-----Original Message-----
From: wshawn@shawncoulson.com [mailto:wshawn@shawncoulson.com]
Sent: Monday, January 19, 2004 5:48 PM
To: Hwang, John
Subject: Applicant PowerTrain, Inc. MARK: POWERTRAIN Serial No.
76/481046 Our Ref. No. 9228.01
From: William H. Shawn [mailto:wshawn@shawncoulson.com]
Sent: Monday, January 19, 2004 5:42 PM
Subject: Applicant PowerTrain, Inc. MARK: POWERTRAIN Serial No. 76/481046
Dear Sir or Madam: In response to the Office Action from the Trademark
Attorney dated July 17, 2003, Applicant requests reconsideration for the
reasons presented in the following paragraphs:
1. Section 2(a)(1)-Descriptive Refusal. The examining attorney refused
registration on the Principal Register because the proposed mark merely
described the goods/services. As the examining attorney noted, a powertrain
is usually an assembly of gears and associated parts by which power is
transmitted from an engine to a driving axle. Applicant's goods, however, do
not include such assemblies and associated parts; rather, they are simply
small, internal combustion engines, the full use and identification of which
is more thoroughly described in the following response to the examining
attorney's objection to Applicant's original identification of goods.
The proposed mark has a variety of meanings, as evidenced by the variety of
meanings in Registration No. 2608517 (computer and related goods and
services for management and maintenance of railway systems), Registration
No. 2150095 (computer software for use by educators), and Registration No.
2035840 (physical conditioning and exercising; since cancelled). The
proposed mark is also used with Applicant's slogan, "Nothing Stops A Train",
to denote the strength and durability of Applicant's small engines.
Accordingly, Applicant's proposed mark requires a consumer to connect the
two concepts to convey the essence of Applicant's goods: strength and
durability. Significantly, no other small internal combustion engine
manufacturer has used the proposed mark. Clearly, the proposed mark can not
be considered to be merely descriptive when the Patent and Trademark Office
has issued other registrations for virtually the same mark on different
goods. Applicant is mindful of TEMP Section 710.03, and will submit soft
copies of the foregoing cited registrations via facsimile with its change of
counsel submission and a confirmed copy of this submission.
2. Identification of Goods: The examining attorney refused registration
because identification of the goods was indefinite because it failed to
state the use of the engines. The examining attorney required specificity
for the engines' use and noted as example land vehicles, boats, and machines
operation.
The engines are used to operate go-carts, and for machine operation,
including generators, power washers, and compressors.
Alternative Amendment for Registration on Supplemental Register: Should the
examining attorney determine this application is not registerable under
Section 2(e), Applicant requests this application be amended to seek
registration of the mark on the Supplemental Register established by the Act
of July 5, 1946.
Substitution of Attorney: Applicant's attorney of record recently resigned
and appointed the undersigned its counsel approximately two weeks ago.
Applicant will file a substitution of counsel form via telecopy as soon as
possible.
I hereby certify this correspondence is being transmitted by electronic mail
to the United States Patent and Trademark Office on the date shown below.
Respectfully
submitted,
/William H.
Shawn/
Dated: January 19, 2004
William H. Shawn
ShawnCoulson International Lawyers
Washington, D.C.
Tel. +1.202.331.2300
Fax +1.202.331.0726
Mobile +1.202.285.7900
E-mail wshawn@shawncoulson.com
Website http://www.shawncoulson.com
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