Response to Office Action

PTO Form 1957 (Rev 9/2005)

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

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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. 77445037 has been amended as follows:

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

     In the Office Action dated July 23, 2008, the Examining Attorney refused registration of the above-referenced mark under Sec. 2(d) in view of U.S. Registration No. 3, 283,173 alleging a likelihood of confusion.  In particular, the Examining Attorney states that:

In this case, the following factors are the most relevant: similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or services. (citations omitted).

 

Taking into account the relevant du Pont factors, a likelihood of confusion determination in this case involves a two-part analysis.  The marks are compared for similarities in their appearance, sound, connotation and commercial impression. The goods and/or services are compared to determine whether they are similar or commercially related or travel in the same trade channels.  (citations omitted).

 

The applicant's mark is WEBER and design.  The registrant's mark is WEBER and design.

 

The applicant's mark is similar to the registrant's mark because the dominant portions of each mark are identical in sound appearance and meaning.  The differences in the marks are minor and do not change the commercial impression of the marks.

 

Likelihood of confusion is determined on the basis of the goods and/or services as they are identified in the application and registration. (citations omitted).

 

In this case, applicant's goods and/or services are identified broadly.  Therefore, it is presumed that the application encompasses all goods and/or services of the type described, including those in the registrant's more specific identification, that they move in all normal channels of trade, and that they are available to all potential customers. (citations omitted).

 

Additionally, the applicant's services are related to the registrant's services because the registrant's services are the subject matter of the applicant's services.

 

Accordingly, because confusion as to source is likely, registration is refused under Trademark Act Section 2(d).

 

            Applicant respectfully traverses the foregoing refusal of registration.  To begin, Applicant respectfully submits that the Examining Attorney has failed to give proper weight to the design portions of both the pending mark and the cited registration.  In particular, the Office Action does not include any discussion of the distinct designs associated with each mark, but rather simply refers to applicant's mark as "WEBER and design" and to the registrant's mark as "WEBER and design."  Moreover, the Examining Attorney concludes his analysis regarding the similarity of the marks by stating that "the applicant's mark is similar to the registrant's mark because the dominant portions of each mark are identical in sound, appearance and meaning," and that "[t]he differences in the marks are minor and do not change the commercial impression of the marks."

            As succinctly stated by the TTAB in In re Loew's Theatres, Inc., 218 USPQ 956 (TTAB 1983), "[t]o ignore the role of the design elements and interpret only the word portions of the mark would fly in the face of the well known rule that in assessing the likelihood of confusion, marks should be considered in their entireties. Id.  Here, both the pending mark and the cited registration have a distinct and prominent design associated therewith.  Applicant respectfully disagrees with the Examining Attorney's conclusion that the differences in the marks are minor. It is applicant's opinion that the design portions form a prominent part of each mark, and provide each mark with a distinct overall commercial impression. 

            In sum, applicant respectfully submits that the Examining Attorney has placed too much emphasis on the word portion of the marks, and has improperly discounted the distinct designs associated with each of such marks.

            Next, the Examining Attorney considered the similarity of the goods and/or services.  In this regard, the Examining Attorney states that "applicant's goods and/or services are identified broadly" and that "[t]herefore, it is presumed that the application encompasses all goods and/or services of the type described, including those in registrant's more specific identification, that they move in all normal channels of trade, and that they are available to all potential customers."  Applicant respectfully disagrees.  Although some of the goods/services in applicant's pending application appear similar to the goods identified in the cited registration, both the goods and channels of trade are in fact quite distinct.  More particularly, the registered goods/services are directed to the coal mining sector, whereas the goods/services identified in the pending application are directed to the field of civil engineering and construction.  In this regard, it is noteworthy to mention that both companies have co-existed throughout the world in many different countries for many years.  The term "WEBER" has in fact been used by applicant in connection with its goods since at least as early as 1927, and such name is therefore well known to consumers in this field.  In sum, it is respectfully submitted that both the goods and the channels of trade are distinct, weighing against a finding of a likelihood of confusion. 

