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. 77520344 has been amended as follows:

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

The Examining Attorney has cited the following registration as a basis for a refusal to register under Section 2(d) of the Lanham Act (the "Macor Mark"):

            Mark:               I-CORE & Design

Goods:             Boats, ships, yachts and structural parts therefor; aircraft and structural parts therefor; land vehicles, namely trucks, automobiles and structural parts therefor.

            Reg. No.:             2,790,178

            Reg. Date:            December 9, 2003

            Owner:             Macor Neptun GmbH LLC

 

Applicant respectfully asserts that confusion is unlikely between Applicant's mark and the Macor Mark for the reasons set forth below and respectfully requests that the Examining Attorney withdraw the refusal to register and promptly pass this mark for publication. 

Marks Are Not Identical

 

The differences that exist between the Applicant's mark ECORE and the Macor Mark I-CORE obviate any likelihood of confusion.  The substitution of the letter "e" in Applicant's mark for the letter "i" in the Macor Mark changes the sound, appearance and over-all commercial impression created by the marks.  Even a difference of one letter can distinguish two marks.  See, e.g., In re Digirad, 45 U.S.P.Q.2d at 1841 (finding that the one letter difference between the marks DIGIRAY and DIGIRAD significant where "ray" refers to X-ray equipment and "rad" connotes a unit of radiation used in nuclear imaging equipment); In re Conti, 220 U.S.P.Q. 745 (T.T.A.B. 1983) (finding that the "one letter difference changes the commercial impression engendered by the marks" SHEAR PERFECTION for hair styling and beauty salon services and SHEER PERFECTION for make-up for legs and body).

 

In this case, the marks beginning with different letters, creating distinct commercial impressions.  And, the shared element "core" itself has different meanings in these two contexts within the aircraft industry.  An aircraft engine core refers to the essential internal systems common to all gas turbine engines.  While, in terms of structural parts for the aircraft, the term core identifies the interior section of the composite sandwich panels used in aircraft floors, bulkheads, and occasionally even the skin and wings.    

Similar Marks Co-existing on the Federal Register

Currently there are a number of similar marks on the U.S. Federal Principal Register for marks in the aircraft field that include the term "core" or slight variations thereon.  In addition to the cited mark, the following marks are registered: 

·        CORE, Reg. No.2,780,958, for "gears as components of motor vehicles and aircraft, gears as components of automotive seat adjustments, window winders, and windshield wipes; gears as components of aeronautical drive assemblies comprising propeller drives, wind screen drives and landing gear drives and aircraft controlling plants";

·        DURA-CORE, Reg. No. 0907852, for, "aluminum honeycomb core for use as a component in the manufacture of various parts of aircraft and aerospace vehicles";

·        PAA-CORE, Reg. No. 1,442,720, for, "aluminum honeycomb core for use as component in the manufacture of various parts of aircraft and aerospace vehicles";

·        MRO-CORE, Reg. No. 2,679,364, for, "machined and shaped honeycomb aircraft parts for the maintenance, repair and overhaul market"; and

·        CORE-CELL, Reg. No. 1,761,355, for, "rigid sheets of closed-cell plastic foam for composite core construction in boats, railway cars, aircraft, trucks and other mobile apparatus"

 (See Attachments from TARR.)

Although third-party registrations cannot justify the registration of a confusingly similar mark, third-party registrations are useful since they "may be relevant to show that the mark or portion of the mark is descriptive, suggestive or so commonly used that the public will look to other elements to distinguish the source of the goods."  TMEP § 1207.01(d)(iii).  Accordingly, third-party registrations are accepted in likelihood of confusion cases as proof of the way terms are employed in the marketplace.  See e.g., Tektronix, Inc. v. Daktronics, Inc., 189 U.S.P.Q. 693, 694-95 (C.C.P.A. 1976).  For reasons previously discussed and as the marks listed above confirm, the term "core" is used extensively in marks in the broad field of aerospace.  Just as the foregoing marks are able to co-exist on the Principal Register, Applicant's mark is also able to co-exist with the Macor Mark.

