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Inter-Office Correspondence To M. Robert Wolfson From Subject John R. Heath "Brake King" trade-mark. Date 11/13/59 The trade name "Brake King" Is currently In use in that we are shipping lining Identified and bearing this trade-mark to Super X Brake Lining, Baltimore, Maryland, and Sauerman Sales, Lawton, Oklahoma. We definitely want to retain the registration.. Letter from Cushman, Darby & Cushman, attached. John R. Heath MH Enel. HAD W1L-IAM M,CUSHMAN MAX C.LOUIS C WILLARO HAYS jOHN W. MAULEY PAUL N. XOKULIS IBVIN H, RtMEL AUUCN AIRKPATRlCA CAVID E.VARNER ULOYO J STREET GEORGE T. MOSlLLE JAMES L.OOOLSv ALVIN GUTTAG RAYMOND F.UlPPlTT GEORGE M SIRtLLA G LLOYO KNlGMT. jR RICHARO G. ALINE CARL G.LOVC JOSEPH H.HEARD LAWRENCE A.HYMO Cushman, Dabby & Cvshmas Attorneys at La.w Akeeican Sectjbitt Bcildeko 730 Fifteenth Stbeet, N, W. `Washin'Oton 5, D. C. October Twenty-six 1959 ARLON V. CUSHMAN (1092-10301 JOHN J,, OARQY (I920-.930I ROOGER O. GESSFORO (1032-195?) CABLE MrC'JSHflA e-AX WASHING TELEPHONE NATIONAL 3*3460 Maremont Automotive Products, Inc 1600 South Ashland Avenue, Chicago, Illinois Attention of Mr. Robert Wolfson Subject: Pratt Industries, Inc. Trademark Reg. No. 382,332 BRAKE-KING; Oct. 22, 1940 Dear Mr. Wolfson:- The above trademark was republished on October 26, 1954 and under the provisions of the Trademark Act of 1946 (Lanham Act), the registration will be automatically can celled unless, prior to October 26, i960, an affidavit is filed in the Patent Office showing that the mark is,still in use, or that its nonuse is due to special circumstances which excuse such nonuse and is not due to any intention to abandon the mark. Additionally, the Act provides that the right to use the mark may become incontestable within certain limitations by submitting suitable evidence that (l) the mark has been in continuous use for five consecutive years and is still in use in commerce, (2) there has been no final decision adverse to the registrant's claim of ownership or right to register the mark or keep the mark on the register,and MAO nn?i o Maremont Automotive Products, Inc., October 26, 1959 (3) there is no proceeding involving said rights pending in the Patent Office or in a Court and not finally disposed of. In order to determine what procedure should be adopted and to prepare the required affidavit, we should be supplied with the following information and exhibits (a) Whether there has been any change In . ownership of the registration. (b) Whether the mark is now in use on the goods specified in the registration, namely BRAKE LINING, and if not, the reasons for such nonuse. (c) Whether the mark has been in continuous use since the date of Its republication on the goods specified therein. (d) Whether anything has occurred, of which we are not aware, which might prevent satisfying the conditions designated as (2) and (3) in the preceding paragraph. (e) Two specimen labels on which the mark appears. (f) The name and title of the officer of the company who will sign the affidavit. We request that you give this matter your early atten tion, and should there be any questions, kindly advise. Yours very truly. MCL:L 'larch 29, 1963 CUSHMAN, DARBY & CUSHMAN American Security Building 730 Fifteenth Street, N.'