            Although the Examining Attorney did not consider this next du Pont factor, applicant respectfully submits that the purchasers of goods/services under both the pending mark and the cited mark are careful sophisticated purchasers who are not likely to be confused.  In particular, the goods/services distributed under the cited registration are sold only after consultation and review by a representative of A. Weber, the owner of the cited registration.  Moreover, the purchasers of such goods/services are typically mining companies, which are clearly sophisticated purchasers.  Likewise, with respect to the goods/services to be sold under the pending mark, such goods will also be purchased by careful, sophisticated consumers, and not as a result of an "impulse" purchase.

            In sum, applicant respectfully submits that when all of the du Pont factors are properly considered, and the prominent design portions of each mark are given their proper weight, together with the recognition of the distinct goods, distinct channels of trade and sophisticated purchasers associated with such goods/services, that no likelihood of confusion exists between the cited registration and the pending mark.

            Finally, the identification of goods and services has been amended in accordance with the Examining Attorney's proposed suggestion.

            Thus, in view of the amendment to the application, together with the remarks set forth above, it is respectfully submitted that the above-identified mark is not likely to cause confusion with the cited registration.  Accordingly, reconsideration and allowance of the present application is respectfully solicited.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 001 for Chemicals used in building and civil engineering industry; impregnation and injection preparations for concrete, stone, visible and covered masonry; bonding primers; surface hardeners; additives to concrete and mortar; plasticizers; damp proofing and water proofing preparations, except paints, for masonry; oil-repellent preparations; mould release preparations; adhesives used in industry; unprocessed artificial resins; adhesives for fixing building materials, in particular tiles and natural or artificial stones
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: 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 with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Proposed:
Tracked Text Description: Chemicals used in building and civil engineering industry; [impregnation and injection preparations for concrete, stone, visible and covered masonry]; impregnation and injection preparations for concrete, stone, visible and covered masonry, namely, waterproofing chemical compositions, sealers, sealing compounds and fillers; [bonding primers]; bonding primers, namely, primers for use with leveling compounds, tile adhesives, repair mortars and one-coat renders; [surface hardeners]; surface hardeners, namely, hardening agents for use on friable, absorbent substrates; additives to concrete and mortar; plasticizers; [damp proofing and water proofing preparations, except paints, for masonry]; damp proofing and water proofing preparations, except paints, for masonry, namely, waterproofing chemical compositions; [oil-repellent preparations]; oil-repellent preparations, namely, protective products against oil penetration and oil stains; mould release preparations; adhesives used in industry; unprocessed artificial resins; adhesives for fixing building materials, in particular tiles and natural or artificial stonesClass 001 for Chemicals used in building and civil engineering industry; impregnation and injection preparations for concrete, stone, visible and covered masonry, namely, waterproofing chemical compositions, sealers, sealing compounds and fillers; bonding primers, namely, primers for use with leveling compounds, tile adhesives, repair mortars and one-coat renders; surface hardeners, namely, hardening agents for use on friable, absorbent substrates; additives to concrete and mortar; plasticizers; damp proofing and water proofing preparations, except paints, for masonry, namely, waterproofing chemical compositions; oil-repellent preparations, namely, protective products against oil penetration and oil stains; mould release preparations; adhesives used in industry; unprocessed artificial resins; adhesives for fixing building materials, in particular tiles and natural or artificial stones
Filing Basis: Section 1(b), Intent to Use: 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 with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 002 for Paints, varnishes, lacquers; coatings (paints); paints and decorative and protective coverings in the form of paints, coatings for walls, floors and ceilings for waterproofing, decorative and protective purposes; pasty coatings used as priming coats; priming coats; lime wash; preservatives against rust; anti-corrosive preparations; protective preparations for building materials; pigments
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: 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 with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Proposed:
