| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
Response to Office Action
The table below presents the data as entered.
Input Field
|
Entered
|
| SERIAL NUMBER |
77004986 |
| LAW OFFICE ASSIGNED |
LAW OFFICE 114 |
| MARK SECTION (no change) |
| ARGUMENT(S) |
We are responding to the Office Action dated 14 February, 2007.
In the Office Action, the examining attorney made an initial refusal to register, on the basis of a likelihood
of confusion with the mark BearHug, registered under Reg. No. 2,564,627, for locking feature for vinyl
siding panels, namely a positive snap lock for interlocking the panels together sold as a component of the
panels, owned by Exterior Systems, Inc. The examining attorney noted, however, that the applicant may
respond to the refusal to register by submitting evidence and arguments in support of registration.
We respectfully request that the examining attorney reconsider and withdraw the refusal, in view of the
following amendment, evidence and arguments.
We have amended the identification of goods to read "metal connectors for connecting timbers used in the
construction of log and timber frame structures".
We submit that this amendment and the accompanying evidence and arguments make it clear that the
goods associated with the applicant's mark are not closely related to the goods associated with the cited
mark, and that they travel through different channels of trade.
We have collected some evidence regarding the nature of the goods associated with the cited mark and the
applicant's mark. Attached are copies of the following (1) a webpage from a website operated by the
owner of the cited mark, (2) another web page from the same website containing a diagram of what is
believed to be the goods associated with the cited registration, and (3) a drawing illustrating the applicant's
connector.
It is clear from the enclosed evidence that the cited mark BearHug is used for a feature of vinyl siding
panels. It would appear that the feature comprises an extra heavy-duty double thick nailing hem and 3/4"
butt that locks panels tight to guard against wind and rain. In contrast the applicant's goods comprise a
separate metal connector for joining together posts and beams used to construct log and timber
frame structures such as houses. It should be apparent from a review of the evidence that the goods
associated with the subject marks are different, and are used for different purposes.
We note that vinyl siding assoicated with the cited mark is used for the exterior of houses, typically lower
cost houses. In contrast, the applicant's connectors are typically used for log and timber frame houses, which
tend to be high-end houses.
We submit that the applicant's goods would be directed towards framers who frame houses, as opposed to
those tradespersons who apply vinyl siding to the exterior of houses. Thus the goods associated with the
trademarks are directed at different trades, and would therefore travel through different channels of trade.
We furhter note that the subject goods are metal connectors classified in class 6, whereas the goods
associated with the cited mark are a feature of vinyl siding classified in class 19.
We also wish to bring the examining attorney's attention to the fact that the cited mark is used in association
with a feature of a product, which means that such mark must necessarily be used in conjunction with
another trade-mark for the product itself. In this case, the cited mark BearHug is used in conjunction with
the trade-mark Polar Wall Plus. This is a further factor that militates against a likelihood of confusion.
For all of the above reasons, we submit that use of the applicant's mark would not give rise to a likelihood of
confusion with the cited mark.
In response to the examining attorney's inquiry regarding the filing basis, we advise that the applicant
wishes to maintain both bases for registration, for the time being.
Favourable action on this action is respectfully requested.
|
| EVIDENCE SECTION |
| EVIDENCE FILE NAME(S) |
| ORIGINAL PDF FILE |
evi_381129655-085612110_._Polar_Wall_Plus__Web_page.pdf |
CONVERTED PDF FILE(S)
(1 page) |
\\TICRS2\EXPORT12\770\049 \77004986\xml3\ROA0002.JP G |
| ORIGINAL PDF FILE |
evi_381129655-085612110_._Butt_Joint_Web_page_Picture.PDF |
CONVERTED PDF FILE(S)
(1 page) |
\\TICRS2\EXPORT12\770\049 \77004986\xml3\ROA0003.JP G |
| ORIGINAL PDF FILE |
evi_381129655-085612110_._Fig._1.PDF |
CONVERTED PDF FILE(S)
(1 page) |
\\TICRS2\EXPORT12\770\049 \77004986\xml3\ROA0004.JP G |
| DESCRIPTION OF EVIDENCE FILE |
Two webpages from a website operated by the owner of the cited mark, and a drawing illustrating the applicant's connector |
| GOODS AND/OR SERVICES SECTION (current) |
| INTERNATIONAL CLASS |
006 |
| DESCRIPTION |
metal connectors for timbers |
| FILING BASIS |
Section 1(b) |
| FILING BASIS |
Section 44(d) |
| FOREIGN APPLICATION NUMBER |
1315576 |
| FOREIGN FILING DATE |
09/06/2006 |
FOREIGN REGISTRATION
COUNTRY |
CA |
| GOODS AND/OR SERVICES SECTION (proposed) |
| INTERNATIONAL CLASS |
006 |
| DESCRIPTION |
| metal connectors for connecting timbers used in the construction of log and timber frame structures |
| FILING BASIS |
Section 1(b) |
| FILING BASIS |
Section 44(d) |
| FOREIGN APPLICATION NUMBER |
1315576 |
| FOREIGN FILING DATE |
09/06/2006 |
FOREIGN REGISTRATION
COUNTRY |
CA |
| SIGNATURE SECTION |
| DECLARATION SIGNATURE |
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice. |
| RESPONSE SIGNATURE |
/TJS/ |
| SIGNATORY'S NAME |
Timothy J. Sinnott |
| SIGNATORY'S POSITION |
Attorney Reg No. 31,083 |
| DATE SIGNED |
04/16/2007 |
| AUTHORIZED SIGNATORY |
YES |
| FILING INFORMATION SECTION |
| SUBMIT DATE |
Mon Apr 16 09:07:19 EDT 2007 |
| TEAS STAMP |
USPTO/ROA-XX.XXX.XX.XX-20
070416090719178916-770049
86-3707a7a033aa697a64f235
6b4acd22f9b-N/A-N/A-20070
416085612110166 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
Response to Office Action
To the Commissioner for Trademarks:
Application serial no.
