1 MARK EXAMINATION WORII: SET
`
`.. PUBLICATION/REGISTRAT@l:Lj§j'7A§E)(YL
`NO CHANGE
`El AMENDMENT STAGE
`DateX 2/2003‘
`SerialNo. 75 76@
`Name:
`‘TANYA WINSTON OW S
`L.O.
`110
`INSTRUCTIONS: Place a check mark in the appropriate column and/or box to indicate which data elements have been amended/coded.
`
`Le ; al Instrument Examiner (LIE
`
`— C
`
`lass Data —
`
`-_—
`
`lb
`El
`L! Word Mark
`
`Mark Data _
`_ El Mark Drawing Code
`- El Scan Sub Drawing
`Cl Mark Description
`El Lining/Stippling
`El Translation
`
`Misc. Mark Data
`
`'
`
`Correction to filing basis
`El Pseudo Mark
`.
`
`El Design Search Code
`Re-Scan drawing
`El Disclaimer
`. CI Namel Portrait/Consent
`
`Section 2(1)
`
`E] Section 2(1) Entire Mark
`
`Foreign Reg. Data
`
`Owner Data
`
`D Section 2(f) Limitation Statement
`
`y El Section 2(f) in Part
`
`El Amended Register
`
`_ El Amended Register Date
`
`El Foreign Country
`El Foreign Application Number
`
`El 44(d)
`El Foreign Application Filing Date
`
`El Foreign Registration Number
`
`Cl Foreign Registration Date
`
`Cl Foreign Registration Expiration Date
`
`El Foreign Renewal Reg. Number
`
`Cl Foreign Reg. Renewal Expiration Date
`El Owner Name
`
`Cl Foreign Renewal Reg. Date
`[I DBA/AKA/TA
`
`CI Address 1
`
`El City
`
`El Zip Code
`
`El Citizenship
`
`El Entity Statement
`
`El Assignment(s)/Name Change
`
`El Address 2
`
`E! State
`
`El Entity
`
`Cl Composed of
`
`Amd/Corr Restr.
`
`U Concurrent Use
`
`Prior U.S. Reg. _ El Prior Registration
`Correspondence — El Attorney
`- Cl Attorney Docket Number
`— El Correspondence Fir1nName/Address
`I certify that all corrections have been entered in accordance with text editing guidelines.
`
`El Domestic Representative
`E-mail address
`
`Tanya Winston Owens
`
`LIE
`
`3 Z /2003
`
`DATE
`
`

`
`PTO Form. 1553 (Rev 4/2000)
`
`OMB Control #0651-0009 (Exp. 08/31/2004)
`
`Trademark/Service Mark Statement of Use
`(15 U.S.C. Section 1051(d))
`
`To the Commissioner for Trademarks:
`
`MARK: ECOSURE
`SERIAL NUMBER: 78037804
`
`This Allegation of Use is being filed after a Notice of Allowance has issued.
`
`The applicant, Ecolab Inc., residing at ERC-840, 370 Wabasha Street N. , St. Paul, MN US 55102, is using or is using
`through a related company the mark in commerce on or in connection with the goods and/or services as follows:
`For International Class: $5 all goods and/or services as listed in the Notice of Allowance.
`The mark was first used at least as early as 11/09/2000, and first used in commerce at least as early as 12/19/2001, and
`is now in use in such commerce. The applicant is submitting one specimen for the class showing the mark as used in
`commerce on or in connection with any item in the class, consisting of a(n) Scanned image of service brochure
`Specimen- l
`Specimen-2
`
`For International Class: 042 all goods and/or services as listed in the Notice of Allowance.
`The mark was first used at least as early as 11/09/2000, and first used in commerce at least as early as 12/19/2001, and
`is now in use in such commerce. The applicant is submitting one specimen for the class showing the mark as used in
`commerce on or in connection with any item in the class, consisting of a(n) Scaimed image of product brochure
`Specimen- 1
`Specimen-2
`
`A fee payment in the amount of $200 will be submitted with the form, representing payment for 2 classes.
`
`Declaration
`
`Applicant requests registration of the above-identified trademark/service mark in the United States Patent and
`— Trademark Office on the Principal Register established by the Act of July 5, 1946 (15 U.S.C. Section 1051 et seq., as
`amended). Applicant is the owner of the mark sought to be registered, and is using the mark in commerce on or in
`connection with the goods/services identified above, as evidenced by the attached specimen(s) showing the mark as
`used in commerce.
`
`The undersigned being hereby warned that willful false statements and the like are punishable by fine or
`imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements and the like may
`jeopardize the validity of this document, declares that he/she is properly authorized to execute this document on behalf
`of the d all statements made of his/her own knowledge are tmeand that all statements made on information
`and belief are believed to be true.
`
`Signature: /erc/ Date: 06/27/2003
`Signatory's Name: Edward R. Courtney
`Signatory's Position: Associate Trademark Attorney
`
`Go Back
`
`

