| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 76572887 |
| LAW OFFICE ASSIGNED | LAW OFFICE 112 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
The Office Action dated August 27, 2010 has been received and considered. In that Action, the Examining Attorney refused registration of applicant’s SKYLINK (and design) mark on the grounds that Applicant’s mark is likely to be confused with existing federal Registration No. 2,179,285 for the mark SKYLINX covering “telecommunications system consisting of one or more earth stations capable of transmitting signals to and from satellites and other earth stations and computer programs which operate and control the system as a whole” and No. 3,779,511 for the mark SKYLINK DIRECT covering “an electronic interface for a one-way satellite radio receiver, namely, a portable docking holder that is configured to dock a portable consumer satellite audio programming radio receiver, said docking holder to receive and hold said portable consumer satellite audio programming radio receiver and electronically connect it serially or by radio transmission to a consumer car audio radio tuner for playing said consumer satellite audio programming on said tuner, and excluding two-way satellite communications.” In refusing to register Applicant’s mark, the Examining Attorney focused on a comparison of the marks at issue, as well as a comparison of the goods covered by the marks. As explained below, these factors, as well as the other factors identified in In re E.I. DuPont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973), result in a conclusion that Applicant’s mark is not confusingly similar to the registered SKYLINX and SKYLINK DIRECT marks owned by the respective Registrants.First, Applicant notes that it is already the owner of two existing federal registrations (Nos. 2,472,617 and 2,885,793) for the mark SKYLINK covering “security and alarm systems, comprising security monitoring control panels, transmitters, receivers, transceivers, security sensors, automatic dialers, remote controlled automatic dialers, automatic voice message hardware and automatic telephone conferencing hardware” and “remote controllers for garage doors,” respectively. Applicant’s pending SKY LINK (and design) application covers highly similar goods, namely, “electronic and optical communications devices, namely, transceivers, transmitters, receivers and sensors; garage door opener, door and gate opener, door and gate locks, electromagnetic door and gate locks, security and alarm systems, namely, electronic security monitoring control panels, transmitters, receivers, transceivers, security sensors, automatic dialers, remote controller for garage doors, remote controlled automatic dialers, automatic voice message hardware and automatic telephone conferencing hardware.” If Applicant’s existing SKYLINK (one word) registrations (which cover goods that are highly similar to the goods set forth in its pending application) can coexist with the SKYLINK DIRECT and SKYLINX registrations cited by the Examining Attorney without confusion, it follows that Applicant’s pending SKY LINK (two words AND a design) mark should also be able to coexist with Registrants’ SKYLINK DIRECT and SKYLINX marks without confusion.This conclusion is supported by the fact that the goods offered in connection with the cited SKYLINX and SKYLINK DIRECT marks are entirely different from the goods offered by applicant’s SKY LINK (and design) mark. While all the goods at issue may involve electronics, the purpose of each is entirely different. Specifically, the SKYLINX mark is obviously used in connection with goods (specifically a portable docking holder) pertaining to satellite radio, the SKYLINK DIRECT mark is used in connection with goods related to earth stations and Applicant’s SKY LINK (and design) mark is used in connection with goods related to door openers and security systems. The goods covered by each of the marks is not even remotely similar. Because Applicant’s goods and Registrants’ respective goods are so different, there is little possibility that these different goods will overlap or travel in the same channels of trade, or be targeted at the same purchasers. This conclusion is supported by the fact that despite simultaneous use of the respective marks for more than thirteen (13) years in the case of the cited SKYLINX mark and more than seven (7) years in the case of the SKYLINK DIRECT mark, applicant knows of no instances of actual confusion between these marks and its SKY LINK (and design) mark. For all the reasons set forth above, applicant respectfully submits that there is no likelihood of confusion between its proposed SKY LINK (and design) trademark application and the cited registrations. Applicant requests that the refusal to register its mark SKY LINK (and design) on the grounds that it is likely to be confused with the cited registrations be withdrawn because (1) Applicant already owns two registrations for the mark SKYLINK for goods highly similar to those covered in its pending SKY LINK (and design) application; (2) the goods covered by Applicant’s SKY LINK (and design) mark and the respective goods covered by the cited SKYLINX and SKYLINK DIRECT marks are different; and (3) despite many years of coexistence, no confusion between the simultaneous use of the marks has occurred. Accordingly, applicant respectfully requests that its mark be approved for publication. |
|
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Kimberley G. Nobles/ |
| SIGNATORY'S NAME | Kimberley G. Nobles |
| SIGNATORY'S POSITION | Attorney of record, CA bar member |
| DATE SIGNED | 12/13/2010 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Dec 13 17:01:11 EST 2010 |
| TEAS STAMP | USPTO/ROA-XXX.XX.X.XXX-20 101213170111556013-765728 87-470a94aebb497c6f746aee a895c2764bc-N/A-N/A-20101 213164759358286 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
The Office Action dated August 27, 2010 has been received and considered. In that Action, the Examining Attorney refused registration of applicant’s SKYLINK (and design) mark on the grounds that Applicant’s mark is likely to be confused with existing federal Registration No. 2,179,285 for the mark SKYLINX covering “telecommunications system consisting of one or more earth stations capable of transmitting signals to and from satellites and other earth stations and computer programs which operate and control the system as a whole” and No. 3,779,511 for the mark SKYLINK DIRECT covering “an electronic interface for a one-way satellite radio receiver, namely, a portable docking holder that is configured to dock a portable consumer satellite audio programming radio receiver, said docking holder to receive and hold said portable consumer satellite audio programming radio receiver and electronically connect it serially or by radio transmission to a consumer car audio radio tuner for playing said consumer satellite audio programming on said tuner, and excluding two-way satellite communications.”
In refusing to register Applicant’s mark, the Examining Attorney focused on a comparison of the marks at issue, as well as a comparison of the goods covered by the marks. As explained below, these factors, as well as the other factors identified in In re E.I. DuPont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973), result in a conclusion that Applicant’s mark is not confusingly similar to the registered SKYLINX and SKYLINK DIRECT marks owned by the respective Registrants.First, Applicant notes that it is already the owner of two existing federal registrations (Nos. 2,472,617 and 2,885,793) for the mark SKYLINK covering “security and alarm systems, comprising security monitoring control panels, transmitters, receivers, transceivers, security sensors, automatic dialers, remote controlled automatic dialers, automatic voice message hardware and automatic telephone conferencing hardware” and “remote controllers for garage doors,” respectively. Applicant’s pending SKY LINK (and design) application covers highly similar goods, namely, “electronic and optical communications devices, namely, transceivers, transmitters, receivers and sensors; garage door opener, door and gate opener, door and gate locks, electromagnetic door and gate locks, security and alarm systems, namely, electronic security monitoring control panels, transmitters, receivers, transceivers, security sensors, automatic dialers, remote controller for garage doors, remote controlled automatic dialers, automatic voice message hardware and automatic telephone conferencing hardware.”
If Applicant’s existing SKYLINK (one word) registrations (which cover goods that are highly similar to the goods set forth in its pending application) can coexist with the SKYLINK DIRECT and SKYLINX registrations cited by the Examining Attorney without confusion, it follows that Applicant’s pending SKY LINK (two words AND a design) mark should also be able to coexist with Registrants’ SKYLINK DIRECT and SKYLINX marks without confusion.