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`02-24-2003
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`U.S. Patent 8. TMOTCITM Mail Rcpt D1, #64
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`77243
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`
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`Examiner: Leipzig, M.
`
`Law Office: 115
`
`Docket No.: NANJ-0002-1-TM
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`In re Application of:
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`Nagase Chemtex Corporation
`
`Serial Number: 76/204,172
`
`Filed: February 2, 2001
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`For:
`
`X (Mark, IC 1, 5, 17 & 19)
`
`Assistant Commissioner for Trademarks
`
`Box TTAB FEE
`
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`'
`
`NQflCE
`
`Applicant hereby appeals tovthe Trademark Trial and Appeal Board from the
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`decision of the Trademark’ ExaInining' Attorney on December 20, 2002,
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`refusing
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`registration of the above-identified mark.
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`Please charge any additional fees associated with this communication or credit any
`overpayment to Deposit Account Number 10-0233-NANJ-0002-1 TM.
`
`.
`Respectfully submitted,
`
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`A3 ay A. Jagtiam
`Attorney for Applicant
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`E73
`
`03/11/2003 ISBN}!
`01 FC:6403
`
`00000219100233
`4oo.oo cu
`
`75204172
`
`Jagtiani + Guttag
`10379-B Democracy Lane
`Fairfax, Virginia 22030
`(703) 591-2664
`
`February 24, 2003
`
`

`
`
`
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`02-24-2003
`
`us. Patent at TMOfclTM Mail Rom 01- *5‘
`
`
`
`In re Application of:
`
`Nagase Chemtex Corporation
`
`Serial Number: 76/204,172
`
`Filed: February 2, 2001
`
`For:
`
`X (Mark, IC 1, 5, 17 & 19)
`
`\/\-/\/€\-/&/\—/\-/\#
`
`Examiner: Leipzig, M.
`
`Law Office: 115
`
`Docket No.: NANJ—0002-1—TMi
`
`Assistant Commissioner for Trademarks
`
`Box RESPONSES
`
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`.NO FEE
`
`Sir:
`
`RE
`
`This is in response to the Final Office Action dated December 20, 2002, the period
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`for response to which is set to expire on June 20, 2003. Applicant has filed a Notice of
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`Appeal concurrently herewith this request to the Trademark Trial and Appeal Board for the
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`above-captioned application.
`
`V;
`
`7
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`..
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`REMARKS
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`The -Examiner has refused registration because the identification of goods is
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`allegedly indefinite. Applicant disagrees. However, in order to expedite prosecution,
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`Applicant is willing to adopt the identification of goods as provided for by the Examiner.
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`Thus, please amend the identification of goods to read as follows:
`
`Chemical preparations for use in preserving food; chemical preparations,
`namely, catalysts,
`intermediates,
`solvents, higher
`fatty acids, highly
`unsaturated fatty acids, enzymes, and fermentation chemical preparations,
`for
`use
`in
`the
`chemical
`compounds,
`plastics,
`semiconductor,
`pharmaceutical, cosmetics, germicides, fungicides and insecticides, food,
`textile, photographic, paper and pulp, metal-surface treating, agriculture,
`fisheries, cleaning,
`soap and detergent, electronic material
`treatment,
`recording media, scientific research reagent, livestock meal, and sewage
`treating industries; chemicals used in manufacturing chemical compounds,
`plastics, semi-conductor, flat panel display, pharmaceuticals, germicides and
`fungicides, insecticides, foodstuff, paints, food additives, highly unsaturated
`
`

`
`
`
`Serial Number: 76/204,172
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`industrial
`fertilizers, soap, detergent,
`fatty acids, cleaners, bleachings,
`detergent; chemical preparations for use in water treatment, textile treatment
`and for use as a plating agent, photographic developer, and anti-oxidant,
`chemical preparations for use in the manufacture of rubber, chemical
`preparations for use as a sprinkling agent for use in leaf, plant growth
`promoters, chemical preparations for use in the manufacture of liquid
`crystals, diskettes, and toners; chemical preparations
`for use in the
`manufacture of electric conductive paste; unprocessed plastics in the nature
`of resin in the shape of bars, blocks, pellets, or rods used in manufacturing
`extruded plastics, electronic devices; chemical fertilizer, natural fertilizer,
`composite fertilizer and artificial soil used for plant growth; adhesives for
`use the industrial field of electronics, automobiles, machinery, ships, civil
`engineering and architecture; adhesives for use in the manufacture of optical
`articles, namely, DVDS and CCDS; industrial film-shaped adhesives and
`encapsulations and sticky adhesives for use in the field of masking,
`electronic material and automobile; adhesives for use in the manufacture of
`protective film; adhesives for use in the manufacture of flexible circuits;
`industrial adhesives in the nature of a binder for use in adhesion of
`
`A
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`electronic materials; and industrial adhesives in the nature of a binder for
`use in the manufacture of medical devices in International Class 1;
`pharmaceuticals for use in the treatment or therapeutics for human, namely,
`gastrointestinal disorder, cancer, diabetes, hypertension, anti—inflammatory,
`hyperlipemia, _ local anesthesia, allergy, pancreatitis,
`improvement of
`digestive function,
`ischemia, and epilepsy, food for medically restricted
`diets; food for use as a nutritional supplement for babies; baby food in the
`nature of powdered milk, dental materials namely, dental cements, fillings
`for teeth, dental wax, dental impression materials for artificial teeth, dental
`restoration compounds containing argine-rubber and gypsum, all purpose
`disinfectants,
`antiseptics, wood preservative,
`ship bottom coating,
`pesticides, fungicides, gerrnicides, and bactericides for domestic, industrial,
`agricultural, or residential use, deodorant
`for domestic,
`industrial, or
`residential use in lntemational Class 5; synthetic acrylic rubber and silicone
`rubber for use in the manufacture of elastomer, plastics in extruded form for
`general industrial user, plastics molded in the shape of bars, blocks, pellets,
`rods, sheets, tubes for use in the manufacture of molded articles, plastic
`sheet on which metal foil is chemical vapor deposited, laminated plastic
`sheets for use in the manufacture of adhesives, films and semiconductor
`substrates, electrical insulating plaster made of plastics, electrical ceramic
`insulators, electrical insulating tapes, tube made of plastics for use in the
`manufacture of electrical plastic insulators in International Class 17; and
`materials for building made of plastics, namely, wall
`linings made of
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`

