Notation to File

PALADIN

Transtar Autobody Technologies LLC

RE: Proposed Amended Goods Description in Response to Office Action of 11/24/2020 - Application Serial No. 90/081,475 for PALADIN in IC 2 (Docket No. TRA-193937 US PRI)   Dear Bridget – That is acceptable.  Here is what I believe to be the final amended goods description:   Coatings in the nature of metal surface primers for preparing metal surfaces to be painted; clearcoat coatings in the nature of protective coatings applied over a painted finish for use in connection with vehicles, agricultural equipment, industrial equipment, and construction and building materials; reducers in the nature of thinners for paints; toners for paints;  bases in the nature of paints for coating and painting of metal; all of the foregoing for use in the automotive, agricultural and industrial equipment industries, and commercial and industrial metal forming and fabrication and metal treatment and finishing industries   Sincerely,   George Pinchak   George L. Pinchak Tarolli, Sundheim, Covell & Tummino L.L.P. 1300 East Ninth Street, Suite 1700 Cleveland, OH  44114 Phone: (216) 621-2234 x145 Fax: (216) 621-4072 Email: gpinchak@tarolli.com   ************************************************** This transmission contains confidential information intended only for the addressee(s). The information contained in this transmission may also be privileged and/or subject to the attorney work-product protection.  If you are not the intended recipient, any use, dissemination, distribution or copying of this document or its contents is strictly prohibited. If you have received this message in error, please notify the sender immediately by email reply and please delete this message from your computer and destroy any copies. ***************************************************     From: Watson, Bridget <Bridget.Watson@USPTO.GOV> Sent: Sunday, January 31, 2021 10:50 AM To: George L. Pinchak <gpinchak@tarolli.com> Subject: RE: Proposed Amended Goods Description in Response to Office Action of 11/24/2020 - Application Serial No. 90/081,475 for PALADIN in IC 2 (Docket No. TRA-193937 US PRI)   Hi George:   Please see the proposed change below modifying the “and/or” language.   Coatings in the nature of metal surface primers for preparing metal surfaces to be painted; clearcoat coatings in the nature of protective coatings applied over a painted finish for use in connection with vehicles, agricultural equipment, industrial equipment, and/or construction and building materials; reducers in the nature of thinners for paints; toners for paints;  bases in the nature of paints for coating and painting of metal; all of the foregoing for use in the automotive, agricultural and industrial equipment industries, and commercial and industrial metal forming and fabrication and metal treatment and finishing industries   Thanks,   Bridget   From: George L. Pinchak <gpinchak@tarolli.com> Sent: Saturday, January 30, 2021 12:58 PM To: Watson, Bridget <Bridget.Watson@USPTO.GOV> Cc: Carol Placko <cplacko@tarolli.com> Subject: RE: Proposed Amended Goods Description in Response to Office Action of 11/24/2020 - Application Serial No. 90/081,475 for PALADIN in IC 2 (Docket No. TRA-193937 US PRI)   Dear Bridget – Understood.  Here is a counterproposal for an amended goods description that include a specification of goods for the clearcoat coating:   Coatings in the nature of metal surface primers for preparing metal surfaces to be painted; clearcoat coatings in the nature of protective coatings applied over a painted finish for use in connection with vehicles, agricultural equipment, industrial equipment, and/or construction and building materials; reducers in the nature of thinners for paints; toners for paints;  bases in the nature of paints for coating and painting of metal; all of the foregoing for use in the automotive, agricultural and industrial equipment industries, and commercial and industrial metal forming and fabrication and metal treatment and finishing industries   Thank you.   Sincerely,   George Pinchak   George L. Pinchak Tarolli, Sundheim, Covell & Tummino L.L.P. 1300 East Ninth Street, Suite 1700 Cleveland, OH  44114 Phone: (216) 621-2234 x145 Fax: (216) 621-4072 Email: gpinchak@tarolli.com   ************************************************** This transmission contains confidential information intended only for the addressee(s). The information contained in this transmission may also be privileged and/or subject to the attorney work-product protection.  If you are not the intended recipient, any use, dissemination, distribution or copying of this document or its contents is strictly prohibited. If you have received this message in error, please notify the sender immediately by email reply and please delete this message from your computer and destroy any copies. ***************************************************     From: Watson, Bridget <Bridget.Watson@USPTO.GOV> Sent: Friday, January 29, 2021 11:38 AM To: George L. Pinchak <gpinchak@tarolli.com> Subject: RE: Proposed Amended Goods Description in Response to Office Action of 11/24/2020 - Application Serial No. 90/081,475 for PALADIN in IC 2 (Docket No. TRA-193937 US PRI)   Hi Greg:   We would have to specify the goods for the clearcoat coating because narrowing it by field does not specify the goods the coating is used on, but only the field of use.    Per the ID Manual, the closest identifications to protective coatings require specification that are: 1.       Used on specific goods (such as exterior surfaces, industrial equipment, or floors) OR 2.        Used for a specific purpose (such as anti-corrosive coatings or fire retardant coatings)   We would need to specify one of the above or change the field of use to the specific type of equipment, as suggested below.   all of the foregoing for use in the on automotive, agricultural and industrial equipment industries, and commercial and industrial metal forming and fabrication equipment, and metal treatment and finishing industries equipment   Let me know if you have any other questions.   Best,   Bridget   From: George L. Pinchak <gpinchak@tarolli.com> Sent: Thursday, January 28, 2021 7:03 PM To: Watson, Bridget <Bridget.Watson@USPTO.GOV> Subject: RE: Proposed Amended Goods Description in Response to Office Action of 11/24/2020 - Application Serial No. 90/081,475 for PALADIN in IC 2 (Docket No. TRA-193937 US PRI)   Dear Bridget – Thank you.  No problem with the semicolons, I actually meant to insert them.    Here is my only concern - if we say at the end of the description “all of the foregoing for use in the automotive, agricultural and industrial equipment industries, and commercial and industrial metal forming and fabrication and metal treatment and finishing industries”, why would we need to again specify the goods for the clearcoat coating?  Thus, I would propose the following revision (incorporating all of your other changes):     Coatings in the nature of metal surface primers for preparing metal surfaces to be painted; clearcoat coatings in the nature of protective coatings applied over a painted finish; reducers in the nature of thinners for paints; toners for paints;  bases in the nature of paints for coating and painting of metal; all of the foregoing for use in the automotive, agricultural and industrial equipment industries, and commercial and industrial metal forming and fabrication and metal treatment and finishing industries       Would this be acceptable to you?   Thank you.   Sincerely,   George Pinchak   George L. Pinchak Tarolli, Sundheim, Covell & Tummino L.L.P. 1300 East Ninth Street, Suite 1700 Cleveland, OH  44114 Phone: (216) 621-2234 x145 Fax: (216) 621-4072 Email: gpinchak@tarolli.com