Sophistication of Prospective Purchasers

Likelihood of confusion between the cited marks and Applicant's mark is further averted by the level of sophistication to be expected from the potential purchasers of Applicant's goods.  TMEP § 1207.01; Electronics Design & Sales, Inc., 21 U.S.P.Q.2d at 1392 (emphasizing that purchaser's sophistication is an important and "often dispositive" factor in the likelihood of confusion analysis).  Applicant's jet engines are very expensive, ranging in millions of dollars and purchased only after careful deliberation and negotiations between Applicant and the purchasers. 

 

            Purchasers of Applicant's aircraft jet engines and replacements parts thereof are professional purchasers at airplane manufacturers and airline industries.  Such purchasers have been recognized as sophisticated and discriminating purchasers.  See e.g., Industrial Nucleonics Corp. v. Hinde, 177 U.S.P.Q. 386 (C.C.P.A. 1973) (engineers and purchasing agents at manufacturing institutions and industrial plants are discriminating purchasers). 

Similarly, purchasers of Applicant's aircraft engines parts should be considered discriminating purchasers, i.e., the mechanics, technicians and other personnel in the aviation industry.  These individuals receive highly specialized training to work on aircraft engines.  Sophisticated purchasers in such a highly specialized field would not likely confuse the Macor Mark with Applicant's.     

Goods are Unrelated

            Similarity of marks alone is not sufficient to establish a likelihood of confusion.  Toro Mfg. Corp. v. Lectron Indus. Inc., 175 U.S.P.Q. 660, 662 (T.T.A.B. 1972).  Even when the marks are identical, there is no likelihood of confusion when goods are not directly competitive and are unrelated.  Electronic Design & Sales, Inc. v. Electronic Data Sys., 21 U.S.P.Q.2d 1388 (Fed. Cir. 1992) (no likelihood of confusion despite "near identity of the marks").

            In this case, Applicant's identification of goods is limited to jet engines and replacement parts thereof.  Specifically, Applicant's goods refer to an aircraft engine core encompassing the essential internal systems, common to all gas turbine engines: the compressor, combustor, and turbine.  On the other hand, the Macor Mark covers aircrafts in their entirety and structural parts for aircraft.  Although the cited mark also offer goods that would fall into the broadly-defined aircraft industry, there are such significant differences between the functions of the respective goods, the potential purchasers, and the settings where the goods would be found, that the Macor goods should not be considered related to Applicant's jet engines. 

CONCLUSION

            In conclusion, Applicant respectfully submits that the cumulative effect of all the differences between the Applicant's mark and the cited mark compel the conclusion that there is no likelihood of confusion between its mark and the cited mark.  Accordingly, Applicant respectfully requests that the Examining Attorney reconsider and withdraw the refusal to register under Section 2(d) and promptly pass its mark for publication.

 

EVIDENCE
Evidence in the nature of TARR printouts. has been attached.
Original PDF file:
evi_1211136194-094245911_._CORE.pdf
Converted PDF file(s) (5 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Original PDF file:
evi_1211136194-094245911_._DURA-CORE.pdf
Converted PDF file(s) (3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_1211136194-094245911_._PAA-CORE.pdf
Converted PDF file(s) (3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_1211136194-094245911_._MRO-CORE.pdf
Converted PDF file(s) (3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_1211136194-094245911_._CORE-CELL.pdf
Converted PDF file(s) (3 pages)
Evidence-1
Evidence-2
Evidence-3

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: /Catherine Mennenga/      Date: 02/13/2009
Signatory's Name: Catherine Mennenga
Signatory's Position: Attorney of Record, NY Bar Member

Response Signature
Signature: /Catherine Mennenga/     Date: 02/13/2009
Signatory's Name: Catherine Mennenga
Signatory's Position: Attorney of Record, NY 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: 77520344
Internet Transmission Date: Fri Feb 13 11:29:15 EST 2009
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2009021311291528
3523-77520344-4403d84ff3eb75ca61e72bb7fc
15b75ffe-N/A-N/A-20090213094245911517