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`Serial Number: 76/204,172
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`plastics, boundary pole made of plastics, tile made of plastics and floor
`board made of plastics, non-metal gutter pipes for building, non-metal
`drainpipes made of concrete sandstone, earthenware, or plastic, blocks,
`bricks, posts, poles, slabs or panels made of concrete wall board, concrete
`hardwood board, concrete decking board, concrete wood board, concrete
`particle board, hard tube for building made of plastics in International Class
`19.
`
`Applicant does not wish to include an identification of goods for International
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`Classes 3, 10, 22 and 23, as suggested by the Examiner in the present application.
`
`Therefore, no additional fee is necessary because Applicant is seeking registration in four.
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`classes and has submitted a filing fee for those four classes.
`
`Applicant previously filed a certified copy and translation, signed by the translator,
`of the foreign registration on November 30, 2001, to which this pending application is
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`based upon. Applicant wishes to change the basis for proceeding- from Section 1(b) and
`Section 44(e) to Section 44(e) based on the foreign registration. Accordingly, Applicant
`has a bona fide intention to use the mark in commerce on or in connection with the
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`identified goods and or services, and has previously submitted copies of Japanese
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`Registration No. 4,498,252, along with certified translations, to show that Applicant is
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`entitled to Registration, in accordance with Section 44(e), 15 U. S.C. § 1126(e).
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`The expiration date of Japanese Registration No. 4,498,252 is September 11,
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`201 1. This expiration date may be extended by a period of ten years upon payment of a
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`fee.
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`Applicant, Nagase Chemtex Corporation, is a Japanese Corporation.
`
`

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`
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`Serial Number: 76/204,172
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`Since Applicant has made a good faith effort
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`to comply with all outstandling
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`requirements,
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`it
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`is respectfully submitted that
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`this application is in condition for
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`allowance, and favorable action is respectfully solicited.
`
`Respectm
`
`Ajay A. Jagtiani
`Attorney for Applicant
`
`Jagtiani + Guttag
`10379-B Democracy Lane
`Fairfax, Virginia 22030
`(703) 591-2664
`
`Februaxy 24, 2003
`
`

`
`
`
`02-24-2003
`U.S. Patent & TMORZITM Mail ficpt Dt. #64
`
`Hlllllllllllllllllllllllllllllillllllllllllllllll
`
`Examiner: Leipzig, M.
`
`Law Office: 115
`
`Docket No.: NANJ-0002-1-TM
`
`) )
`
`)
`)
`)
`
`)
`
`) )
`
`)
`
`In re Application of:
`
`Nagase Chemtex Corporation
`
`Serial Number: 76/204,172
`
`Filed: February 2, 2001
`
`For:
`
`X (Mark, IC 1, 5, 17 & 19)
`
`Assistant Commissioner for Trademarks
`
`Box RESPONSES
`
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`NO FEE
`
`
`
`Sir:
`
`Enclosed for filing in connection with the above-identified matter are the followin
`““.-J
`documents:
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`1) Request for Reconsideration
`2) Notice of Appeal
`
`8!‘cl'E?1vi€0
`
`The Commissioner is hereby authorized to charge any additional fees associated fiith
`communication or credit any overpayment to Deposit Account Number 10-0233—NAN.I;‘900'2i-Eli
`TM.
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`CD
`
`Respectfully submitted,
`
`/%§
`
`Ajay A. Jagtiani
`Attorney for Applicant
`
`JAGTIANI + GUTTAG
`
`Democracy Square Business Center
`103 79-B Democracy Lane
`Fairfax, Virginia 22030
`
`(703) 591-2664
`
`February 24, 2003
`
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