NOTE TO THE FILE

SERIAL NUMBER:            90081475

DATE:                                02/02/2021

NAME:                               bwatson

NOTE:         

Searched:                                                             
     Google                            
     Lexis/Nexis                       
     OneLook
     Wikipedia
     Acronym Finder                         Protest evidence reviewed
     Other:

Checked:                                                             
     Geographic significance          
     Surname                          
     Translation
     ID with ID/CLASS mailbox

     Checked list of approved Canadian attorneys and agents

Discussed file with
Attorney/Applicant via:
    X   phone                               Left message with
    X   email                               Attorney/Applicant

     Requested Law Library search       X   Issued Examiner’s Amendment
     for:                                   and entered changes in TRADEUPS

        PRINT        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:

     OTHER:

 

 

From: George L. Pinchak <gpinchak@tarolli.com>
Sent: Tuesday, February 2, 2021 4:45 PM
To: Watson, Bridget <Bridget.Watson@USPTO.GOV>
Cc: Carol Placko <cplacko@tarolli.com>
Subject: RE: Proposed Amended Goods Description in Response to Office Action of 11/24/2020 - Application Serial No. 90/081,475 for PALADIN in IC 2 (Docket No. TRA-193937 US PRI)

 

Dear Bridget – That is acceptable.  Here is what I believe to be the final amended goods description:

 

Coatings in the nature of metal surface primers for preparing metal surfaces to be painted; clearcoat coatings in the nature of protective coatings applied over a painted finish for use in connection with vehicles, agricultural equipment, industrial equipment, and construction and building materials; reducers in the nature of thinners for paints; toners for paints;  bases in the nature of paints for coating and painting of metal; all of the foregoing for use in the automotive, agricultural and industrial equipment industries, and commercial and industrial metal forming and fabrication and metal treatment and finishing industries

 

Sincerely,

 

George Pinchak

 

George L. Pinchak

Tarolli, Sundheim, Covell & Tummino L.L.P.

1300 East Ninth Street, Suite 1700

Cleveland, OH  44114

Phone: (216) 621-2234 x145

Fax: (216) 621-4072

Email: gpinchak@tarolli.com

 

**************************************************

This transmission contains confidential information intended only for the addressee(s). The information contained in this transmission may also be privileged and/or subject to the attorney work-product protection.  If you are not the intended recipient, any use, dissemination, distribution or copying of this document or its contents is strictly prohibited. If you have received this message in error, please notify the sender immediately by email reply and please delete this message from your computer and destroy any copies.