`
`FEE RECORD SHEET 0’
`
`A
`
`.
`
`-Tgerial Number:
`
`//7 C73
`78037804
`
`RAM Sale Number: 169
`
`Total Fees:
`
`$200
`
`RAM Accounting Date: 20030630
`
`lllliilillllllmllllllllmllllIIHNIIWINIHIIW
`
`Transaction
`'
`
`Fee
`Code
`
`Transaction
`Date
`
`Fee per
`Class
`
`Total
`Number
`of Classes &
`
`Statement of Use (SOU)
`
`7003
`
`20030630
`
`$100
`
`$200
`
`

`
`PTO Form 1553 (REV 4/2000)
`OMB Control #O651—U009 (Exp. O8/31/2004)
`
`Statement of Use Filing
`
`The table below presents the data as entered.
`
`—
`
`cm
`
`OWNER AUTHORIZED TO COMMUNICATE
`VIA E-MAIL
`
`Yes
`
`—
`
`——
`
`

`
`I
`
`KEEP EXISTING GOODS AN" “;R SERVICES
`
`INTERNATIONAL CLASS
`
`V
`
`042
`
`‘
`
`_
`
`—
`
`
`
`Q
`
`

`
`.. ,,\
`
`‘
`
`I
`
`Patent and Trademark Office (PTO)
`
`N
`
`'
`
`Page 01 of 01
`
`(NOTE: If any data on this notice is incorrect, plcase submit a written request for correction of the NOA to: Assistant Commissioner for Trademarks,
`Box ITU, 2900 Crystal Drive, Arlington, VA 22202-3513. Please include the serial number of your application on ALL correspondence with the PTO.
`15 U.S.C.
`lO63(b)(2))
`
`NOTICE OF ALLOWANCE
`
`ISSUE DATE OF NOA:Jan 7,2003
`
`ECOLAB INC.
`370 WABASHA ST N
`SAINT PAUL MN 55102
`
`The following information should be reviewed for accuracy:
`
`SERIAL NUMBER: 78/03780h
`MARK:
`ECOSURE
`OWNER:
`Ecolab Inc.
`370 wabasha Street N.
`St. Paul, MINNESOTA
`
`55102
`
`This application has the following bases, but not necessarily for all
`Section l(a): N0
`Section l(b): YES
`Section hh(e): N0
`
`listed goods/services:
`
`GOODS/SERVICES BY INTERNATIONAL CLASS
`
`035—Preparing business reports in the field of food safety; business auditing in the field
`of food manufacturing; business evaluation of food manufacturing recalls
`
`0h2-Conducting inspections regarding food safety; providing consulting services in the
`field of food safety,
`food manufacturing and food manufacturing recalls; designing
`food safety programs for others
`
`ALL OF THE GOODS/SERVICES IN EACH CLASS ARE LISTED
`
`""““‘ “°’”’
`
`ADDITIONAL INFORMATION MAY BE PRESENT IN THE PTO RECORDS
`
`

`
`El AMENDMENT
`STAGE
`
`T&ADEMARK EXAMINATION §HEET
`Q/NO CHANGE
`PUEUCATION/REGISTRATION STAGE
`
`Serial No. 74 75 76 0 37 Qotf
`Date 3/_L/02
`Lo. 110
`Name:__CURTIS NELLOMS
`INSTRUCTIONS: Place a check mark in the appropriate column and/or box to indicate which data elements have been amended/coded.
`
`Leal Instrument Examiner (LIE)
`
`Class Data _ U Prime/International Class
`B First Use Date
`
`Cl
`
`El
`
`In Another Form
`
`lb
`
`Mark Data
`
`El Word Mark
`
`Misc. Mark Data
`
`"Cl Mark Drawing Code
`
`U Scan Sub Drawing
`
`U Mark Description
`
`El Lining/Stippling
`U Translation
`
`Cl Section 2(t) Entire Mark
`
`DmE'emen*
`Cl Goods and Services
`El First Use in Commerce Date
`
`C] Certification
`
`D Pseudo Mark
`
`L_.l Design Search Code
`
`[3 Disclaimer
`
`El Name/Portrait/Consent
`
`D Section 2(t) Limitation Statement
`
`E] Section 2(t) in Part
`
`D Amended Register
`
`Cl Amended Register Date
`
`Foreign Reg. Data
`
`Cl Foreign Country
`
`Ci 44(d)
`
`Owner Data
`
`Cl Foreign Application Number
`
`E] Foreign Application Filing Date
`
`El Foreign Registration Number
`
`[I Foreign Registration Date
`
`Cl Foreign Registration Expiration Date
`
`Cl Foreign Renewal Reg. Number
`
`El Foreign Reg. Renewal Expiration Date U Foreign Renewal Reg. Date
`E] Owner Name
`El DBA/AKA/TA
`
`El Address 1
`
`El City
`
`U Zip Code
`
`El Citizenship
`
`D Entity Statement
`
`Cl Assignment(s)/Name Change
`
`[3 Address 2
`
`[3 State
`
`El Entity
`
`El Composed of
`
`ceeeeeeeeaeeee1
`
`_:
`
`I certify that all corrections have been entered in accordance with text editing guidelines.
`CN
`LIE
`
`Other:
`
`

