TEAS Petition to Revive Abandon Applic

RESPONSE TO OFFICE ACTION

Assistant Commissioner of Trademarks

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA 22313-1451

Dear Examining Attorney Gaynor:

This communication is responsive to the Office Action dated August 17, 2005.

In the Office Action of August 17, 2005, Examining Attorney refused registration of Applicant’s mark XLR8 for "sports equipment, namely grips and grip tape for bats, racquets, and golf clubs; athletic gloves for baseball, racquetball, and golf; and practice baseballs" under 15 U.S.C. section 1052(d), on the grounds that Applicant’s was confusingly similar to U.S. Reg. No. 2,969,101 for XLR8 for "athletic equipment, namely, mouth guards."

Section 2(d) Refusal

Applicant submits that there exists no likelihood of confusion between the present application for XLR8 and the cited registration. As Examining Attorney correctly noted, the proper test is to look both to the marks themselves as well as to the services provided. However, while not disputing the similarity of the appearance of the marks, Applicant submits that the goods of the respective party are sufficiently distinct and lacking in association as to prevent any likelihood of confusion on the part of the reasonable consumer as to source or association between the products. Therefore, Applicant submits that there is no likelihood of confusion and the present application should be allowed.

In comparing the goods, Applicant submits that the Applicant’s grips, grip tape, gloves, and practice baseballs are not related to the mouth guards identified in the prior registration. Applicant submits that the reasonably prudent consumer would be able to distinguish different marks for different goods. This was apparently the position adopted by the USPTO in granting Registration No. 2,969,101 in 2005 despite Applicant’s prior Registration No. 2,847,940 for "sports training apparatus, namely training baseball bats using internal incorporated weights." As Examining Attorney can appreciate, if there was no confusion between mouth guards and baseball bats when the mouth guard registration was granted over Applicant’s prior registration, there can be no confusion between mouth guards and the goods in the present application.

The Examining Attorney, in approving application 76/385,866 for publication, took the reasonable position that mouth guards are distinct and separate from equipment used in the conducting of sporting activities. Applicant submits that the goods recited in the present application are much closer to Applicant’s training baseball bats than they are to mouth guards.

While a baseball player may, or may not, wear a mouth guard, it is not an intrinsic part of a sporting activity, while baseballs, bats, and gloves clearly are. Even grip tape, while not a necessary piece of equipment, is used in the activity of play, and is selected for its ability to improve the performance of the participant, to allow the golfer to better control a club, or the batter to get a more controlled swing at the ball. Mouth guards, on the other hand, are safety equipment. A quarterback uses a mouthpiece to protect his teeth despite the negative impact it may have on his ability to be understood by his teammates. Anybody watching football games has seen the quarterback removing his mouth guard and keeping it out of his mouth for as long as possible.

In fact, the sporting activities in which Applicant’s goods are employed are not activities for which a mouth guard is commonly utilized. Mouth guards are used in contact sports such as football, hockey, or boxing, and for activities involving high risk or personal injury, such as Xtreme sports (e.g. rock climbing, skate boarding, motocross). Applicant’s products are used in sports such as baseball and golf, hardly sports involving high personal risk of bodily injury of the nature implicating use of a mouth guard.

It is for the reasons stated above that consumers expect to see sporting equipment such as those offered by Applicant being produced by sporting goods companies and mouth guards offered by companies related to the health care, or dental health, fields. In discussions with Dental Concepts, LLC, the former holder of Registered Trademark No. 2,969,101, the mark holder confirmed that they have no intent to expand their offerings to include any of the goods identified in the present application, nor to any area closely related to the areas presently occupied by Applicant. Rather, Dental Concepts, LLC, and Prestige Brands, the current mark holder have opted to expand their product into non-sporting uses for mouth guards, uses such as night time mouth guards for people who grind their teeth.

Similarly, Applicant has no intent to expand into the area presently occupied, or contemplated for occupancy, by Prestige Brands. Applicant markets a line of products used in training for, and participating in, sporting activities, items such as practice baseballs and bats, grip tape for sporting apparatus, and gloves to be worn in the conducting of such activities.

In sum, Applicant submits that the present application is already in condition for allowance. Applicant’s goods are clearly distinguishable from the registrant’s goods. Applicant submits that a distinct commercial impression is created by Applicant’s mark used in connection with Applicant’s goods and, therefore, there is no likelihood of confusion between Applicant’s mark and the cited registration.

In view of the foregoing, the Applicant respectfully requests that Examining Attorney give the present application favorable reconsideration.

Respectfully submitted,

MORISHITA LAW FIRM, LLC

Dated: May 17, 2006 By: /Ira W. David/

Ira W. David

3800 Howard Hughes Pkwy., Suite 850

Las Vegas, NV 89109

(702) 222-2113