.V. Washington 5, D.C. Attention: Mr. C. Willard Hayes Subject: Trademark Registration Serial No. 141,357 - ISLAND Dear Mr. Hayes, In reply to your letter of March 22 relating to the above, parts for heavy duty trucks, tractors, trailers and busses are 3old under the trademark ISLAND. These parts include all component parts in the axle and brake system, begining with the slack adjusted and running out to and including the brake shoe. In addition, suspension parts, those parts connecting the axle to the vehicle, are sold under the trademark. I hope this information is sufficiently detailed to allow you to proceed with the registration* Very truly your3. MAREMONT CORPORATION B7 /(DuS MAR 007164 R/'N RlHEl Al.EN <1R KPArR 'K -J.SVO STREET gcorge *. Moeiu: ^mcs .. dooley ALVIN ZO~~AG Raymond f. i.,p<tt G. LLOvo knighT Cal 0. LCVC .AiVRENC-- , "r^O AKIN ", DAVIS EDGAft H. MAR-fN VILLIAM *. -VEST. jn. KEVIN E. JOYCE EDWARD M. PRINCE oonald a. 0CAVER 9AVI0 W. BRINKMAN LEAH K HENORIKSEN FRED S. WHISENHUNT, Jft. BROOKE VY. 3AN8URY Ccsemas. Dahby & CVSHJU-V Axtorn-eys at Lav Amehic.o." Secchity Betiding 730 Fseteexth Street. N. W. WASHINGTON", D. C. 20005 Wo veir.be r Twenty-seven 1967 ALCN /. C'JSf'VAN >as]. 0SC1 vMN,, DAR9Y *1020 -'0 50) VAX C .CJIS ' 910.-saji WlL--AM M. C'JSl'VAN <i&36- PATENT AND TRADEMARK CAUSES CASi-E MYCUSKRA "AX iVASm'NG'SN TEi.SsON AREA CODE 202 NATIONAL 3-3+Gi Maremont Corporation 168 N. Michigan Avenue Chicago, Illinois ' Attention of James T. Dougherty, 3sq. Subject: Mar Pro, Inc. Trademark. Res. No. 741,186 TRU-GUARD Dear Jim:The above trademark was registered on November 27, 1962, and under the provisions of the Trademark Act of 1946 (Lanham Act), the registration will be automatically cancelled unless, prior to November 27, 1968, an affidavit is filed in the Patent Office showing that the mark is still in use, or that its nonuse is due to special circumstances which excuse such nonuse, and is not due to any intention to abandon the mark. Additionally, the Act provides that the right to use the mark may become incontestable within certain limitations by submitting suitable evidence that (1) the mark has been in continuous use for five consecutive years and is still in use in commerce, (2) there has been no final decision adverse to the registrant's claim of ownership or right to register the mark or keep the mark on the register, and MAR 007165 Maremom; Ccrcorarion November 27, 1967 -a- (3) there is no proceeding involving said rights pending in the Patent Office or in a Court and not finally disposed of. In order to determine what procedure should be adopted and to prepare the required affidavit, we should be supplied with the following information and exhibits (a) Whether there has been any change in ownership of the registration. (b) Whether the mark is now in use on the goods specified in the registration, namely BRAKE LININGS AND BRAKE SHOES, and if not, the reasons for such nonuse. (c) Whether the mark has been in continuous use since the date of its registration on the goods specified therein. (d) Whether anything has occurred, of which we are not aware, which might prevent satisfying the conditions designated as (2) and (3) in the preceding paragraph. (e) Two specimen labels, tags, containers, or the like, on which the mark appears. (f) The name and title of the officer of the company who will sign the affidavit. We request that you give this matter your early atten tion, and should there be any questions, kindly advise. Yours very truly. R?L:L cc: Jean Allard, Esq. MAR 007166 C WILLARD MATES JOHN W. MAL..CY saul n. ko* jlis RVIN H.RIMEL ALLEN KIRKPATRICK DaV`0 E.VARNER sconce .'..oo -j- tstwroeeotillc JAMES L- OOOLET ALVIN OUTTAO RAYMONO F. LlPPITT O. LLOYD ANIGHT CARL O.LOVE LAWRENCE A.HVMO AKIN T. DAVIS EDGAR H.MARTIN WILLIAM K WEST, JR. KEVIN E.JOYCE COWARD M. PRINCE OONALO a.OEAVER OAVJO W. QRINKMAN LEAH K.HENORIKSEN FREO 5-WHISENHUNT, JR. BROOKE W.SANQURY RALPH .HARPER ROBERT . MURRAY Cushmam, Darby & Cushman Attorneys at Law America^ Security Bcildjxo 730 Fifteenth Street. N.W. WASHINGTON, D. C. 20005 JanuaryTwo 1968 CABLE MYCUSMRA FAX WASHINGTON .EPhOnC RcGS'bVCODE 202 Maremont Corporation 168 N. Michigan Avenue Chicago, Illinois