`
`UNITED STATES. PATENT AND TRADEMARK OFFICE
`
`JUL 2 5 2002
`
`SERIAL NO: 78/037804
`
`APPLICANT: Ecolab Inc.
`
`CORRESPONDENT ADDRESS:
`‘
`ECQLAB INC.
`370 WABASHA sr N
`SAINT PAUL MN 55102
`
`“
`
`MARK:
`
`ECOSURE
`
`CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
`
`CORRESPONDENT EMAIL ADDRESS:
`N/A
`
`RE: Serial Number 78/037804
`
`RETURN ADDRESS:
`Commissioner for Trademarks
`290° Crystal D11“
`Arlington, VA 22202-3513
`ecom110@uspto.gW
`
`Ifno fees are enclosed, the address should
`include the words "Box Responses - No Fee."
`
`~
`
`Plea” P‘°Vid° i“ an °°“°SP°“d°“°°’
`1. Filing date, serial number, mark and
`applicant's name.
`3. Examining Attorney's name and
`2. Date ofthis Office Action.
`Law Office number.
`4. Your telephone number and email
`address.
`
`EXAMINER’S AMENDMENT
`
`the
`In accordance with the authorization granted by Michael L. Gannon on July 9, 2002,
`application has been AMENDED as indicated below. Any future amendments to the identification
`of goods or services must be in accordance with 37 C.F.R. 2.71(a); TMEP section l402.07(e). No
`response is necessary unless there is an objection to the amendment. If there is an objection to the
`amendment, the applicant should notify the examining attorney immediately.
`
`The examining attorney has searched the Office records and has found no similar registered or
`pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C.
`§1052(d). TIVIEP §704.02.
`
`Recitation and Classification ofServices
`
`The recitation of services is amended to read as follows:
`
`Preparing business reports in the field of food safety; business auditing in the field of food
`manufacturing; business evaluation of food manufacturing recalls. International Class 035.
`
`

`
`Conducting inspections regarding food safety; providing consulting services in the field of food
`safety, food manufacturing and food manufacturing recalls; designing food safety programs for
`others. International Class 042.
`
`Trademark Examining A orney
`Law Office 110
`
`(703) 308-9110 ext. 221
`(703) 746-8110 fax
`ecom110@uspto.gov (formal responses only)
`Ramona.Orti a us to. ov (for informal responses)
`
`CHANGE OF CORRESPONDENCE ADDRESS
`
`Applicants may now file changes of correspondence address via a new fonn on TEAS. Address changes may be
`performed on up to 20 cases at a time. The Trademark Office strongly encourages applicants to use this time-saving
`form which is available online at: <h@://eteasuspto.gov/V2.0/ca200/WIZARD.htm>
`
`

`
`TRADEMARK EXAMINATION WORKSHEET
`
`UAMENDMENT STAGE
`
`._l NO CHANGE
`
` 4 ‘ XTION/REGISTRATION STAGE
`
`"neck mark in the appropriate column and/or box to indicate which data elements have been amended/coded.
`
`Lea] Instrument Examiner (LIE)
`
`El Prime/International Class
`
`4 El First Use Date
`El
`In Another Form
`
`Cl
`
`lb
`
`_ 1:! Word Mark
`El Mark Drawing Code
`- El Sizing/Lining Code
`El Mark Description
`- El Lining/Stippling
`El Translation
`
`_
`
`Data Element
`Cl Goods and Services
`
`B First Use in Commerce Date
`El Certification
`
`El Assign Current Filing basis
`
`D Pseudo Mark
`C! Design Search Code
`Cl Sean Drawing Page
`— U Disclaimer
`CI Name/Portrait/Consent
`El Transliteration
`
`Misc. Mark Data
`
`S E
`
`l Section 2(t) Limitation Statement
`
`El Amended Stamp
`
`oreign Reg. Data
`
`U Amended Register
`El Foreign Country
`
`El Foreign Registration Number
`
`El Foreign Registration Expiration Date
`
`El Foreign Reg. Renewal Expiration Date
`El Owner Name
`
`III Addressl
`
`El City
`
`Cl Zip Code
`
`Cl Citizenship
`
`El Entity Statement
`
`Cl Amended Register Date
`
`44(d)
`
`Foreign Application Filing Date
`
`Foreign Registration Date
`
`Foreign Renewal Reg. Number
`
`Foreign Renewal Reg. Date
`DBA/AKA/TA
`Address 2
`
`State
`
`E—mail address (Applicant)
`
`Entity
`
`lZlE|UElE]ElEl
`El|IlEllIlD
`
`D
`
`:_— C
`
`orrespondence:
`_
`
`I certify that all corrections have been entered in accordance with text editing guidelines.
`
`Other:
`
`__ DL
`LIE
`
`05/21/02
`DAT_E
`
`