Tracked Text Description: Paints, varnishes, lacquers; [coatings (paints)]; coatings in the nature of paint and decorative coverings for the building and civil engineering industry; [paints and decorative and protective coverings in the form of paints, coatings for walls, floors and ceilings for waterproofing, decorative and protective purposes]; paints and decorative and protective coverings, namely, paints, resin-based coatings for walls, floors and ceilings for waterproofing, decorative and protective purposes; [pasty coatings used as priming coats]; pasty coatings used as priming coats, namely, primers; [priming coats]; priming coats, namely, paint primers; [lime wash]; lime wash paint; [preservatives against rust]; preservatives against rust in the nature of a coating; [anti-corrosive preparations]; anti-corrosive preparations, namely, anti-corrosive compositions, paints and primers; [protective preparations for building materials]; protective preparations for building materials, namely, preservative preparations against stains, preservative preparations against graffiti, preservative preparations against biological and organic fouling, anti-corrosive preparations; pigmentsClass 002 for Paints, varnishes, lacquers; coatings in the nature of paint and decorative coverings for the building and civil engineering industry; paints and decorative and protective coverings, namely, paints, resin-based coatings for walls, floors and ceilings for waterproofing, decorative and protective purposes; pasty coatings used as priming coats, namely, primers; priming coats, namely, paint primers; lime wash paint; preservatives against rust in the nature of a coating; anti-corrosive preparations, namely, anti-corrosive compositions, paints and primers; protective preparations for building materials, namely, preservative preparations against stains, preservative preparations against graffiti, preservative preparations against biological and organic fouling, anti-corrosive preparations; pigments
Filing Basis: Section 1(b), Intent to Use: 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 with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 017 for Materials used for thermal insulation and sound insulation; packing, stopping and insulating materials; polystyrene panels and reinforcing mesh for thermal insulation of facades; sealant compounds for joints
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: 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 with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Proposed:
Tracked Text Description: [Materials used for thermal insulation and sound insulation]; Materials used for thermal insulation and sound insulation, namely, building insulation; [packing, stopping and insulating materials]; packing, stopping and insulating materials, namely, insulating mortars, phenolic insulant, polyurethane insulant, glass wool and mineral wool for insulation particle boards for use as building insulation; polystyrene panels and reinforcing mesh for thermal insulation of facades; sealant compounds for jointsClass 017 for Materials used for thermal insulation and sound insulation, namely, building insulation; packing, stopping and insulating materials, namely, insulating mortars, phenolic insulant, polyurethane insulant, glass wool and mineral wool for insulation particle boards for use as building insulation; polystyrene panels and reinforcing mesh for thermal insulation of facades; sealant compounds for joints
Filing Basis: Section 1(b), Intent to Use: 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 with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 019 for Building materials (non-metallic); all kinds of mortar in the form of powder or paste for the construction and renovation of buildings, such as facade coatings, interior coatings, base-coats, damproofing mortar, all kinds of repair mortar; fairing mortar, levelling and smoothing mortar for walls, ceilings and floors, mortar for screeds, mortar for building and pointing masonry, roofing mortar, fireproofing mortar, concrete, mortar for fixing and grouting paving blocks, ceramic coatings, natural or artificial stone, mortar for building walls or other building elements, bedding mortar, waterproofing mortar or coatings, plugging mortar, anchoring mortar, fixing mortar, grouting mortar; asphalt and bitumen, bituminous preparations for building
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: 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 with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Proposed:
Tracked Text Description: [Building materials (non-metallic)]; Non-metal building materials; [all kinds of mortar in the form of powder or paste for the construction and renovation of buildings, such as facade coatings, interior coatings, base-coats, damproofing mortar, all kinds of repair mortar]; mortar in the form of powder or paste for the construction and renovation of buildings, namely, mortar for facade coatings, mortar for interior coatings, mortar for base-coats, damproofing mortar, repair mortar; [fairing mortar, levelling and smoothing mortar for walls, ceilings and floors, mortar for screeds, mortar for building and pointing masonry, roofing mortar, fireproofing mortar, concrete, mortar for fixing and grouting paving blocks, ceramic coatings, natural or artificial stone, mortar for building walls or other building elements, bedding mortar, waterproofing mortar or coatings, plugging mortar, anchoring mortar, fixing mortar, grouting mortar]; fairing mortar, leveling and smoothing mortar for walls, ceilings and floors, mortar for screeds, mortar for building and pointing masonry, roofing mortar, fireproofing mortar, concrete, mortar for fixing and grouting paving blocks, ceramic tiles and natural or artificial stone, mortar for building walls or other building elements, bedding mortar, waterproofing mortar and bituminous wall