***************************************************

 

 

From: Watson, Bridget <Bridget.Watson@USPTO.GOV>
Sent: Sunday, January 31, 2021 10:50 AM
To: George L. Pinchak <gpinchak@tarolli.com>
Subject: RE: Proposed Amended Goods Description in Response to Office Action of 11/24/2020 - Application Serial No. 90/081,475 for PALADIN in IC 2 (Docket No. TRA-193937 US PRI)

 

Hi George:

 

Please see the proposed change below modifying the “and/or” language.

 

Coatings in the nature of metal surface primers for preparing metal surfaces to be painted; clearcoat coatings in the nature of protective coatings applied over a painted finish for use in connection with vehicles, agricultural equipment, industrial equipment, and/or construction and building materials; reducers in the nature of thinners for paints; toners for paints;  bases in the nature of paints for coating and painting of metal; all of the foregoing for use in the automotive, agricultural and industrial equipment industries, and commercial and industrial metal forming and fabrication and metal treatment and finishing industries

 

Thanks,

 

Bridget

 

From: George L. Pinchak <gpinchak@tarolli.com>
Sent: Saturday, January 30, 2021 12:58 PM
To: Watson, Bridget <Bridget.Watson@USPTO.GOV>
Cc: Carol Placko <cplacko@tarolli.com>
Subject: RE: Proposed Amended Goods Description in Response to Office Action of 11/24/2020 - Application Serial No. 90/081,475 for PALADIN in IC 2 (Docket No. TRA-193937 US PRI)

 

Dear Bridget – Understood.  Here is a counterproposal for an amended goods description that include a specification of goods for the clearcoat coating:

 

Coatings in the nature of metal surface primers for preparing metal surfaces to be painted; clearcoat coatings in the nature of protective coatings applied over a painted finish for use in connection with vehicles, agricultural equipment, industrial equipment, and/or construction and building materials; reducers in the nature of thinners for paints; toners for paints;  bases in the nature of paints for coating and painting of metal; all of the foregoing for use in the automotive, agricultural and industrial equipment industries, and commercial and industrial metal forming and fabrication and metal treatment and finishing industries

 

Thank you.

 

Sincerely,

 

George Pinchak

 

George L. Pinchak

Tarolli, Sundheim, Covell & Tummino L.L.P.

1300 East Ninth Street, Suite 1700

Cleveland, OH  44114

Phone: (216) 621-2234 x145

Fax: (216) 621-4072

Email: gpinchak@tarolli.com

 

**************************************************

This transmission contains confidential information intended only for the addressee(s). The information contained in this transmission may also be privileged and/or subject to the attorney work-product protection.  If you are not the intended recipient, any use, dissemination, distribution or copying of this document or its contents is strictly prohibited. If you have received this message in error, please notify the sender immediately by email reply and please delete this message from your computer and destroy any copies.

***************************************************

 

 

From: Watson, Bridget <Bridget.Watson@USPTO.GOV>
Sent: Friday, January 29, 2021 11:38 AM
To: George L. Pinchak <gpinchak@tarolli.com>
Subject: RE: Proposed Amended Goods Description in Response to Office Action of 11/24/2020 - Application Serial No. 90/081,475 for PALADIN in IC 2 (Docket No. TRA-193937 US PRI)

 

Hi Greg:

 

We would have to specify the goods for the clearcoat coating because narrowing it by field does not specify the goods the coating is used on, but only the field of use. 

 

Per the ID Manual, the closest identifications to protective coatings require specification that are:

1.       Used on specific goods (such as exterior surfaces, industrial equipment, or floors) OR

2.        Used for a specific purpose (such as anti-corrosive coatings or fire retardant coatings)

 

We would need to specify one of the above or change the field of use to the specific type of equipment, as suggested below.

 

all of the foregoing for use in the on automotive, agricultural and industrial equipment industries, and commercial and industrial metal forming and fabrication equipment, and metal treatment and finishing industries equipment

 

Let me know if you have any other questions.

 

Best,

 

Bridget

 

From: George L. Pinchak <gpinchak@tarolli.com>
Sent: Thursday, January 28, 2021 7:03 PM
To: Watson, Bridget <Bridget.Watson@USPTO.GOV>
Subject: RE: Proposed Amended Goods Description in Response to Office Action of 11/24/2020 - Application Serial No. 90/081,475 for PALADIN in IC 2 (Docket No. TRA-193937 US PRI)

 

Dear Bridget – Thank you.  No problem with the semicolons, I actually meant to insert them. 