`
`TRAPFMARK EXAMINATION WORKSHFET
`
`El PUBLICATION/REGISTRATION STAGE
`E3 NO CHANGE
`WAMENDMENT STAGE
`seraaiNo.‘"I%(O57E"§©‘7L
`110 Dates/630/02
`Name: RANELL GRAY L.O.
`INSTRUCTIONS: Place a check mark in the appropriate column and/or box to indicate which data elements have been amended/coded.
`
`Leal Instrument Examiner LIE
`— Amen“
`
`EIEIEI
`
`Misc. Mark Data
`
`Prime/International Class
`
`First Use Date
`In Another Form '
`
`Word Mark
`
`Mark Drawing Code
`
`Scan Sub Drawing
`
`Mark Description
`Lining/Stippling
`Translation
`
`.
`
`Dat Element
`
`E’"'Goods and Services
`
`E] First Use in Commerce Date
`CI Certification.
`
`El Pseudo Mark
`
`El Design Search Code
`
`[I Disclaimer
`U Name/Portrait/Consent
`
`El Section 2(f) Entire Mark '
`
`El Section 2(t) Limitation Statement
`
`Cl Section 2(t) in Part
`
`’
`
`Cl Amended Register
`
`CI Foreign Country
`
`Cl Amended Register Date
`
`El 44(d)
`
`Cl Foreign Application Number
`El Foreign Registration Number
`El Foreign Registration Expiration Date
`
`D Foreign Reg. Renewal Expiration Date
`
`U Foreign Application Filing Date
`I] Foreign Registration Date
`El Foreign Renewal Reg. Number
`CI
`-Foreign Renewal Reg. Date
`
`Owner Name
`
`CID
`Address]
`I] 9«'2
`E‘.-6 Ooca.(D
`
`EIEIEI
`
`Citizenship
`Entity Statement
`
`El Assignment(s)/Name Change
`
`El Concurrent Use
`
`U Prior Registration
`
`L
`El Attorney
`El Attorney Docket Number
`
`I certify that all corrections have been entered in accordance ith text editing guidelines.
`
`Cl Correspondence Firm Name/Address
`
`RANELL GRAY
`LIE
`
`U DBA/AKA/TA
`
`U Address2
`El State
`
`CI Entity
`El Composed of
`
`El Domestic Representative
`
`

`
`To:
`Subject:
`
`Edward.Courtney@eco|ab.com
`RE: Serial No. 78/037,804 (ECOSURE)
`
`Your e-mail message has been received by ecom110@uspto.gov, at the
`U.S. Patent and Trademark Office.
`
`If you submitted something OTHER than a formal response to an Office
`Action or a preliminary amendment to a pending application, such as
`questions or comments please address your question or comment to
`one of the following places, as this message is automatically generated:
`—If you have received an Office Action from a specific Examining
`Attorney, you should contact that Examining Attorney directly using the
`information that appears at the bottom of the Office Action.
`-If your question or comment
`is not directed toward a specific
`Examining Attorney please resend you question or comment
`to
`TrademarkAssistanceCenter@uspto.gov.
`
`The address ecom110@uspto.gov is for formal responses only and is not
`to be used for general questions inquiring about the status of applications,
`instructions on responding, etc.
`
`response to an Office Action or a preliminary
`If you sent a formal
`amendment, it will be acted upon within the course of regular examination
`of your original filing. Please do not send the same response or amendment
`in via mail, facsimile or any other means, as it will only slow the prosecution
`of the application.
`
`Monday, March 18,2002 9:34 AM V
`ecom110@uspto.gov
`Serial No. 78/037,804 (ECOSURE)
`
`Subject:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`OFFICE OF THE ASSISTANT COMMISSIONER FOR TRADEMARKS
`
`Examining Attorney: Ramona F. Ortiga
`Law Office: 110
`
`Applicant: Ecolablnc.
`Serial No: 78/037,804
`Filing Date: December 5, 2000
`Mark: ECOSURE
`
`Due Date: September 11, 2002
`
`

