Response to Office Action

This will respond to the official communication dated December 28, 2004.  The Applicant has amended the description of goods to further describe the product's purpose and field of use.  Applicant also has amended the classification to International Class 7 as recommended by the Examining Attorney.  It is believed that the amended description is acceptable for registration purposes.

            The Examining Attorney has refused registration of the mark AFS on the ground that it is confusingly similar to the mark AFS shown in Registration No. 2,591,763 for water purifiers for clinical analyzers; AFS HEPA & Design shown in Registration No. 2,703,521 for residential central air conditioning units for the filtration of air; and AFS HP & Design shown in Registration No. 2,714,902, also covering residential central air conditioning units for the filtration of air. Applicant notes that Registration Nos. 2,703,521 and 2,714,902 share common ownership.  Applicant submits that the concurrent use of the marks is not likely to cause confusion and respectfully requests that the refusal be withdrawn.

The Examining Attorney asserts that the marks involved are highly similar in that they share the term AFS and that the differences in the marks do not obviate these similarities.  Further, the Examining Attorney argues that the goods are "highly related" because all of the products are filtration products.  However, this argument is belied by the fact that all of the cited registrations currently co-exist on the register.  If, as the Examining Attorney has suggested, all filtration products are considered "highly similar," then the three cited registrations (two showing common ownership) would not be permitted to co-exist. 

A review of the cited registrations shows that the filtration devices covered therein are used in different fields, namely, clinical water purifiers versus air purifiers for residential use.  Similarly, the filters covered by the instant application are used in a third field, the oil and gas industry.  Applicant submits it is highly unlikely that users of clinical water purifiers or residential air filtration units would encounter Applicant's product and, if they did, it is equally unlikely that they would be confused as to the source of the products due to the disparate nature of the industries in which the products are used.  Indeed, the Examining Attorney has not provided any evidence that the industries or channels of trade are related in any way. 

In sum, the differences in the channels of trade and fields of use of the goods obviate any likelihood of confusion.  Therefore, it is requested that the Examining Attorney withdraw the refusal of registration under § 2(d).

The Examining Attorney also has refused registration on the ground that the specimens filed with the application do not match the drawing.  The specimens filed with the application show shipping boxes bearing the labels AFS-1050HA and AFS-1010HA.  Although the specimens show matter in addition to the mark AFS, the additional alphanumeric designations merely specify Applicant's product number, which gives information regarding the filter mesh sizes.

Subject matter used solely as a model or product number does not function as a trademark.  See TMEP 1202.10.  For example, in In re Raychem Corp., 12 USPQ2d 1399 (TTAB 1989), the Applicant applied to register the mark TINEL-LOCK.  The specimen of use submitted showed the following: TR06AI-TINEL-LOCK-RING.  Although the Examining Attorney refused registration on the ground that the specimens of use did not match the mark in the application, the Board determined that the term RING was generic for the goods and that the alphanumeric phrase TR06AI was a part or stock number that did not contribute to the commercial impression of the mark TINEL-LOCK.  Consequently, the specimens were accepted.  Applicant asserts that the specimens filed with the instant application should be similarly treated.  The alphanumeric designations 1050HA and 1010HA are only product numbers which provide information regarding the filters' mesh size and as such, do not contribute to the commercial impression of the mark AFS.  Consequently. Applicant requests that the specimen refusal be withdrawn. 

With the entry of this amendment, Applicant has addressed all issues raised by the Examining Attorney.  Therefore, Applicant requests that the application be approved for publication.