.41
`
`ATTORNEY DOCKET: 76351 .50501
`TRADEMARK
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`In re: Trademark application of
`Stein Seal Company
`
`Serial No: 76/561,725
`
`Filed: November 25, 2003
`
`Mark: MISCELLANEOUS DESIGN (CIRCULAR TWO SEAL LOGO)
`
`Charles N. Quinn
`Reg. No. 27,223
`Fox Rothschild LLP
`
`2000 Market Street, 10”‘ Floor
`Philadelphia, PA 19103
`Tel: 215-299-2135
`Fax: 215-299-2150
`
`Email: cguinn@foxrothschild.com
`Deposit Account: 50-1943
`
`MOTION FOR EXTENSION OF TIME IN WHICH
`
`TO FILE APPEAL BRIEF OR TAKE OTHER ACTION
`
`Commissioner for Trademarks
`
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`Sir:
`
`This is a motion by applicant’s undersigned counsel seeking an additional
`
`two month extension of time, until July 11, 2006, in which to file a brief and/or
`
`take other action in connection with an ex parte appeal with respect to the
`
`aboVe—referenced pending United States trademark registration application, in
`
`the event the accompanying request for suspension of the appeal and remand
`
`of the application filed to the examining attorney is denied.
`
`PH2 25638lvl O5/04/06
`
`_.,—_4§,
`
`O5_O4_6006
`
`u.s. Patent &TMOfclTM Mail Rcpt Di #2?
`
`
`
`ATTORNEY DOCKET: 76351 .50501
`TRADEMARK
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`In re: Trademark application of
`Stein Seal Company
`
`Serial No: 76/561,725
`
`Filed: November 25, 2003
`
`Mark: MISCELLANEOUS DESIGN (CIRCULAR TWO SEAL LOGO)
`
`Charles N. Quinn
`Reg. No. 27,223
`Fox Rothschild LLP
`
`2000 Market Street, 10”‘ Floor
`Philadelphia, PA 19103
`Tel: 215-299-2135
`Fax: 215-299-2150
`
`Email: cguinn@foxrothschild.com
`Deposit Account: 50-1943
`
`MOTION FOR EXTENSION OF TIME IN WHICH
`
`TO FILE APPEAL BRIEF OR TAKE OTHER ACTION
`
`Commissioner for Trademarks
`
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`Sir:
`
`This is a motion by applicant’s undersigned counsel seeking an additional
`
`two month extension of time, until July 11, 2006, in which to file a brief and/or
`
`take other action in connection with an ex parte appeal with respect to the
`
`aboVe—referenced pending United States trademark registration application, in
`
`the event the accompanying request for suspension of the appeal and remand
`
`of the application filed to the examining attorney is denied.
`
`PH2 25638lvl O5/04/06
`
`_.,—_4§,
`
`O5_O4_6006
`
`u.s. Patent &TMOfclTM Mail Rcpt Di #2?
`
`
`
`..Al
`
`ATTORNEY DOCKET: 76351 .50501
`TRADEMARK
`
`A Communication from the Trademark Trial and Appeal Board mailed
`
`March 17, 2006 set the date for response as May 11, 2006.
`
`The reasons for this Motion are set forth in more detail in the attached
`
`Declaration of applicant’s counsel.
`
`To the extent there is any fee required in connection with the receipt,
`
`acceptance and/or consideration of this paper and/or any accompanying
`
`papers submitted herewith, please charge all such fees to Deposit Account 50-
`
`1943.
`
`This motion is submitted in triplicate.
`
`Respectfully submitted,
`
`
`
`J
`
`Che N. uinn
`Attorney for Applicant
`
`
`
`Date: at M/Q ZQQ 5
`
`FOX, ROTHSCHILD LLP
`2000 Market Street, 1 0"‘ Floor
`Philadelphia, PA 1 9 103-3 291
`Tel: 2 1 5-299-2 1 3 5
`
`Fax: 215—299—2 1 50
`email: cquinn@foxr0thschild.com
`
`Certificate of Mailing Under 37 C.F.R. 1.10
`
`EXPRESS MAIL NO.:
`
`Type or print name of person
`
`l hereby certify that this paper, along with any paper referred to as being attached or enclosed and/or
`fee is being deposited with the United States Postal Service, “Express Mail — Post Office to
`Addressee" service under 37 C.F.R. 1.10, on the date indicated below, and is addressed as follows:
`Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313 -- 51.
