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. 76639680 has been amended as follows:
Argument(s)
In response to the substantive refusal(s), please note the following:

            In the December 21, Office Action the Examining Attorney also refused registration of the above mark on the grounds that when used in connection with the identified goods, the mark is likely to cause confusion with Registration No. 2,276,330.  In response, Applicant will apply the Du Pont factors to show that as amended, the mark is not likely to cause confusion.

A.        The Difference in the Parties’ Goods Prevents Confusion

            It is important to note that the parties’ goods serve entirely different purposes.  Registrant’s goods are audio and video cables for use with entertainment systems for cars and homes. Applicant’s goods are fiber-optic security cables which are a part of Applicant’s LightLoc Perimeter Protection System (see Exhibit A).  This Perimeter Protection System is typically used by governmental and military agencies, industrial complexes, and other complexes needing to secure access or intrusion of their secured and protected areas.  Applicant’s goods are designed to be installed around the perimeter of the complex to deny entry of a vehicle or other object into the secured area and detect any effort to penetrate the protected area, as indicated in the specimen originally submitted. 

            Further, Applicant’s SMARTCABLE consists of a fiber-optic cable that is braided within steel cables. See Exhibit B The braided wire is then included in a textile woven band that is placed around the perimeter of the complex to be protected, typically on or in close proximity to the complex’s fence..  If a vehicle attempts to penetrate the fence, the braided cable will be broken or bent so that the light sensor is no longer receiving the light signal traveling through the braided cable.  Once, this occurs an alarm is sounded, signaling an intrusion.  Therefore, the parties’ goods are so different in purpose and nature that consumers are not likely to assume that the goods originate from the same source.

B.         The Difference in the Parties’ Goods Attract Different Consumers

            Applicant’s goods target the military and industrial complexes that require a high level of perimeter security.  Applicant’s goods are very expensive and are typically can only be afforded by large complexes or governmental or military agencies.  Accordingly, Applicant’s goods can not be found at retail outlets such as Radio Shack.  However, Registrant’s goods target consumers desiring to hook up entertainment systems or upgrade the sound or DVD system in their car and/or home.  These consumers have no need for Applicant’s Perimeter Protection Systems and most likely could not afford  them if they had the need for one.  It is also doubtful that Applicant’s consumers have a need for audio visual connection cables.  Thus, the parties’ consumers are not likely to encounter the other’s goods, much less confuse Applicant’s goods as those of Registrant’s or visa versa.  Therefore, because the parties’ goods target different consumers and are distributed through different channels of trade, no confusion is likely.

C.        The Sophistication of the Parties’ Consumers Will Prevent Confusion

            While Registrant’s goods may not be the type that require a high level of sophistication, a high level of sophistication is not needed to distinguish a highly sophisticated security system from electrical connectors used for entertainment and/or sound systems.  Further, Applicant’s goods are very expensive and are intended to protect materials that affect national security such as weapons-grade materials.  Therefore, Applicant’s consumers are not likely to mistakenly believe that Applicant produces simple audio/video wires for use in car and home entertainment systems in addition to the fiber optic security systems for the protection of military and industrial compounds.

            For the above reasons, Applicant respectfully requests that the refusal to register be reconsidered and withdrawn.

 

            In the Office Action, the Examining Attorney also provide information regarding two prior pending applications, Serial Nos. 78/281,206 and 78/512,515, that if mature into registration may provide grounds on which to refuse registration of the application.  In response, Applicant will apply the DuPont factors to show that no confusion is likely between Applicant’s mark and the prior pending applications.

            With respect to Serial No. 78/281,206, the mark is used in connection with fiber optic cables for use in high temperature and/or high pressure applications in the oil and gas, seismic and underwater industries.    Therefore, the differences in the goods associated with this mark are too far removed for Applicant’s mark to cause confusion as to the source of the goods.

            As stated above, Applicant’s fiber optic cables are part of an intricate, highly sophisticated security alarm system for governmental and military agencies, industrial complexes, and other complexes needing to secure access or intrusion of their secured and protected areas.  Applicant’s goods are designed to be installed around the perimeter of the complex to deny entry of a vehicle or other object into the secured area and detect any effort to penetrate the protected area.  These cables are not meant to be used in high temperature or high pressure situations and are not designed with the oil and gas, seismic or underwater industries.  In fact, Applicant’s goods are intended to break fairly easily as compared to the goods used in association with the cited reference.  After all, the alarm is tripped only when the fiber-optic cable is broken or severely bent.  Registrant’s fiber-optic cables, however, are intended to be very strong and durable, as they will be used in very harsh conditions.

