Response to Office Action

PTO Form 1957 (Rev 5/2006)

OMB No. 0651-0050 (Exp. 04/2009)

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PTO Form 1957 (Rev 5/2006)

OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 76570563 has been amended as follows:
Argument(s)
In response to the substantive refusal(s), please note the following:

Applicant filed a Notice of Appeal and Request for Reconsideration in response to the outstanding rejection on the grounds of descriptiveness.  The Application was remanded to the Examiner for consideration of the Request for Reconsideration.

 

The Examiner has continued the rejection under Section 2(e)(1) on the grounds of descriptiveness, but has also raised the potential alternative rejection on the grounds that the mark is deceptively misdescriptive in view of the Applicant’s claim that the goods are not intended for professional use.

 

In maintaining the descriptiveness objection, the Examiner contended that the current identification was broad enough to include “professional grade jump start cables, power invertors, flashlights and spotlights.” 

 

As amended, the application now identifies “Automotive, marine and RV aftermarket products, namely, jump start cables, power invertors, flashlights and spotlights.”  Such goods are sold through retail channels of trade to retail consumers.   Applicant cannot prevent the use of its goods for professional purposes, but the channels of trade are not applicable for professional purchases. 

 

With regard to the alternative rejection on the grounds that the mark is deceptively misdescriptive, the Examiner contends that “[p]otential customers viewing the use of the term PRO GRADE on the goods would reasonably believe that such goods are professional grade products.”

 

Marks that are descriptive of some characteristic or quality of the goods which they do not, in fact, possess are “misdescriptive.” However, such marks are not necessarily “deceptively misdescriptive,” unless there is some element of deception. A mark may be “deceptively misdescriptive” under §2(e) if it misrepresents any fact concerning the goods that may materially induce a purchaser's decision to buy. This requires a reasonable belief on the part of purchaser in the truth of the alleged misdescriptive significance of the mark.

 

In this case, however, there is nothing deceptive about the nature of the goods. They are a retail off-the-shelf item.  The purchaser can pickup and examine the product and read the comments and descriptions on the packaging.  The purchaser is fully aware of the nature and quality of the Applicant’s product at the time of purchase.  The alleged misdescriptive nature of the product would not be an inducement for their purchase.

 

Classification and Listing of Goods/Services

Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 009 for Jump start cables and power inverters
Original Filing Basis: 1(b).
Proposed: Class 009 for AUTOMOTIVE, MARINE AND RV AFTERMARKET PRODUCTS, NAMELY, JUMP START CABLES AND POWER INVERTORS
Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 011 for Flashlights and spotlights
Original Filing Basis: 1(b).
Proposed: Class 011 for AUTOMOTIVE, MARINE AND RV AFTERMARKET PRODUCTS, NAMELY, FLASHLIGHTS AND SPOTLIGHTS

Declaration Signature
I hereby elect to bypass the submission of a signed declaration, because I believe a declaration is not required by the rules of practice. I understand that the examining attorney could still, upon later review, require a signed declaration.
Response Signature

Signature: /george lewis/     Date: 03/27/2006
Signatory's Name: George W. Lewis
Signatory's Position: Attorney
        
Serial Number: 76570563
Internet Transmission Date: Mon Mar 27 14:03:05 EST 2006
TEAS Stamp: USPTO/ROA-XX.XXX.XX.X-200603271403054322
12-76570563-320401855342070648138894bff5
431806a-N/A-N/A-20060327135840880492