for industrial purposes; dispersants for industrial purposes comprised of metal oxide powders; industrial chemicals in liquid form comprised of metal oxide powders; unprocessed plastics comprised of metal oxide powders; unprocessed plastics for lenses; unprocessed plastics for use in the manufacture of lenses; unprocessed plastics; unexposed photographic films; none of the foregoing being for dental useClass 001 for Industrial chemicals; chemical compositions for use in the manufacture of optical materials, namely, optical lenses, light guide plates, light diffusion plates, polarizing plates, optical compensation films, protective films for optics, optical filters, optical films for liquid crystal, optical films for organic electro-luminescence, optical adhesives, optical waveguide fabrication materials, and resist agents; unprocessed plastic resins for use in the manufacture of optical materials, namely, optical lenses, light guide plates, light diffusion plates, polarizing plates, optical compensation films, protective films for optics, optical filters, optical films for liquid crystal, optical films for organic electro-luminescence, optical adhesives, optical waveguide fabrication materials, and resist agents; metal oxide powders for industrial purposes; dispersants for industrial purposes comprised of metal oxide powders; industrial chemicals in liquid form comprised of metal oxide powders; unprocessed plastics comprised of metal oxide powders; unprocessed plastics for use in the manufacture of lenses; unprocessed plastics; unexposed photographic films; none of the foregoing being for dental use
Deleted Filing Basis: 1(b)
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Japan registration number 5444821 registered 10/14/2011 with a renewal date of __________ and an expiration date of 10/14/2021 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: NIPPON SHOKUBAI CO., LTD., a corporation of Japan, having an address of

            Osaka-shi      No.1-1, 4-chome, Koraibashi, Chuo-ku,
      Osaka, 541-0043
      Japan

Proposed: NIPPON SHOKUBAI CO., LTD., a corporation of Japan, having an address of
      Osaka-shi
      No.1-1, 4-chome, Koraibashi, Chuo-ku,
      Osaka, 541-0043
      Japan
      Email Address: XXXX
Correspondence Information (current):
      Sean P. McMahon
      PRIMARY EMAIL FOR CORRESPONDENCE: tm@ostrolenk.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): smcmahon@ostrolenk.com

The docket/reference number is TE/2710-161.
Correspondence Information (proposed):
      Sean P. McMahon
      PRIMARY EMAIL FOR CORRESPONDENCE: tm@ostrolenk.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): smcmahon@ostrolenk.com

The docket/reference number is TE/2710-161.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Declaration Signature
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice.
Response Signature
Signature: /SPM/     Date: 02/21/2020
Signatory's Name: Sean P. McMahon
Signatory's Position: Attorney for Applicant

Signatory's Phone Number: 212-382-0700

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); 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.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    Sean P. McMahon
   Ostrolenk Faber LLP
   
   845 Third Avenue, 8th Floor
   New York, New York 10022
Mailing Address:    Sean P. McMahon
   Ostrolenk Faber LLP
   845 Third Avenue, 8th Floor
   New York, New York 10022
        
Serial Number: 88607296
Internet Transmission Date: Fri Feb 21 17:45:03 ET 2020
TEAS Stamp: USPTO/ROA-XX.XX.XX.XXX-20200221174503664
459-88607296-71064b2881d5755bdac1c6b0e57
9a02978a1c3b9cd6b61764a83a6eab73286a65-N
/A-N/A-20200221174159017001