Attention of James T. Dougherty, Esq. Subject: Trademark Reg. No. 439,639 GRIZZLY SAFTIBOND Dear Jim:- The above entitled trademark registration will expire on July 6, 1948, twenty years subsequent to the date of registration, unless a petition for renewal Is filed within six months before the expiration date, or within three months after that date upon the payment of an additional fee. The Trademark Act of 1946 provides that a registration may be renewed upon the filing of a verified application setting forth the goods or services recited- in the regis tration in connection with which the mark is still in use, together with a specimen showing tbe current use of the mark. If the mark is not in use, the affidavit must show that such nonuse is due to special circumstances which excuse such non use, and is not due to any intention to abandon the mark. You will recall that the above mark was republished on August 2, 1949 under the Trademark Act of 1946, and further Maremont Corporation January 2, 1968 2- - that affidavit has been filed in order to prevent automatic cancellation, as provided by the law, the said affidavit having been accepted on May 23, 1955- However, such pro cedure does not preclude the necessity for renewing the registration after a period of twenty years in order to maintain the same in force. If the mark is still in use on the goods recited in the registration, namely BRAKE LINING, please advise, sup plying us with one set of duplicate specimens showing such usage. We will be pleased to prepare and forward to you for execution a petition for renewal, if you so desire. In order to do this, we should be advised as to the name and title of the officer of the company who will execute the papers. Yours very truly. CTTSHM4N naRWV S, r.TTSWMAW RFL:L cc: Jean Allard, Esq By mar nnrifiR \ \ \ August 12, 1971 Hr. Raymond F. Lippitt Cushman, Darby & Cushman 1801 K Street, N. W. Washington, D. C. 20006 Dear Ray: Bob Rogers of Maremont's Brake Products Division has informed me of a new marketing program under which our customers will be sold in a single box, all the various components and other parts which are needed to perform a brake job. Although they have not de finitively agreed upon a trademark to be used in such program, we would appreciate your prompt advice as to the availability of the following trademarks: Brake- In-A-Box Disc-Brake-In-A-Box Drum-Brake-In-A-Box In addition, I would like to arrange for a conference call between you. Bob Rogers and myself to discuss whether any part of this particular program might be patentable, either as a process patent or something else. Rogers is interested in determining whether we can obtain any patent protection for this particular program since once the competitor obtains a Brake-InA-Box unit and opens it up, he could very easily dupli cate the same concept. The basic concept is that by providing the customer with a entire unit necessary to perform a brake job, the customer is assured that it can perform all brake jobs scheduled during a given day without the possibility of facing a hangup due to the lack of a spring or some other part which would not be available on the premises. The object here is n a r Mr. Raymond P. Lippitt Cushman, Darby & Cushman 1801 K Street, N. W. Washington, D. C. 20006 August 12, 1971 - Page 2 not so much to obtain a permanent protection of the patent but merely to insure that during the initial stages of the program, we will not be faced with immediate competition. I will try to arrange the conference call some time next week. Very truly yours, MAREMONT CORPORATION JSKrpjp cc: R, C. Rogers Jon S. Kubiak Corporate Attorney MAR 007170 IPVIN H. RlMEL ALIEN KtPKPATRICK OAVIO E. VARNcr LLOYD J. STREET GEORGE T. MOBILLE JAMES