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. 76641445 has been amended as follows:
Argument(s)
In response to the substantive refusal(s), please note the following:

Response to Office Action

The examiner has refused to register “ACCC”, Serial No. 76/641,445 in light of U.S. Registration No. 2020756 for “ACC” pursuant to Trademark Act Section 2(d), 15 U.S.C. 1052(d), likelihood of confusion. 

In response to the substantive refusal, applicant submits the following remarks. 

As noted by the examiner, in considering likelihood of confusion, the question is not whether people will confuse the marks, but whether the marks will confuse people into believing that the goods they identify come from the same source.  Likelihood of confusion is evaluated with respect to whether the two potentially competing marks are similar in appearance, sound and/or commercial connotation, when the marks are used in connection with respective goods and/or services that are reasonably related to each other.  Goods and/or services are “reasonably related” when the respective goods and/or services move in the same trade channels and are offered to the same class of customers or when the respective goods and/or services are used to fulfill the same or similar functions.

Here, the examiner asserts a likelihood of confusion based on similarity in sound and appearance coupled with similarities in the goods offered under the competing marks.  Namely, the examiner asserts that applicant’s goods used in connection with the mark “ACCC” could include the registered goods, “electrical connectors” used in connection with the mark “ACC”. 

Applicant strongly disagrees with the examiners assessment.  Although the marks are similar in sound and appearance, it is a well established aspect of trademark law that slight differences may be sufficient to avoid confusion.  Indeed, even identical marks may co-exist due to the nature of their respective goods.  See e.g., In re British Bulldog, Ltd., 224 USPQ 854, 856 (T.T.A.B. 1984) (use of identical mark PLAYERS on shoes and underwear held not to be confusingly similar due to the nature of the goods).  See also, In re August Storck KG, 218 U.S.P.Q. 823, 825 (T.T.A.B. 1983) (finding that confusion was not likely between JUICY 2 for candy and JUICY BLEND II for ground beef and vegetable protein mix, even though the respective goods were both food products, because the goods were “quite different”); In re Sydel Lingerie Co., Inc., 197 U.S.P.Q. 629 (T.T.A.B. 1977) (BOTTOMS UP for ladies’ and children’s underwear held not likely to be confused with BOTTOMS UP for men’s clothing). 

Even marks that are identical in sound and/or appearance may create sufficiently different commercial impressions when applied to the respective parties’ goods or services so that there is no likelihood of confusion.  TMEP 1207.01(b)(i) (citing In re Sears, Roebuck and Co., 2 U.S.P.Q. 2d 1312 (T.T.A.B. 1987) (holding CROSS-OVER for bras not likely to be confused with CROSSOVER for ladies sportswear)).  In addition, the issuance of approved identical or nearly identical marks for registration even where the categories of goods and services are arguably related lends further support to applicant’s assertion that there is no likelihood of confusion between the competing marks.  For example, LITTLE PRINCESS (Registration No. 0729168) for “costume jewelry for children”, and LITTLE PRINCESS (Registration No. 1760711) for “children’s slippers, sandals, sneakers, shoes, boots, booties, slipper socks, hiking shoes, crib shoes, and soft and hard sole pre-walking shoes.

Here, the goods of the applicant and hence the trademark are not likely to be confused because Registrant’s goods are related to military and aerospace applications and as such, are specialized items sold in restricted commercial channels.  Briefly, the trademark “ACC” is used in connection with electrical connectors by the Array Connector Corporation.  The Array Connector Corporation manufactures electrical connectors that are MS and MS type connectors for military and aerospace applications. Military connectors, MIL-SPEC shell type connectors are built in accordance with military specifications. Indeed, “Array Connector’s “AC” Series connectors meet or exceed the requirements for qualification to MIL-C-5015 and are listed in the U.S. Government’s Qualified Parts List.”  See, Array AC Series attached.  Their design takes into account the need to protect the connection from environmental factors, allowing them to be used in military and aerospace applications.  Important parameters to consider when specifying the connector configuration part of military connectors include number of contacts, contact type, shell size, specific military specifications met, shell style or gender, coupling type, contact size (AWG), contact termination options, back-shell accessories included, lanyard included, and applicability to audio or visual applications. 

In contrast, applicant uses the mark “ACCC” on and in connection with transmission and distribution power cable; and connector components and parts thereof for use in terminating and splicing transmission and distribution power cable.  Applicant’s power cable is used to replace traditional transmission and distribution cable.  Accordingly, applicant’s commercial channels lie primarily in the utilities industry and not the military or aerospace industries. Moreover, products designed for military applications have very limited channels of trade, are tightly controlled and products must be manufactured in accordance with strict military specifications.  Thus, the respective goods are not marketed in the same prospective trade channels or to the same classes of purchaser.  Moreover, the purchasers are in different and highly regulated industries with a limited number of manufacturers to select from.  Therefore, purchasers take a great deal of care in making their decision to purchase and as such would not be likely, and for military specifications may even be contractually precluded from, confusing the source. 

