Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

---

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 76690144 has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

     This Paper is submitted in response to the Office Action dated September 22, 2008 in the subject application.

      Please modify the International class to International class 01 and amend the description of goods to read as follows:  -- humidity control devices, namely, pouches and packets containing salt solutions that absorb or release moisture for use in controlling humidity in various closed environments --.

     It is further noted that the specimen of record has been deemed acceptable for International class 01 and this is acknowledged by the applicant.

REMARKS

     NO LIKELIHOOD OF CONFUSION

     The September 22, 2008 Official Action contains a trademark Section 2(d) refusal based on U.S. Trademark Registration No. 1896104.  For the reasons set forth below, applicant respectfully submits that no likelihood of confusion will arise from its use of the HUMIDIPAK mark.  As indicated in the amendment set forth above, applicant seeks to register the HUMIDIPAK mark for humidity control devices, namely, pouches and packets containing salt solutions that absorb or release moisture for use in controlling humidity in various closed environments.  U.S. Trademark Registration No. 1896104 relates to steam humidifiers and parts thereof.

Whether a likelihood of confusion exists is a question of fact and there is no litmus test which can be provided to readily guide all cases.  A number of factors are to be considered.  Perhaps the most exhaustive checklist of factors first appeared in In re E.I. Du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).  This checklist of factors has been endorsed by many courts and is often discussed in Trademark Office proceedings.  Factors listed in this checklist include: (1) the similarity or dissimilarity of the marks in their entirety as to appearance, sound, connotation and commercial impression; (2) the similarity or dissimilarity and nature of the goods or services as described in the application or in connection with which the prior mark is used; (3) the similarity or dissimilarity of established, likely-to-continue channels of trade; (4) the conditions under which and buyers to whom sales are made, i.e. "impulse" versus careful, sophisticated purchasing; (5) the fame of the prior mark; (6) the number and nature of similar marks in use on similar goods or services; (7) the nature and extent of any actual confusion; (8) the length of time during which and conditions under which there has been concurrent use without evidence of actual confusion; (9) the variety of the goods on which the mark is or is not used (house mark, family mark, product mark); (10) the market interface between the applicant and the owner of the prior mark; (11) the extent to which applicant has the right to exclude others from using its mark on goods or services; (12) the extent of potential confusion, i.e. whether de minimus or substantial; and (13) any other established fact probative of the effective use.  These factors were not listed by the court in order of importance.  Any of these factors can play a dominant role in assessing likelihood of confusion.

For at least the following reasons, no likelihood of confusion will arise from applicant's use of the HUMIDIPAK mark: (1) the goods are clearly different; (2) the channels of trade through which the goods are sold are different; and (3) it is clear that the class of purchasers would be totally different. These reasons will be discussed in greater detail below. 

     As noted, applicant proposes to use the HUMIDIPAK mark in connection with humidity control devices, namely, pouches and packets containing salt solutions that absorb or release moisture for use in controlling humidity in various closed environments.  This is far different from steam humidifiers and parts thereof.  Thus, when looking for a packet to control humidity in a closed environment, clearly one would not look for or be confused by a steam humidifier. So clearly, the goods covered by the registration and the application and the Office Action are very different.  Many of the packets of the present application are utilized in conjunction with items which require a controlled humidity.  Note that the goods of the present application both absorb and release moisture, which steam humidifiers clearly do not.

     Because the goods are so different, the channels of trade through which the goods are sold are clearly different and the careful, sophisticated purchasing employed by the buyers of humidity controlling packets is far different from one buying a steam humidifier to pour moisture into the air generally.

     In view of the foregoing, it is clear that applicant's goods:

·        do not compete with those listed in the cited registration;

·        do not compliment those listed in the cited registration;

·        would not be mistaken for those of the owners of the cited registration;

·        would not be sold to the same purchasers of the goods listed in the cited registration; and

·        will not be marketed through the same channels as the goods listed in the cited registration; and

·        have entirely different functions than those goods listed in the cited registration.

     Thus, applicant's goods are not "related" to those goods listed in the cited registration.

Also, there is a spelling difference between the marks.  

     In view of the foregoing, applicant respectfully submits that the dissimilarities that exist between the goods, the dissimilarities that exist in the established and likely-to-continue channels of trade, and the sophisticated nature of the purchasing that takes place with respect to applicant's goods all demonstrate that no likelihood of confusion will arise.  Similarly, none of the other Du Pont factors suggest that a likelihood of confusion exists between applicant's mark when used on its proposed goods given the goods listed in the cited registration.

     Applicant is the owner of U.S. Registration No. 2,351,169 for HUMIDI-PAK which also is directed to goods similar to those listed in the present application.  That registration has not provoked any confusion issues with the registered mark cited in this Office Action which have been brought to the attention of the applicant.

     In view of the above amendments and remarks, applicant requests that its mark be published for opposition.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 011 for Humidity control devices in the form of pouches, packets, humidors, and the like, for use in controlling humidity in various closed environments

Applicant hereby adds the following class of goods/services to the application:
New: Class 001 (Original Class: 011 ) for humidity control devices, namely, pouches and packets containing salt solutions that absorb or release moisture for use in controlling humidity in various closed environments
Filing Basis: Section 1(a), Use in Commerce: The mark was first used at least as early as 07/00/1997 and first used in commerce at least as early as 07/00/1997, and is now in use in such commerce.

SIGNATURE(S)
Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant has 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); and/or the applicant has had a bona fide intention to exercise legitimate control over the use of the mark in commerce by its members. 37 C.F. R. Sec. 2.44. 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); and/or the applicant has exercised legitimate control over the use of the mark in commerce by its members. 37 C.F.R. Sec. 244. 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: /C.G. Mersereau/      Date: 03/20/2009
Signatory's Name: C. G. Mersereau
Signatory's Position: Attorney of Record, MN bar member

Response Signature
Signature: /C.G. Mersereau/     Date: 03/20/2009
Signatory's Name: C. G. Mersereau
Signatory's Position: Attorney of Record, MN bar member

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 76690144
Internet Transmission Date: Fri Mar 20 12:42:23 EDT 2009
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2009032012422308
7310-76690144-430de78e0ff26a82262ba2eaa5
96a79d5-N/A-N/A-20090320122306983270