 

Here is my only concern - if we say at the end of the description “all of the foregoing for use in the automotive, agricultural and industrial equipment industries, and commercial and industrial metal forming and fabrication and metal treatment and finishing industries”, why would we need to again specify the goods for the clearcoat coating?  Thus, I would propose the following revision (incorporating all of your other changes):

 

 

Coatings in the nature of metal surface primers for preparing metal surfaces to be painted; clearcoat coatings in the nature of protective coatings applied over a painted finish; reducers in the nature of thinners for paints; toners for paints;  bases in the nature of paints for coating and painting of metal; all of the foregoing for use in the automotive, agricultural and industrial equipment industries, and commercial and industrial metal forming and fabrication and metal treatment and finishing industries

 

 

 

Would this be acceptable to you?

 

Thank you.

 

Sincerely,

 

George Pinchak

 

George L. Pinchak

Tarolli, Sundheim, Covell & Tummino L.L.P.

1300 East Ninth Street, Suite 1700

Cleveland, OH  44114

Phone: (216) 621-2234 x145

Fax: (216) 621-4072

Email: gpinchak@tarolli.com

 

**************************************************

This transmission contains confidential information intended only for the addressee(s). The information contained in this transmission may also be privileged and/or subject to the attorney work-product protection.  If you are not the intended recipient, any use, dissemination, distribution or copying of this document or its contents is strictly prohibited. If you have received this message in error, please notify the sender immediately by email reply and please delete this message from your computer and destroy any copies.

***************************************************

 

 

From: Watson, Bridget <Bridget.Watson@USPTO.GOV>
Sent: Thursday, January 28, 2021 6:26 PM
To: George L. Pinchak <gpinchak@tarolli.com>
Subject: RE: Proposed Amended Goods Description in Response to Office Action of 11/24/2020 - Application Serial No. 90/081,475 for PALADIN in IC 2 (Docket No. TRA-193937 US PRI)

 

Hi George:

 

Thanks for the email.  Please see my proposed amendments below.  If you agree to the amendments below and provide the requested specifics, I will enter the changes via examiner’s amendment and send this application forward.  I separated the clauses by semicolons rather than commas for clarity purposes.

 

Coatings in the nature of metal surface primers for preparing metal surfaces to be painted,; clearcoat coatings, namely, in the nature of protective coatings applied over a painted finish for {indicate goods, e.g., vehicles, industrial equipment, etc.},; reducers in the nature of thinners for paints;, toners; and bases in the nature of paints for coating and painting of metal; all of the foregoing for use in the automotive, agricultural and industrial equipment industries, and commercial and industrial metal forming and fabrication and metal treatment and finishing industries

 

Thanks!

 

Bridget Watson

 

From: George L. Pinchak <gpinchak@tarolli.com>
Sent: Thursday, January 28, 2021 3:28 PM
To: Watson, Bridget <Bridget.Watson@USPTO.GOV>
Cc: Carol Placko <cplacko@tarolli.com>
Subject: Proposed Amended Goods Description in Response to Office Action of 11/24/2020 - Application Serial No. 90/081,475 for PALADIN in IC 2 (Docket No. TRA-193937 US PRI)

 

Re:  U.S. Intent-to-Use Trademark Registration Application Serial No. 90/081,475

Filing Date:  July 29, 2020

Trademark:  PALADINTM (standard character format)

Applicant:  Transtar Autobody Technologies LLC (Ohio limited liability company)

 

Docket No.:  TRA-193937 US PRI

 

 

Dear Examining Attorney Watson – In response to the non-final Office Action of November 24, 2020 for application serial no. 90/081,475, set forth below is Applicant’s proposed amended goods description:

 

Coatings in the nature of metal surface primers for preparing metal surfaces to be painted, clearcoat coatings, namely, protective coatings applied over a painted finish, reducers in the nature of thinners for paints, toners and bases in the nature of paints for coating and painting of metal surfaces, all for use in the automotive, agricultural and industrial equipment industries, and commercial and industrial metal forming and fabrication and metal treatment and finishing industries, in International Class 2

 

 

If the proposed amended goods description is acceptable, you may enter it by Examiner’s Amendment.

 

Please do not hesitate to contact me if you have any questions or comments.

 

Thank you for your kind attention to this matter.

 

Sincerely,

 

George Pinchak

 

George L. Pinchak

Tarolli, Sundheim, Covell & Tummino L.L.P.

1300 East Ninth Street, Suite 1700

Cleveland, OH  44114

Phone: (216) 621-2234 x145

Fax: (216) 621-4072

Email: gpinchak@tarolli.com

 

**************************************************

This transmission contains confidential information intended only for the addressee(s). The information contained in this transmission may also be privileged and/or subject to the attorney work-product protection.  If you are not the intended recipient, any use, dissemination, distribution or copying of this document or its contents is strictly prohibited. If you have received this message in error, please notify the sender immediately by email reply and please delete this message from your computer and destroy any copies.

***************************************************

 

 

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