            As evidenced in the differences in the purpose of the parties’ goods, Applicant’s goods target a different class of consumers than the goods in the cited reference do.  A quick search of the web page of the applicant of the cited reference will show that the goods  associated with the cited reference are intended to be used under water during the excavation of under water oil and gas.  Therefore, the class of consumers targeted by these goods are those in the oil and gas industry.  Applicant’s goods, however, target industrial complexes that contain materials that must be kept safe, such as weapons grade material.  Therefore, Applicant targets governmental and military agencies, as well as other complexes such as nuclear power plants. 

            Under TMEP §1207.01 “if the goods or services in question are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion is not likely.”  Since the goods serve entirely different purposes and target different classes of consumers, it is extremely unlikely that consumers of Applicant’s goods would need or encounter the goods of the cited reference or visa versa.  As such, the consumers are not likely to encounter the goods in a manner that the incorrect assumption regarding the goods’ origin is likely to arise.  Therefore, no confusion is likely.

            Even if consumers encountered the parties’ goods, the consumers of both Applicant and the cited reference are highly sophisticated, which would preclude confusion from arising.  Applicant’s goods are intended to aid national security efforts and target munitions plants, governmental and military agencies or other complexes that have a need for a high level of security.  As such, Applicant’s consumers are likely to familiarize themselves not only with the product but with the Applicant to determine if Applicant and its products are effective and reliable.  Similarly, the consumers of the goods for the cited reference are sophisticated, as drilling for off-shore oil and gas is a very complicated and extremely expensive operation.  Because the goods will be used off-shore, they must be very durable and reliable.  Stopping the operation even if only for a short time is very expensive.  Therefore, if the under water cables break, the consumers of those cables would lose valuable revenues while waiting for a replacement cable.  Therefore, it is likely that like Applicant’s consumers, those consumers would research the producer of the goods as well as the goods themselves to ensure that they are purchasing quality products.

            For these reasons, Applicant submits that no confusion is likely to arise between Applicant’s mark and the cited reference.  Therefore, Applicant respectfully requests that this refusal be reconsidered and withdrawn.

            Referring now to Serial No. 78/512,515, the mark is used in connection with universal electrical conductor cables.  For many of the same reasons stated with respect to Registration No. 2,276,330, Applicant submits that no confusion is likely to arise between these two marks or the origin of the goods associated with them.

            The parties’ goods attract different consumer bases.  Applicant’s goods target the military and industrial complexes that require a high level of perimeter security.  The goods associated with the cited reference target consumers in the medical field.  A cursory inspection of the applicant’s website for the cited reference (www.medconx.com) reveals that these universal connectors are used in the medical field. As such, the parties’ goods target entirely different consumers and use different channels of trade to provide the consumers with these goods. 

            However, even assuming that the universal connectors are not limited to use in the medical profession, it is clear that the differences in the goods are sufficient to prevent confusion. The goods in the cited reference are merely electrical conductor cables. These types of cables are used in a variety of relatively low tech products and include Registrant’s audio and video electrical wires.  These consumers have no need for Applicant’s perimeter security systems and thus are not likely to encounter Applicant’s goods, much less confuse Applicant’s goods as those of the cited reference.

            Since the goods used in association with the cited reference are used in the medical field, consumers of those goods are likely to be very sophisticated, since a patient’s life may depend of the reliability of the good.  Even if the goods associated with the cited reference are determined  not to be the type that require a high level of sophistication, a high level of sophistication is not needed to distinguish a highly sophisticated security system from electrical connectors.  Further, Applicant’s goods are very expensive and are intended to protect materials that affect national security such as weapons-grade materials.  Therefore, Applicant’s consumers are not likely to mistakenly believe that Applicant produces simple electrical connectors wires for use in the medical field in addition to the fiber optic security systems that Applicant produces for the protection of military and industrial compounds.  Accordingly, Applicant respectfully requests that this refusal be reconsidered and withdrawn.

 

            In the Office Action, the Examining Attorney also required that a new specimen showing use in commerce be submitted along with a declaration stating that the substitute specimen was in use in commerce at least as early as the filing date of the application.  In response, Applicant amends the filing basis of the application to a Section 1(b) intent to use application.

Evidence
Evidence in the nature of The evidence consists of printouts from Applicant's web page describing Applicant's goods and a photo of Applicant's goods. has been attached.
Evidence-1
Evidence-2
Evidence-3
Evidence-4

Classification and Listing of Goods/Services

Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 009 for braided wire security line including braided wire strands and fiber optic sensor lines embedded in the security line
Original Filing Basis: 1(a).
Proposed: Class 009 for Secutiy alarm systems, namely, security cables including fiber-optic sensor lines embedded in the secuirty cables.

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: /Hunter S. Freeman/     Date: 06/21/2006
Signatory's Name: Hunter S. Freeman
Signatory's Position: Attorney for Applicant
        
Serial Number: 76639680
Internet Transmission Date: Wed Jun 21 15:18:47 EDT 2006
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2006062115184746
5689-76639680-3321b893c6ce669dcc564e73a9
0f641a7-N/A-N/A-20060621150159578110