Reconsideration Letter

UNITED STATES PATENT AND TRADEMARK OFFICE

REQUEST FOR RECONSIDERATION DENIED

ISSUE/MAILING DATE:

Applicant is requesting reconsideration of a final refusal issued/mailed September 3, 2008.

After careful consideration of the law and facts of the case, the examining attorney must deny the request for reconsideration and adhere to the final action as written since no new facts or reasons have been presented that are significant and compelling with regard to the point at issue.

In its Request for Reconsideration, applicant asserts that likelihood of confusion cannot exist because “in order for any potential customer to obtain purchasing data (including product description, uses, installation requirements, availability and pricing) for the Securex expanded metal mesh products, it is necessary to call the Niles Expanded Metals factory.  Under these conditions, there is no chance that anyone will mistake Niles Expanded Metals for the Yale Lock Company.”  Applicant further argues that “highly sophisticated security contractors are not going to mistake structural expanded metal mesh panels … with locking parts … that will be applied to the gates through the fencing.”

However, as previously mentioned in the Final Action, the fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion.  TMEP §1207.01(d)(vii); see In re Decombe, 9 USPQ2d 1812 (TTAB 1988); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983).  Indeed it is common to see fences and various locks, exit devices, etc. sold together and/or by common manufacturers.  Please see Internet evidence attached here, as well as in prior office actions dated December 26, 2006, February 7, 2008 and September 3, 2008. 

Additionally, when the relevant consumer includes both professionals and the general public, the standard of care for purchasing the goods is that of the least sophisticated purchaser.  Alfacell Corp. v. Anticancer, Inc., 71 USPQ2d 1301, 1306 (TTAB 2004).

Accordingly, applicant’s request for reconsideration is denied.  The time for appeal runs from the date the final action was issued/mailed.  37 C.F.R. Section 2.64(b); TMEP Section 715.03(c).  If applicant has already filed a timely notice of appeal, the application will be forwarded to the Trademark Trial and Appeal Board (TTAB).

/tfrazier/

Tamara G. Frazier

Trademark Examining Attorney

Law Office 116

Phone: (571) 272-8256

Fax:  (571) 273-8256

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.