`<
`-_
`,l'
`«1
`.
`,
`,4
`May 4, 2006
`~‘ &)""/"""‘£\s;7
`Date of Deposit
`‘
`V
`
`PH2 256381v 1 05/04/06
`
`
`
`ATTORNEY DOCKET: 76351.50501
`
`TRADEMARK
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`In re: Trademark application of
`Stein Seal Company
`
`Serial No: 76/561,725
`
`Filed: November 25, 2003
`
`Mark: MISCELLANEOUS DESIGN (CIRCULAR TWO SEAL LOGO)
`
`:
`Charles N. Quinn
`
`Reg. No. 27,223
`Fox Rothschild LLP
`
`2000 Market Street, 10“‘ Floor
`Philadelphia, PA 19103
`Tel: 215-299-2135
`Fax: 215-299-2150
`
`Email: cguinn@foxrothschild.com
`Deposit Account: 50-1943
`
`DECLARATION OF CHARLES N. QUINN
`
`Commissioner for Trademarks
`P.O. Box 145 1
`
`Alexandria, VA 22313-1451
`
`Sir:
`
`1, Charles N. Quinn, hereby declare that I am a citizen of the United
`
`States, residing at 419 Bowen Drive, Exton, Pennsylvania, 19341, a partner in
`
`the law firm of Fox Rothschild LLP having my principal office at 2000 Market
`
`Street, Tenth Floor, Philadelphia, PA 19103-3291, a member in good standing of
`
`the Bar of the Supreme Court of the Commonwealth of Pennsylvania holding
`
`registration number 17,603 therein, admitted in good standing to practice in
`
`patent matters before the United States Patent and Trademark Office and
`
`PH2 2563 82v1 05/04/06
`
`1
`
`
`
`ATTORNEY DOCKET: 76351.50501
`TRADEMARK
`
`holding registration number 27,223 therein, and am the attorney of record for
`
`the applicant on the above-referenced trademark registration application.
`
`I am currently involved in representing the plaintiff in a large patent and
`
`trademark infringement action pending in the United States District Court for
`
`the Southern District of Ohio in Dayton, Ohio; the case is Maguire Products, Inc.
`
`v. Comet Automation Systems, Inc., civil action C-3-03-198.
`
`I am also representing the defendant in a trademark infringement action
`
`pending in the United States District Court for the Eastern District of
`
`Pennsylvania; the case is Factory Mutual Insurance Company and FM Global
`
`Technologies LLC v. Westlake Plastics Company, Inc., Civil Action No. 05-6710.
`
`I am also serving as an expert for the plaintiff in a patent infringement
`
`action pending in the United States District Court for the District of
`
`Massachusetts; the case is Image Therm Engineering, Inc. v. InnovaSystems, Inc.,
`
`Civil Action 05—CA—14244—REK.
`
`As a result of these matters and my other responsibilities in this office, I
`
`need additional time in which to prepare an appeal brief for this application or
`
`to take other action for this application. Accordingly, I respectfully request a
`
`grant of a two—month extension of time for the same, to the extent an appeal
`
`brief may be required at this time.
`
`There is a question in my mind as to whether an appeal is required at this
`
`time in this case, in light of the response paper filed on 5 July 2005 having
`
`PH2 2563 82Vl 05/04/06
`
`
`
`ATTORNEY DOCKET: 76351.50501
`TRADEMARK
`
`amended the recitation of services in this application to comport with the
`
`examining attorney’s suggestion.
`
`The outstanding refusal of registration was and is based largely on
`
`alleged indefiniteness in the recitation of services.
`
`It is my belief that this alleged indefiniteness has been cured.
`
`However, we have not received a paper indicating that the examining
`
`attorney has had the opportunity to review the amendment to the recitation of
`
`services made in the 5 July 2005 submission. Accordingly, we have requested
`
`remand of the application filed to the examining attorney for consideration of
`
`the current recitation of goods in the application and, concomitantly,
`
`suspension of the appeal until there is clarification of the status of the refusal
`
`of registration, if any, for this application.