`
`Dear Sir or Madam:
`
`This Amendment and Response is being filed in reply to the Final Office
`Action dated March 11, 2002 to which a proper response is due on or before
`September 11, 2002.
`
`AMENDMENT
`
`Identification of Services
`Please amend the description of Applicant's identification of services as
`follows:
`v
`International Class 035£Designing food safety programs for others;
`preparing business reports in the field of food safety; business auditing in
`the field of food manufacturing; business evaluation of food manufacturing
`recalls)
`International Class 042:[Conducting inspections regarding food safety;
`providing consulting services in the field of food safety, food
`manufacturing and food manufacturing recalls)
`
`RESPONSE
`
`1.0 The Examining Attorney has objected to Applicant's identification of
`services on the grounds that the present description is unacceptable as
`indefinite.
`
`Applicant has amended the identification of services in lntemational Class
`035 to "Designing food safety programs for others; preparing business
`reports in the field of food safety; .business auditing in the field of food
`manufacturing; business evaluation of food manufacturing recalls" in
`accordance with the Examining Attorney's suggestion. Applicant has amended
`its description to accurately describe the goods associated with the mark
`ECOSURE.
`It should be noted that the amended identification of goods does
`not expand the scope of protection, but rather limits the protection sought
`under lntemational Class 035.
`
`Additionally, Applicant has amended the identification of services in
`International Class 042 to "Conducting inspections regarding food safety;
`providing consulting services in the field of food safety, food
`manufacturing and food manufacturing recalls" in accordance with the
`Examining Attorney's suggestion. -Applicant has amended its description to
`accurately describe the goods associated with the mark ECOSURE.
`It should
`be noted that the amended identification of goods does not expand the scope
`of protection, but rather limits the protection sought under International
`Class 042.
`
`CONCLUSION
`
`Reconsideration and registration of the mark ECOSURE is respectfully
`solicited in view of the discussion provided herein.
`
`

`
`Respectfully submitted this 18th day of March 2002,
`
`ECOLAB INC.
`
`/ercl
`
`Edward R. Courtney, Esq.
`Law Department
`840 Sibley Memorial Highway
`Mendota Heights, Minnesota 55118
`(651) 306-4293
`edward.courtney@eco|ab.com
`
`

`
`"\
`UNITED Sr.~ATES PATENT AND TRADE
`
`MARK OFFICE
`
`SERIAL NO.
`‘F3933,’ 1312’-“.:’=3iIZie:l Enzrzalalzs
`
`-Inc.
`
`APPLICANT
`
`p
`
`MARK
`E!3!Ll$lJRE ‘
`ADDRESS
`§~Z£:x:e1a:tt:v
`.l1r‘sr.:..
`IZ%'?£I
`l-\lt-'5lEt§-‘i§i"“is"3i 3T M
`t3F§Il\i"l'
`F’t'3‘ll..li.. MN E.L'51!I!3.-";‘~’1IE€lIi7
`
`ACTION NO.
`II!
`
`FORM PTQ21525 (5690)
`
`U.S.. DEPT. OF COMM. PAT. & TM OFFICE
`
`PAPER NO.
`
`ADDRESS:
`Commissioner for Trademarks
`2900 Crystal Drive
`Arlington, VA 22202-3513
`www.uspto.gov
`
`lfno fees are enclosed, the address should include
`the words "Box Responses - No Fee."
`
`Please provide in all correspondence:
`
`. Filing Date, serial number, mark and
`Applicant's name.
`. Mailing date of this Office action.
`. Examining Attorney's name and
`Law Office number.
`. Your telephone number and ZIP code.
`
`A PROPER RESPONSE TO THIS OFFICE ACTION MUST BE RECEIVED WITHIN 6
`MONTHS FROM THE DATE OF THIS ACTION IN ORDER TO AVOID ABANDONMENT.
`
`For your convenience and to ensure proper handling ofyour response, a label has been enclosed.
`Please attach it to the upper right corner ofyour response. Ifthe label is not enclosed, print or type
`the Trademark Law Office No., Serial No., and Mark in the upper right corner ofyour response.
`
`RE: Serial Number: 78/037804
`
`This letter responds to the applicant's communication filed on November 26, 2001.
`
`Final Requirement — Identification And Classification Of Goods
`
`The applicant amended the recitation of services which is unacceptable. The requirement to submit
`an acceptable recitation and classification of services is maintained and made FINAL.
`
`The recitation of services is unacceptable as indefinite. Specifically, the terms “certification” and
`“audit and consulting services” are unacceptable. TMEP section 1301.05. The applicant may
`adopt the following recitation, if accurate:
`
`Designing food safety programs for others; preparing business reports in the field of food
`safety; business auditing in field of food manufacturing; business evaluation of food
`manufacturing recalls. International Class 035.
`
`Conducting inspections regarding food safety; providing consulting services in the field of
`food safety, food manufacturing, and food manufacturing recalls. International Class 042.
`
`