L. DOOLEY ALVIN GUTTAC RAYMOND F, LlPplTT G .LOYD KNIGHT CARL G. LOVE LAWRENCE A. HYMO AKIN 7. DAVIS EDGAR H. MARTIN WILLIAM K. WEST, JR. KEVIN E. JOYCE EOWARO M. PRINCE DONALD 3. DEAVER OAVIO H. SRINKMAN GEORGE M. SIRILLA FRED S. WHISENHUNT, JR. RALPH E. HARPER ROBERT B. MURRAY WILLIAM T. 8ULLINGCR JOHN D-LISTER OOHALO A. KETTLCSTR1NGS JOHN F. BOOTH. SR. JOHN S. HALE OONALO J. BIRDGERALO L. LETT AIR MAIL rr Cushman, Daeby & CushmanAttorneys ax Law American Security Bsuhixo 730 FrETEENTH STREET, N. W. Washington, D. C. 20005 JanuaryThirteen 1970 PATENT ANO TRAOCMARK CAUSES CASLC MTCUSHRA FAX WASHINGTON TELEPHONE AREA COOE 202 NATIONAL 9-3460 PSTSSIVElD Jan 15 1970 LAW DEPT. Robert IT. Dini, Esquire Maremont Corporation 168 North Michigan Avenue Chicago, Illinois 60601 Subject: New GRIZZLY Logo Dear Bob: This is to acknowledge receipt of your letter of January 7, 1970, relating to the above subject. In response to your inquiry, we believe it would be desirable to obtain a registration covering the new GRIZZLY logo by Itself, without the word GRIZZLY. Before undertaking the preparation of such application, it would be appropriate to determine whether registrations exist directed to the logo per se presenting a question of conflict. We will proceed with such a registrability investigation and will advise you as soon as it is complete. Yours very truly, CUSHMAN. DARBY & CUSHMAN RFL/fs cc Jean Allard, Esquire MAR 007171 f f W. G. Hetzel Robert 17. Dini HEW GRIZZLY LOGO c J. A. Wiegand Attached Is a tissue copy of a letter received today from our trademark attorneys concerning the new GRIZZLY Logo. The usual required information to which he refers i3 as follows: ,, 1. Date of first use in interstate commerce. U 2. Six decals sad end flaps or the like showing the use of the mark. 3. The goods on which the mark will be used. The date of first use in interstate commerce should be supported by such thingscas a copy of the bill of lading or an invoice. RIB: tufa Att. Robert ti. fiini MAR 007177 C W'tLARO MAVES JOHN W. MALLEY bAUL N,, KOKUUS savm H, RIMEw ALLEN KIRKPATRICK OAVIO C. VARNER -ovo j. street GEORGE r. MOQILLE jAHCS L. DOOLEY alvin guttag raymono p. lippitt G, LLOYD KNIGHT CARL G. LOVE LAWRENCE A. HYMO AKIN T. DAVIS EDGAR H. MARTIN WILLIAM K. WEST, JR. KEVIN E. JOYCE EOWARO M. PRINCE OONALO S. OEAVER OAVIO W. BRINKMAN GEORGE M. SIRILLA PRED S. WMISENHUNT. JR. RALPH C. HARPER ROBERT 0. MURRAY WILLIAM T. BULUNGER JOHN O. LISTER OONALO A. KETTLESTRINGS JOHN F. BOOTH, SR, JOHN S. HALE OONALO J. BIRO GERALD L. LETT AIR MAIL Cushman, Dabby & Cushman Axtoeiteys at Law American Securitt Bciedtn-g 730 Fifteenth Street, N. W. Washdjgton, D. C. 20005 January Twenty-eight 19 7 0 ARLON V, CUSHMAN JOHN J, DARBY r-*0-.**OI WILLIAM M.CuShmas PATENT AND TRADEMARK CAUSES CABLE MTCUSHRA PAX WASHINGTON TELEPHONE AREA CODE 202 NATIONAL 6-3460 Robert U. Dini, Esquire Maremont Corporation 168 North Michigan Avenue Chicago, Illinois 60601 Subject: New GRIZZLY Logo Dear Bob: In accordance with our letter of January 13, 1970, we have completed the registrability investigation relating to th.e GRIZZLY Logo by itself, without the word GRIZZLY. As a result of the investigation, we are of the opinion that the logo can be adopted and that a registration can be obtained. The search simply did not reveal any registrations sufficiently pertinent from the standpoint of confusing similarity, worth noting. If you wish us to proceed with an application, please advise, indicating the usual required information. Yours very truly, CUSHMAN, DARBY &'CUSHMAN RFL/fs cc Jean Allard, Esquire cr JOHN W. MALLEI' daul n. kokulis ALLEN KIRKPATRICK OAVIO E.VARNER LLOYD J. STREET GEORGE T. MO0ILLE JAMES L. DOOLEY ALVIN GUTTAG RAYMONO F LIPRITT G. LLOTO KNIGHT CARL