`
`I hereby declare that all statements made herein are true and that all
`
`statements made herein on information and belief are believed to be true and
`
`further that I realize that false statements and the like so made herein are
`
`punishable by fine, or imprisonment or both, under 18 USC 1001, and further
`
`may jeopardize the validity and enforceability of any registration to issue from
`
`the instant application.
`
`To the extent there is any fee required in connection with the receipt,
`
`acceptance and/or consideration of declaration and/or any accompanying
`
`papers submitted herewith, please charge all such fees to Deposit Account 50-
`
`1943.
`
`PH2 256382vl 05/04/06
`
`
`
`ATTORNEY DOCKET: 76351.50501
`TRADEMARK
`
`Respectfully submitted,
`
`EEMM ,2@% ~~
`
`Charles N. Quinn
`Attorney for Applicant
`
`Fox Rothschild LLP
`
`2000 Market Street, 10”‘ Floor
`Philadelphia, PA 19103-3291
`Tel: (215) 299-2135
`email: cquinn@foxrothschi1d.com
`
`Certificate of Mailing Under 37 C.F.R. 1.10
`
`EXPRESS MAIL NO.: __ EV592208475US
`
`I hereby certify that this paper. along with any paper referred to as being attached or enclosed andlor
`fee is being deposited with the United States Postal Service, “Express Mail - Post Office to
`Addressee" service under 37 C.F.R. 1.10, on the date indicated below, and is addressed to the
`Commissioner for Trademarks, P.0. Box , 1,AIexandria, VA 22
`A
`.
`,
`Map: 2006
`n-$1111, 4:/.“‘4‘i/.‘:‘p' v,
`Date of Deposit
`"
`Signature '
`She
`Bara
`
`-
`
`Type or print name of person
`K/
`
`W7‘ ' was
`
`/I/
`
`PH2 256382v] O5/O4/06
`
`
`
`ATTORNEY DOCKET: 763 5 1.50501
`TRADEMARK
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`In re: Trademark application of
`Stein Seal Company
`
`Serial No: 76/561,72 5
`
`Filed: November 25, 2003
`
`Mark: MISCELLANEOUS DESIGN (CIRCULAR TWO SEAL LOGO)
`
`Charles N. Quinn
`Reg. No. 27,223
`Fox Rothschild LLP
`
`2000 Market Street, 10"‘ Floor
`Philadelphia, PA 19103
`Tel: 215-299-2135
`Fax: 21 5—299—21 50
`
`Email: cguinn@foxrothschild.com
`Deposit Account: 50-1943
`
`REQUEST FOR SUSPENSION OF APPEAL
`AND REMAND TO TRADEMARK EXAMINING ATTORNEY
`FOR CLARIFICATION OF THE STATUS OF THE FILE
`AND OF THE BASIS FOR THE REFUSAL OF REGISTRATION
`
`Commissioner for Trademarks
`P.O. Box 145 1
`
`Alexandria, VA 22313-1451
`
`Sir:
`
`Applicant, through its undersigned counsel, hereby moves the
`
`Board to suspend the appeal in this case and remand this application to
`
`the trademark examining attorney.
`
`PH2 256403v1 05/O4/O6
`
`
`
`ATTORNEY DOCKET: 763 1.50501
`TRADEMARK
`
`On 4 January 2005, the United States Patent and Trademark Office
`
`trademark examining attorney issued a new final refusal of registration
`
`for the mark that is the subject of the instant application, superseding a
`
`final refusal which had been issued 22 October 2004. In the new final
`
`refusal dated 4 January 2005 the examining attorney stated that the
`
`identification of goods in the pending application was excessively
`
`indefinite and that the recitation of services in the pending application
`
`was also excessively indefinite.
`
`A response to that final refusal of registration was submitted 5 July
`
`2005. That response included a request to divide the instant application,
`
`with the request further seeking to have the goods placed into a newly
`
`created child application. As a part of that request, the recitation of
`
`goods was amended to comport with that suggested by the examining
`
`attorney.