`
`78/037804
`
`-2-
`
`Please note that, while an application may be amended to clarify or limit the identification,
`additions to the identification are not permitted. 37 C.F.R. Section 2.7l(a); TMEP section 804.09.
`Therefore, the applicant may not amend to include any services that are not within the scope of the
`services recited in the present identification.
`
`The applicant may wish to consult the on-line identification manual on the PTO homepage for
`acceptable common names of services.
`
`http://www.uspto.gov/web/offices/tac/doc/gsmanual/
`
`Response By Applicant
`
`Please note that the only appropriate responses to a final action are either (1) compliance with the
`outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and Appeal
`Board.
`37 C.F.R. Section 2.64(a).
`If the applicant fails to respond within six months of the
`mailing date of this refusal, this Office will declare the application abandoned. 37 C.F.R. Section
`2.65(a).
`
`If the applicant has any questions or needs assistance in responding to this FINAL Office action,
`please telephone the assigned examining attorney.
`
`
`
`Ra aF.Ortiga Trademark Examining Atto e
`
`Law Office 110
`(703) 308-9110 ext. 221
`(703) 746-8110 fax
`ecom110@,uspto.gov (formal responses only)
`Ramona.Ortiga@uspto.gov (for informal responses)
`
`NOTICE FOR APPLICANTS FILING IN INTERNATIONAL CLASS 42
`
`Effective January 1, 2002, the 8th edition of the Nice Agreement governing the classification of
`goods and services divided prior International Class 42 into four service mark classes. Information
`about revised International Class 42 and new International Classes 43, 44, and 45 is available at
`www.uspto. gov/web/offices/tac/notices/notices.htm.
`
`All applicationsfiled on or after January I, 2002, must comply with the new classification
`schedule. For applications filed before January 1, 2002, the new classification schedule is
`optional. Applicants opting to amend to the new schedule must advise the assigned Examining
`Attorney.
`
`

`
`. TRADEMARK EXAMINATION WORKSHEET
`
`El PUBLIC: ; FION/REGISTRATION STAGE
`[:.I NC CHANGE A
`E/AMENDMENT STAGE
`Name: David Lavine L.O. 110 Date: 01/29/02 Serial No.: 74/75/76/'®§
`§
`INSTRUCTIONS: Place a check mark in the appropriate column and/or box to indicate which data elements have been amended/coded.
`
`Le a] Instrument Examiner (LIE
`_ A“*e""“'
`
`5 Prime/Intemational Class
`
`11:1‘
`EILIEI
`EIEIEI
`
`First Use Date
`
`‘
`
`In Another Form
`
`0rd Mark
`
`ark Drawing Code
`
`SizinglLining Code
`
`2Z;
`
`Data Element
`
`Goods and Services
`
`First Use in Commerce Date
`
`Certification
`
`Assign Current Filing basis
`
`Pseudo Mark
`D $§:5" OOa
`
`Scan Drawing Page
`
`uunnuunnu 530%.
`
`Disclaimer
`ark Description
`Name/Portrait/Consent -
`-
`Lining/Stippling
`Translation
`
`Misc. Mark Data
`
`ction 2(f)
`
`Foreign Reg. Data
`‘lac
`
`-_--—-__-j_ i
`
`Section 2(f) Entire Mark
`U)
`ection 2(f) Limitation Statement"
`>
`
`mended Register
`
`El Section 2(t) In Part
`El Amended Stamp
`
`Cl Amended Register Date
`
`oreign Country
`oreign Application Number
`
`Ll 44(d)
`Cl Foreign Application Filing Date
`
`oreign Registration Number
`
`D Foreign Registration Date
`
`oreign Registration Expiration Date
`"11oreign Reg. Renewal Expiration Date
`0
`wner Name
`
`El Foreign Renewal Rec. Number
`
`El Foreign Renewal Reg. Date
`El DBA/AKA/TA
`
`Address 1
`
`51.9-1:0'2‘0%
`
`Citizenship '
`
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`
`Amd/Corr Restr.
`
`Prior U.S. Reg.
`
`Correspondence
`
`El
`
`Entity Statement
`
`El Assignment(s)/Name Change
`
`El Concurrent Use
`El Prior Registration
`
`El Attorney
`E] Attorney Docket Number
`
`Cl Correspondence Firm Name/Address
`
`El Address 2
`El State
`
`Cl E-mail address (Applicant)
`
`UU
`
`Cl Entity
`
`El Composed of
`
`_
`
`El Domestic Representative
`El E-mail address (Attorney)
`
`I certify that all corrections have been entered in accordance with text editing guidelines.
`_DL
`LIE
`
`'
`
`01/29'/02
`DATE
`
`€
`