G. LOVE LAWRENCE A. HYMO AKIN T. DAVIS EOGAR H. MARTIN WILLIAM K. WEST, JR. KEVIN E. JOYCE EDWARO M. PRINCE OONALD B- OEAVER DAVIO W. BRINKMAN GEORGE M. 5IRILLA FR0 S WHISENHUNT, JR. RALPH E. HARPER ROBERT 8. MURRAY WILLIAM T. QULLINGCR OONALO J. BIRO ARYHUR R. CRAWFORD OENNIS J. WARMISH LARRY S. MIXON JAMES R.LONGACRE W. WARREN TALTAVULL Cushman, Darby & Cushman Attorneys at Law Eights Floor, 1801 K. Stsest, N. W. WLSHI3TOTON, D. C. 20000 (202) 823-3000 March Seventeen 19 7 2 orcoumscl C. WILLARO HAYES P. J. FEDERICO ARLON V. CUSHMAN (leg*-,*30) JOHN J. DARBY (leio-iaso} WILLIAM M.CUSHMAN (i*S->*4) CABLE MYCUSHRA FAX WASHINGTON TELEX-24453 TELEX SYMBOL CUNAN Ramiro Collazo, Esq. MAREMONT CORPORATION 168 North Michigan Avenue Chicago, Illinois, 60601 v J'- Subject: Trademark: BEAR DESIGN Serial No. 366,381 Dear Ramiro: As I advised you on the telephone, we have1 y received an official action in the above case indicating that brake blocks and brake linings are in class 35'while ' the remaining goods are classified in class 19 In order to amend the application, it is necessary to file an affidavit verifying the dates of first use and verifying that the additional specimens were in use at least as early as the filing date of this application. Accordingly, we have prepared an appropriate affidavit and enclose the same for Jean Allard's signature. Before the affidavit is executed, please confirm that the date of first use previously given in the application, namely. May 28, 1970, is the date of first use on which the mark was first used on all of the goods. In view of the fact that there might be some discrepancy with respect to the mark being used on all of the goods on that particular day, we have identified the date of first use as simply "May, 1970". We are attaching hereto a copy of the specimen previously forwarded to us and originally filed with the appli cation. You will note that the specimen only makes reference to the word "brakes". Please provide us with at least six additional specimens actually used on the goods or on containers for the MAR 007174 rc Ramiro Collazo, Esq. -2- March 17, 1972 goods, similar to the decals previously provided us. If the previous specimens were used, for example, only on brake blocks, please indicate the same in your letter so that these specimens will be used for the appropriate class. When the additional specimens are sent to us, please make sure that they cover the goods in the other class. In this regard, we have left the class number blank in the affidavit relating to the additional specimens. We suspect that these additional specimens will relate to the goods in class 19 since it would appear that the original specimens relate to the goods in class 35. However, you may find upon examination that the specimens for both classes are Identical. The affidavit and specimens should be sent to us by return mail since they must be filed in the Patent Office on or before March 23, 1972. Consequently, if you have any questions concerning this matter, please give me a call. Very truly yours, CUSHMAN, DARBY & CUSHMAN RFL-.jp Enclosures cc: Jean Allard, Esq. By: MAR 007175 / Mar 07-176 ,,G*N n MAL-Ev *UL N. KOKUL.S Al.SS KIRKPATRICK OA/IO E.VARNER LLOYO ,,,, STREET GEORGE t. MOBILLE -AMES L- DOOLEY ALVIN GUTTaG RAYMOND * UPOITT 3. LLOYD KNiCHT CARL 3. i.OVC --WRNCS A, HYMO AKIN T OAVtg EDGAR H. MARTIN WILLIAM A. WEST. JR. KEVIN Z -OYCE EDWARD M. opiNCS OONAlO 9. DEAvER DAVlO W. BRINKMAN GEORGE M. SIRILLA FRED S. WHISENHONT,-R. ROBERT 3. MURRAY WILLIAM T. BULUNGER OONALO J. BIRO CARRY S. NIXON JAMES R. LONGACRE ARTHUR R.CRAWFORO W. WARREN TALTAVULL MICHAEL L. KELLER CHARLES R.OOKOKOG WILLIAM E. LAHEY JOSEPH T. MELILLO ROBERT A.VANOERHYE CcSHMAX. DaEBT & CCSHllAi' .