The argument that applicant’s goods could include electrical connectors is an overbroad statement that fails to consider the obvious functionality and purposes of the intended products.  As such, there is no reasonable basis to conclude that a conflict will result from registration of ACCC for use on or in connection with transmission and distribution power cable and connector components and parts thereof for use in terminating and splicing transmission and distribution power cable.

Applicant submits data from Array Connector Corporation’s web site in support of the aforementioned arguments. 

Significance

The examiner has requested that the applicant specify whether the letters “ACCC” have any significance in the electrical trade or industry or as applied to the goods/services described in the application.  Applicant uses the letters “ACCC” in connection with its invention for transmission and distribution power cable.  The invention is still in the introductory stages and as such, applicant does not believe that “ACCC” is widely recognized as yet.  Accordingly, applicant does not believe that the letters “ACCC” have any significance in the industry.

Identification of Goods

Pursuant to the examiner’s objection to the recitation of goods as being indefinite, applicant amends the recitation of goods to read:

transmission and distribution power cable; connector components and parts thereof for use in terminating and splicing transmission and distribution power cable.

Specimen

Applicant submits, in conjunction with a Petition for Substitution of Basis from 1(a) to 1(b), a substitute specimen showing the mark as it is used in commerce on the goods or on packaging for the goods in accordance with TMEP 904.4.  The Petition for Substitution of Basis is attached at the end of this form.

 Applicant believes that the information presented herein addresses all of the examiner’s concerns and as such, believes that the application is in condition for allowance.  The examiner is invited to contact the attorney of record if it will further prosecution of the mark. 

 

UNITED STATES PATENT AND TRADEMARK OFFICE

 

Serial No. 76/641445                                       Filed: 6-22-2005

 

Mark:  ACCC                                                  Examining Attorney: James Rauen

 

Law Office:      103                                          Attorney Docket No.: CTC-TM2

 

SUBSTITUTION OF BASIS

 

In view of the Examiner’s view that the specimens herein are unacceptable to show function as a mark, applicant hereby substitutes 1(b) as a basis pursuant to TMEP section 806.03(c) and 37 CFR 2.35.

 

The undersigned states under penalty of perjury that the applicant had a bona fide intention to use the mark in commerce as of the filing date of the application.

 

The applicant hereby lists each basis followed by the goods or services to which that basis applies. 

 

§1(b):  transmission and distribution power cable; connector components and parts thereof for use in terminating and splicing transmission and distribution power cable.

 

The undersigned believes that no fee is due with this paper but if any fee is due it may be charged to the undersigned’s deposit account number 503319.

 

Respectfully submitted,

 

The McIntosh Group

 

 

 

Kelly de la Torre

12635 East Montview Blvd., Suite B-6

Aurora, CO 80010

(720) 859-3543 phone

(720) 859-4181 fax

 

                                                                                     

Evidence

Evidence-1
Evidence-2
Evidence-3

Classification and Listing of Goods/Services

Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 009 for Composite core cable and hardware for electrical power transmission applications
Original Filing Basis: 1(a).
Proposed: Class 009 for transmission and distribution power cable; connector components and parts thereof for use in terminating and splicing transmission and distribution power cable
New/Additional Basis:

Section 1(b), The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection withthe identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Section 1(a), Use in Commerce: The mark was first used at least as early as 02/13/2003 and first used in commerce at least as early as 08/01/2004, and is now in use in such commerce.
Applicant hereby submits a specimen for Class 009.
The specimen(s) submitted consists of Shipping reel for power transmission cable.

For an application based on 1(b), Intent-to-Use, "The substitute specimen(s) was in use in commerce prior to the filing of the Amendment to Allege Use (AAU)."
Specimen-1


Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii). If the applicant is seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date. 37 C.F.R. Secs. 2.34(a)(1)(i). The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true.

Signature: /Kelly de la Torre/      Date: 07/12/2006
Signatory's Name: Kelly de la Torre
Signatory's Position: attorney

Response Signature

Signature: /Kelly de la Torre/     Date: 07/12/2006
Signatory's Name: Kelly de la Torre
Signatory's Position: Attorney
        
Serial Number: 76641445
Internet Transmission Date: Wed Jul 12 18:22:29 EDT 2006
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-200607121822294
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