77004986 has been amended as follows:
Argument(s)
In response to the substantive refusal(s), please note the following:
We are responding to the Office Action dated 14 February, 2007.
In the Office Action, the examining attorney made an initial refusal to register, on the basis of a likelihood
of confusion with the mark BearHug, registered under Reg. No. 2,564,627, for locking feature for vinyl
siding panels, namely a positive snap lock for interlocking the panels together sold as a component of the
panels, owned by Exterior Systems, Inc. The examining attorney noted, however, that the applicant may
respond to the refusal to register by submitting evidence and arguments in support of registration.
We respectfully request that the examining attorney reconsider and withdraw the refusal, in view of the
following amendment, evidence and arguments.
We have amended the identification of goods to read "metal connectors for connecting timbers used in the
construction of log and timber frame structures".
We submit that this amendment and the accompanying evidence and arguments make it clear that the
goods associated with the applicant's mark are not closely related to the goods associated with the cited
mark, and that they travel through different channels of trade.
We have collected some evidence regarding the nature of the goods associated with the cited mark and the
applicant's mark. Attached are copies of the following (1) a webpage from a website operated by the
owner of the cited mark, (2) another web page from the same website containing a diagram of what is
believed to be the goods associated with the cited registration, and (3) a drawing illustrating the applicant's
connector.
It is clear from the enclosed evidence that the cited mark BearHug is used for a feature of vinyl siding
panels. It would appear that the feature comprises an extra heavy-duty double thick nailing hem and 3/4"
butt that locks panels tight to guard against wind and rain. In contrast the applicant's goods comprise a
separate metal connector for joining together posts and beams used to construct log and timber
frame structures such as houses. It should be apparent from a review of the evidence that the goods
associated with the subject marks are different, and are used for different purposes.
We note that vinyl siding assoicated with the cited mark is used for the exterior of houses, typically lower
cost houses. In contrast, the applicant's connectors are typically used for log and timber frame houses, which
tend to be high-end houses.
We submit that the applicant's goods would be directed towards framers who frame houses, as opposed to
those tradespersons who apply vinyl siding to the exterior of houses. Thus the goods associated with the
trademarks are directed at different trades, and would therefore travel through different channels of trade.
We furhter note that the subject goods are metal connectors classified in class 6, whereas the goods
associated with the cited mark are a feature of vinyl siding classified in class 19.
We also wish to bring the examining attorney's attention to the fact that the cited mark is used in association
with a feature of a product, which means that such mark must necessarily be used in conjunction with
another trade-mark for the product itself. In this case, the cited mark BearHug is used in conjunction with
the trade-mark Polar Wall Plus. This is a further factor that militates against a likelihood of confusion.
For all of the above reasons, we submit that use of the applicant's mark would not give rise to a likelihood of
confusion with the cited mark.
In response to the examining attorney's inquiry regarding the filing basis, we advise that the applicant
wishes to maintain both bases for registration, for the time being.
Favourable action on this action is respectfully requested.
Evidence
Evidence in the nature of Two webpages from a website operated by the owner of the cited mark, and a drawing illustrating the applicant's connector has been attached.
Original PDF file:
evi_381129655-085612110_._Polar_Wall_Plus__Web_page.pdf
Converted PDF file(s) (1 page)
Evidence-1
Original PDF file:
evi_381129655-085612110_._Butt_Joint_Web_page_Picture.PDF
Converted PDF file(s) (1 page)
Evidence-1
Original PDF file:
evi_381129655-085612110_._Fig._1.PDF
Converted PDF file(s) (1 page)
Evidence-1
Classification and Listing of Goods/Services
Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 006 for metal connectors for timbers
Original Filing Basis: 1(b); and 44(d).
Proposed: Class 006 for metal connectors for connecting timbers used in the construction of log and timber frame structures
Filing Basis: 1(b); and 44(d).
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: /TJS/ Date: 04/16/2007
Signatory's Name: Timothy J. Sinnott
Signatory's Position: Attorney Reg No. 31,083
The signatory has confirmed that he/she is a Canadian attorney/agent who has been granted reciprocal recognition under 37 C.F.R. §10.14(c) by the USPTOs Office of Enrollment and Discipline to
represent Canadian applicants before the USPTO; and he/she is currently the applicant's Canadian attorney/agent, or an associate thereof; and that to the best of his/her knowledge, if prior to
his/her appointment another Canadian attorney/agent or a U.S. attorney 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 Canadian attorney/agent or U.S. attorney has filed a power of attorney appointing him/her as an
associate attorney in this matter.
Serial Number: 77004986
Internet Transmission Date: Mon Apr 16 09:07:19 EDT 2007
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20070416090719178
916-77004986-3707a7a033aa697a64f2356b4ac
d22f9b-N/A-N/A-20070416085612110166