coatings, plugging mortar, anchoring mortar, fixing mortar, grouting mortar; [asphalt and bitumen, bituminous preparations for building]; asphalt and bitumen, bituminous preparations for building, namely, bitumen asphalt and bitumen-based coatings for wallsClass 019 for Non-metal building materials; mortar in the form of powder or paste for the construction and renovation of buildings, namely, mortar for facade coatings, mortar for interior coatings, mortar for base-coats, damproofing mortar, repair mortar; fairing mortar, leveling and smoothing mortar for walls, ceilings and floors, mortar for screeds, mortar for building and pointing masonry, roofing mortar, fireproofing mortar, concrete, mortar for fixing and grouting paving blocks, ceramic tiles and natural or artificial stone, mortar for building walls or other building elements, bedding mortar, waterproofing mortar and bituminous wall coatings, plugging mortar, anchoring mortar, fixing mortar, grouting mortar; asphalt and bitumen, bituminous preparations for building, namely, bitumen asphalt and bitumen-based coatings for walls
Filing Basis: Section 1(b), Intent to Use: 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 with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 037 for Information on construction, maintenance, cleaning, renovation and repair of works, buildings and civil engineering works; information on construction, maintenance, cleaning, renovation and repair of works, buildings and civil engineering works, provided using data processing systems, computer databases or computer or data transmission networks, including the Internet and the World Wide Web; rental of construction tools and equipment
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: 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 with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Proposed:
Tracked Text Description: [Information on construction, maintenance, cleaning, renovation and repair of works, buildings and civil engineering works]; Information on construction, maintenance, cleaning, renovation and repair of bridges, tunnels, dams, roads and highways, railways, airports, sewerage systems, water towers, piers, wharfs, jetties, locks, power plants, processing plants; [information on construction, maintenance, cleaning, renovation and repair of works, buildings and civil engineering works, provided using data processing systems, computer databases or computer or data transmission networks, including the Internet and the World Wide Web]; information on construction, maintenance, cleaning, renovation and repair of bridges, tunnels, dams, roads and highways, railways, airports, sewerage systems, water towers, piers, wharfs, jetties, locks, power plants, processing plants, provided using data processing systems, computer databases or computer or data transmission networks, including the Internet and the World Wide Web; rental of construction tools and equipmentClass 037 for Information on construction, maintenance, cleaning, renovation and repair of bridges, tunnels, dams, roads and highways, railways, airports, sewerage systems, water towers, piers, wharfs, jetties, locks, power plants, processing plants; information on construction, maintenance, cleaning, renovation and repair of bridges, tunnels, dams, roads and highways, railways, airports, sewerage systems, water towers, piers, wharfs, jetties, locks, power plants, processing plants, provided using data processing systems, computer databases or computer or data transmission networks, including the Internet and the World Wide Web; rental of construction tools and equipment
Filing Basis: Section 1(b), Intent to Use: 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 with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Providing of training on construction, maintenance, cleaning, renovation and repair of works, buildings and civil engineering works; practical training on the use of non-metallic building materials
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: 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 with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Proposed:
Tracked Text Description: [Providing of training on construction, maintenance, cleaning, renovation and repair of works, buildings and civil engineering works]; Providing of training on construction, maintenance, cleaning, renovation and repair of bridges, tunnels, dams, roads and highways, railways, airports, sewerage systems, water towers, piers, wharfs, jetties, locks, power plants, processing plants; practical training on the use of non-metallic building materialsClass 041 for Providing of training on construction, maintenance, cleaning, renovation and repair of bridges, tunnels, dams, roads and highways, railways, airports, sewerage systems, water towers, piers, wharfs, jetties, locks, power plants, processing plants; practical training on the use of non-metallic building materials
Filing Basis: Section 1(b), Intent to Use: 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 with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

SIGNATURE(S)
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: /r. glenn schroeder/     Date: 01/23/2009
Signatory's Name: R. Glenn Schroeder
Signatory's Position: Attorney for applicant

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: 77445037
Internet Transmission Date: Fri Jan 23 16:25:27 EST 2009
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XX-2009012316252701
4554-77445037-4405a21546442a5c6993fef162
84bd6aa9-N/A-N/A-20090123161227863398