-^XTOBXETS AX Law Eighth Floor, 1801 K Sthset. N. W. Washington, D* C- 20006 J202) 933*3000 March Tenth 1975 RC^;yr.-. or cOunsCI. C.WILLARC -AYES P. FEDERICO ARIONV. CUSHMAN '>00*- 9031 JOHN J. DARBY ViOZO-,9001 WILLIAM M. CUSHMAN U98S-.0S*) CABLE mycushra fax Washington TELEX-2*8*53 TS-EX SYMBOL COMA LjAIV dept Maremont Corporation 168 N. Michigan Avenue Chicago, Illinois 60601 Attention of Miss Sandra L. Parker Subject: Trademark Reg. No. 887,389 IE LAND - Dkt. 4-5 Dear Sandy: The above registration issued on March 10, 1970, and under the provisions of the Trademark Act of 1946 (Lanham Act), the registration will be automatically cancelled un less, prior to March 10, 1976, an affidavit is filed in the Patent Office showing that the mark is still in use, or show ing that its nonuse is due to special circumstances which ex cuse such nonuse, and is not due to any intention to abandon the mark. Additionally, the Act provides that the right to use the mark may become incontestable within certain limitations by submitting suitable evidence that (1) the mark has been in continuous use for five consecutive years and is still in use in commerce, (2) there has been no final decision adverse to the registrant's claim of ownership or right to register the mark or keep the mark on the register, and (3) there is no proceeding MAR 007*177 Maremont Corporation March 10, 1975 2- - involving said rights pending in the Patent Office or in a Court and not finallyd isposed of. In order to determine what procedure should be adopted and to prepare the required affidavit, we should be supplied with the following information and exhibits: (a) Whether there has been any change in ownership of the registration. (b) Whether the mark is now in use on all the goods specified in the attached copy of the registration, and if not, the reasons for such nonuse. Failure to take the proper steps relative to the goods which are no longer sold under the mark can lead to serious consequences, and we therefore suggest that you give this question your careful attention. (c) Whether the mark has been in continuous use since the date of its registrationon the goods specified therein. (d) Whether anything has occurred, of which we are not aware, which might prevent satisfying the conditions designated as (2) and (3) in the preceding paragraph. (e) Two identical specimen labels, tags, or the like on which the mark appears. (f) The name and title of the officer of the company who will sign the affidavit. We request that you give this matter your early attention, and should there be any questions, kindly advise. Yours very truly, CUSHMAN, DARBY & CUSHMAN WKW :L Enc. * lOuy__ vc MAR 007178 United States Patent Office 887,389 Registered Mar. 10, 1970 PRINCIPAL REGISTER Trademark Ser. No. 316.220. filed Jan. 9, 1969 LELAND Maremont Corporation (Illinois corporation) 168 N. Michigan Ave. Chicago, HI. 60601 For: PARTS FOR BRAKES AND AXLES FOR TRUCKS, TRACTORS, TRAILERS, BUSES-- NAMELY, BRAKE SHOES, BRAKE SHOE ADAPT ERS. BRAKE SHOE REPAIR KITS, BRAKE CAM SHAFTS, BRAKE SPIDER ASSEMBLIES, BRAKE SPIDERS AND FLANGE MOUNTING KITS. BRAKE FLANGES, CAM SHAFT BUSHINGS AND BEAR INGS FOR BRAKE SPIDERS AND SUPPORTING BRACKETS, BRAKE SHOE ROLLER PIN AND AN CHOR PIN LOCKS, BRAKE CAM SHAFT FELTS. BRAKE SHOE ANCHOR PINS, BRAKE SHOE WEAR PLATES, BRAKE SHOE ROLLERS, BRAKE SHOE BUSHINGS, BRAKE SHOE SLACK ADJUSTERS, BRAKE SHOE RETURN SPRINGS, AXLE AND EC CENTRIC ANCHOR PIN NUTS, AXLE WASHERS, ROD PARTS, RADIUS ROD BUSHINGS, TRUNNION SHAFT BUSHINGS, TORQUE ARM BUSHINGS, EQUALIZER BEARINGS, FIFTH WHEEL PARTS, TRAILER KING PINS, AND DUST SHIELDS, LAND ING GEAR WHEELS. AND LANDING GEAR CRANKS--in CLASS 19 (INT. CL. 12). First use Nov. 1, 1959; in commerce Nov. 1, 1959. Owner of Reg. No. 760,176. MAR 007179