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`SERVICE MARK
`
`:90 U C
`
` .
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In Re Application of:
`
`Ecolab Ir1c.
`
`Serial No. 78/037,804
`
`Filed: December 5, 2000
`
`Mark: ECOSURE
`
`Trademark Law Office: 1 10
`
`Examining Attorney: Ramona F. Ortiga
`
`Atty. Docket: 11434-112001
`
`<07o0’>C09€0'>€oO'JOO’><0>€0><0'>C»0>
`
`CERTIFICATE OF MAILING
`37 C.F.R. 1.8
`
`I hereby certify that this correspondence is being deposited with
`the U.S. Postal Service as First Class Mail
`in an envelope
`addressed to: Assistant Commissioner for Trademarks, 2900
`Crystal Drive, Arlington, Virginia 22202-3513, on the date below;
`
`RESPONSE TO OFFICE ACTION DATED MAY 24, 2001
`
`BOX RESPONSES - FEE
`Assistant Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`AMENDMENT
`
`Please amend the above-identified application by deleting the recitation of
`
`services in International Class 42 and substituting the following:
`
`/
`
`—'-/Designing food safety programs for others; preparing"husiness reports in the
`field of food safety; providing consulting services in the field of food safety
`certification;provi
`g consulting and evaluation services in the field of food
`manufacturing recallsglaudit and consulting service in the field of food
`manufacturing, all in International Class 353
`V
`.
`.
`] Conducting inspections regarding food safety, in International Class 42,--
`11IZlI2001 GTIIIIISB 00000044 70037804
`
`01 I-'D:3£1
`
`325.00 (P
`
`

`
`REMARKS
`
`This responds to the Office Action issued on May 24, 2001 wherein the Examining
`
`Attorney initially refused registration of Applicant’s mark because the services identified in
`
`the application may be classified in multiple International Classes.
`
`In addition,
`
`the
`
`Examining Attorney objected to the recitation of services as being indefinite.
`
`To put the application in proper order, Applicant submits the above Amendment,
`
`thereby reciting with greater particularity the services to be offered under Applicant’s
`
`mark.
`
`In addition, Applicant has re-classified its services
`
`into the appropriate
`
`International Classes, namely International Classes 35 and 42. Finally, Applicant has
`
`submitted the necessary filing fee for the additional International Class.
`
`With the Examining Attorney’s acceptance of the above Amendment and the
`
`enclosed filing fee, Applicant submits that
`
`the application is in proper form for
`
`publication. Accordingly, Applicant respectfully requests that the Examining Attorney
`
`issue a Notice of Publication.
`
`Respectfully submitted,
`
`ECOLAB INC.
`
`. Gannon, Esq.
`Michael
`FISH & RICHARDSON P.C., P.A.
`3300 Dain Rauscher Plaza
`60 South Sixth Street
`
`Minneapolis, Minnesota 55402
`(612) 337-2519
`
`Attorneys for Applicant
`
`60062351.doc
`
`

`
`FISH
`
`RICHARDSON I>.C.,i.._s
`
`llllllllllllllllllllllllllllllllIlllllllllllllllll
`
`11 er Plaza
`U.S. PI1IInt& 'l'MOfclTM Mlll RC9! Dt. #26
`‘CH
`1
`
`Frederick P. Fish
`185;-1930
`
`WK. Richardson
`1859-1951
`
`November 20 2001
`
`/,1; 1 /0
`
`Telephone
`612 335—5o7o
`
`Facsimile
`
`6” 2889696
`Web Site
`WWW. fr.com
`
`BOX RESPONSES — FEE
`Assistant Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`Re: ECOSURE
`
`Serial No. 78/037,804
`Our Ref: 11434-112001
`
`Sir:
`
`Enclosed for filing in the above-identified trademark application is:
`
`fit
`BOSTON
`DALLAS
`
`DELAWARE
`
`NEW YORK
`
`SAN DIEGO
`
`SILICON VALLEY
`
`TWIN CITIES
`
`WASHINGTON, DC
`
`(1)
`
`(2)
`
`A Response to Office Action dated May 24, 2001;
`
`Check in the amount of $325.00 for filing fee for additional International
`Class; and
`
`(3)
`
`I A return postcard to acknowledge receipt of these inaterials.N]:lease date-
`....—
`stamp and return this postcard.
`egg
`‘
`g--
`3-
`In the event the check is omitted, or the amount is insufficient, or addjtififial fegzstgte
`required in connection with this application, please charge all necessaryg‘<)vernrri‘e‘,iit
`c: 3
`av.'.—TZ3
`....._
`T34
`DJ-v
`nu
`:9
`
`CERTIFICATl:' OI’ MAILING BY FIRST CLASS
`MAII.
`
`this
`that
`I hereby certify under 37CFR §l.8(a)
`correspondence is being deposited with the United
`States Postal Service as first class mail with sufficient
`postage on the date indicated below and is addressed to
`the Commissioner for Trademarks, 2900 Crystal Drive,
`Arlington, VA 22202-3513.
`
`November 20 2001
`
`Date of Deposit
`
`Signature
`
`Kaila."&.
`
`Chris Kusilek
`Typed or Printed Name of Person Signing Certificate
`
`IL
`
`