`
`As a further part of the 5 July 2005 response, the class 35 services
`
`in the instant application were amended to comport with the examining
`
`attorney’s suggestion. (The recitation of the class 37 services had
`
`previously been deemed acceptable.)
`
`A notice of completion of the divisional request was issued 14
`
`October 2005, noting that the goods in international class 7 had been
`
`placed in a newly created child application, serial number 76/977,813
`
`PH2 256403v1 O5/O4/06
`
`
`
`ATTORNEY DOCKET: 763 5 1.50501
`TRADEMARK
`
`and that the services remained in the original parent application, namely
`
`this application, serial number 76/561,725.
`
`However, there was no paper accompanying the notification of
`
`completion of the divisional request addressing whether the amendment
`
`to the class 35 services, which was made as a part of the response filed 5
`
`July 2005 accompanying the request to divide, had obviated the
`
`examining attorney’s prior objection to the manner in which the class 35
`
`services were recited.
`
`Further accompanying the response paper and the request to
`
`divide filed on 5 July 2005 was a notice of appeal.
`
`Subsequently, applicant’s counsel has filed several motions for
`
`extensions of time to file the appeal brief, based on applicant’s counsel’s
`
`work on other matters, namely patent and trademark infringement
`
`litigation cases.
`
`In reviewing this file, it appears that the amendment to the class 35
`
`services made on 5 July 2005, which was made to cause those services to
`
`comport identically with the examining attorney's suggested recitation of
`
`services, has never been addressed by the examining attorney.
`
`Since the class 35 and 37 services are now believed to fully
`
`comport with the examining attorney's requirements, applicant believes
`
`that there may be no need for an appeal. Accordingly, applicant requests
`
`suspension of the appeal and remand of the application file to the
`
`PH2 256403v1 O5/O4/06
`
`
`
`ATTORNEY DOCKET: 763 5 1.50501
`TRADEMARK
`
`examining attorney for clarification of the status of the file as respecting
`
`the acceptability of the recitation of services in international class 35 and
`
`class 37, so that the basis for the refusal may be clarified, so that the
`
`basis for ongoing refusal, if any, of registration will be clear and that any
`
`appeal brief submitted by the applicant will only need to address a
`
`refusal of registration which is well understood by both the examining
`
`attorney and by applicant’s undersigned counsel.
`
`Accordingly, applicant requests suspension of the appeal and
`
`remand of this application file to the examining attorney for clarification
`
`as to the status of the file and the basis for the refusal of registration.
`
`In light of all of this, out of an abundance of caution, there is also
`
`submitted herewith a motion for an extension of time in which to file the
`
`appeal brief, seeking until an extension of time through 1 1 July 2006.
`
`We respectfully solicit notification of suspension of the appeal and
`
`remand of the file to the examining attorney.
`
`Notification of the suspension of the appeal and remand of
`
`this application to the examining attorney is respectfully solicited.
`
`To the extent there is any fee required in connection with the
`
`receipt, acceptance and/or consideration of declaration and/or any
`
`accompanying papers submitted herewith, please charge all such fees to
`
`Deposit Account 50-1943.
`
`PH2 256403v1 O5/04/O6
`
`
`
`ATTORNEY DOCKET: 763 5 1.50501
`TRADEMARK
`
`Respectfully submitted,
`
`Date: éfi
`
`Attorney for Applicant
`
`Fox Rothschild LLP
`
`2000 Market Street, 10"‘ Floor
`Philadelphia, PA 1 9103-3 291
`Tel: (2 1 5) 299-2 1 3 5
`Fax: (215) 299-2150
`email: cquinn@f0xrothschi1d.com
`
`Certificate of Mailing Under 37 C.F.R. 1.10
`
`EXPRESS MAIL NO.: _ EV592208475US
`
`I hereby certify that this paper, along with any paper referred to as being attached or enclosed andlor
`fee is being deposited with the United States Postal Service, “Express Mail - Post Office to
`Addresses" service under 37 C.F.R. 1.10, on the date indicated below, and is addressed to the
`Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451
`’\
`
`May4,2008
`Date of Deposit
`
`.
`
`'
`
`V
`
`'
`
`3:
`
`'
`
`’
`
`Type or print name of person
`
`PH2 256403v1 O5/O4/O6
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