`
`F1sH 8: R__,;HARDsoN P.C.,P.A.
`
`Assistant Commissioner for Trademarks
`November 20, 2001
`Page 2
`
`fees or credit any overpayment to the Deposit Account of Fish & Richardson, Deposit
`Account No. 06-1050.
`
`MLG/oak
`
`Enclosures
`60062999.doc
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`PAPER NO.
`
`APPLICANT
`
`‘
`I sERiAL NO.
`T '1!"
`""'i3.-" ..
`"."'I:'?5II -2‘. E:;:s:::: J
`ADDRESS:
`.i.z~......
`4
`#7 M? if
`417
`1
`J
` mj Commissioner for Trademarks
`W ,,H__
`N: _
`2900 Crystal Drive
`‘--‘---"*”-~”"*‘=-
`Arlington, VA 22202-3513
`www.uspto.gov
`Ifno fees are enclosed, the address should include the
`words "Box Responses - No Fee."
`
`A?" No.
`
`_ FORM PTO-1525 (5-90)
`
`U.s. DEPT. OF comm. PAT. arm OFFICE
`
`'““lH.!!«‘{1:zEl=‘I.s'§
`
`Please provide in all correspondence:
`
`1. Filing Date, serial number, mark and
`Applicant's name.
`. Mailing date of this Office action.
`. Examining Attorney's name and
`Law Office number.
`. Your telephone number and ZIP code,
`
`A PROPER RESPONSE TO THIS OFFICE ACTION MUST BE RECEIVED WITHIN 6
`MONTHS FROM THE DATE OF THIS ACTION IN ORDER TO AVOID ABANDONMENIZ
`
`For your convenience and to ensure proper handling ofyour response, a label has been enclosed.
`Please attach it to the upper right corner ofyour response. If the label is not enclosed, prim or type
`the Trademark Law Ofzzce No., Serial No., andMark in the upper right corner ofyour response.
`
`RE: Serial Number: 78/037804
`
`The assigned examining attorney has reviewed the referenced application and determined the
`following.
`
`Search of Office Records TMEP section 110501.
`
`The examining attorney has searched the Office records and has found no similar registered or
`pending mark which would bar-registration under Trademark Act Section 2(d), 15 U.S.C. Section
`1o52(d).
`
`Multi-Class Apglication
`
`The application identifies services that may be classified in several international classes.
`
`(1) restrict the application to the number of classes covered by the fee
`The applicant must either:
`already paid, or (2) pay the required fee for each additional class. 37 C.F.R. Section 2.86(a)(2);
`TMEP sections 810.01 and 1113.01.
`'
`'
`
`If the applicant prosecutes this application as a combined, or multiple—class, application,
`applicant must comply with each of the following.
`'
`
`the
`
`

`
`78/037804
`
`-2-
`
`(l) The applicant must list the services by international class with the classes listed in
`ascending numerical order. TMEP section 1113.01.
`
`(2) The applicant must submit a filing fee for each international class of services not
`covered by the fee already paid. 37 C.F.R. Sections 2.6(a)(l) and 2.86(b)', TMEP sections
`810.01 and 1113.01. The fee for filing a trademark application is $325 for each class.
`
`Reception and Classification of Services TMEP section 1301.05».
`
`The recitation of services is unacceptable as indefinite. The applicant must amend the recitation to
`indicate the nature of the services and their particular field. The applicant may consider the
`following suggestions.
`
`The wording “food safety program design” in the recitation of services is unclear. The applicant
`may adopt the following, if accurate:
`
`Designing food safety programs for others, in International Class 035.
`
`The wording “food safety inspections” in the recitation of services is unclear. The applicant may
`adopt the following wording, if accurate:
`
`Conducting inspections regarding food safety, in International Class 042.
`
`The wording “food safety reporting” in the recitation of services is unclear. What is the nature of
`the “food safety reporting”? The applicant may adopt the following wording, if accurate:
`
`Preparing business reports in the field of food safety, in International Class 035.
`
`The wording “food safety certificationl” in the recitation of services is unclear. The applicant may
`consider the following wording, if accurate:
`
`[indicate specific mode of
`Educational services, namely, conducting
`instructions, e. g. classes, seminars, conferences, workshops] in the field of food safety
`certification, in International Class 041.
`
`The wording “food manufacturing recalls and evaluations” in the recitation of services is unclear.
`The applicant may adopt the following, if accurate:
`
`Providing information regarding food manufacturing recalls, in International Class 040;
`
`Providing evaluations regarding food manufacturing, namely,
`nature of the evaluations), in International Class 040.
`
`(specify the
`
`‘ The applicant’s service does not appear to be that of a certification mark. A certification mark is one that is used to
`certify a characteristic of another person’s goods or services. Please note that the same mark may not be registered as
`both a service mark and a certification mark. TIVIEP section 1306.
`
`

`
`78/037804
`
`-3-
`
`The wording “food manufacturing audits” in the recitation of services is unclear. The applicant
`may adopt the following wording, if accurate:
`
`Food manufacturing audits, namely,
`International Class 042.
`
`(specify the nature of the audits), in
`
`Please note that, while an application may be amended to clarify or limit the identification,
`additions to the identification are not p