Response to Office Action

PTO Form 1957 (Rev 5/2006)

OMB No. 0651-0050 (Exp. 04/2009)

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PTO Form 1957 (Rev 5/2006)

OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 78534314 has been amended as follows:
Argument(s)
In response to the substantive refusal(s), please note the following:

REMARKS

In the Office Action dated July 25, 2005, the Examining Attorney advised Applicant that Applicant’s identification of goods was unacceptable. Per Applicant’s earlier correspondence with the Examining Attorney, the identification of goods for the Application was amended as follows: "Portable battery-powered power tools, namely, drills, saws and sanders; electric powered tools, namely sanders, hammers, saws, wrenches, grinders, drills, screwdrivers, ratchets, sockets, and tile cutters; multi-purpose high pressure washers; paint spray guns; electric generators; electric compressors; power bench tools, namely, drill presses, table saws and sanders."

Additionally, the Examining Attorney also cited U.S. Registration No. 2,659,869 for WORK FORCE and Registration No. 1,612,672 for WORK FORCE, , both by different owners, as conflicting under Section 2(d) ("the Cited Marks").

DISCUSSION

Concerning the Cited Marks, pursuant to the discussion below, Applicant submits that the Cited Marks should no longer present a barrier to registration of Applicant’s Mark. Applicant therefore requests that the initial refusal to register be withdrawn and that Applicant’s Application be approved for publication. Reconsideration of Applicant’s Application is respectfully requested in view of the following discussion.

In determining likelihood of confusion under Section 2(d), the similarity or dissimilarity and nature of the goods offered under the marks must be considered. See In re E.I. Du Pont de Nemours & Co., 177 U.S.P.Q. 563, 567 (C.C.P.A. 1973). Pursuant to the amendments offered herein, Applicant’s Mark is to be used for a variety of battery and electrical power tools, pressure washers, paint sprayers, generators, and the like. The citations of the Cited Marks are presumably premised upon the inclusion of certain goods in Applicant’s Application which subsequently have been amended or deleted from the Application. Applicant believes the amendment or deletion of the goods at issue sufficiently addresses the Examiner’s refusal, such that confusion is not likely and the citations should be withdrawn.

For ease of reference, presented below is a list comparing the present goods of Application as amended to the goods of the Cited Marks.

1. WORKFORCE, 78/534,314, Homer TLC, Inc., IC 7 –Portable battery-powered power tools, namely, drills, saws and sanders; electric powered tools, namely, sanders, hammers, saws, wrenches, grinders, drills, screwdrivers, ratchets, sockets, and tile cutters; multi-purpose high pressure washers; paint spray guns; electric generators; electric compressors; power bench tools, namely, drill presses, table saws and sanders;

2. WORK FORCE, 1,612,672, EMSCO, INC., IC 8 - lawn and garden tools, namely shovels, hoes, rakes and shears;

3. WORK FORCE, 2,659,869, Weems Industries Inc., IC 8 - Manually operated grease guns, manually operated pumps for lubricants and fuels, manually operated oilers.

Registration No. 1,612,672

Pursuant to the amendments offered herein, Applicant’s Mark is to be used for "portable battery-powered power tools, namely, drills, saws and sanders; electric powered tools, namely sanders, hammers, saws, wrenches, grinders, drills, screwdrivers, ratchets, sockets, and tile cutters; multi-purpose high pressure washers; paint spray guns; electric generators; electric compressors; power bench tools, namely, drill presses, table saws and sanders." The citation of Registration 1,612,672 is apparently premised upon the inclusion of certain goods in Applicant’s Application which subsequently have been deleted from the Application, specifically, "lawn and garden tools, namely shears, trimmers, spreaders, blowers, shredders, edgers." Those goods were been deleted from the Application entirely and all of the remaining goods, including the specific power tools defined in the amendment, differ significantly from the lawn and garden tools covered by Registration 1,612,672. Applicant’s goods serve a different purpose from the goods of Registration No. 1,612,672 and are intended for different consumers. Therefore, there is no likelihood of confusion between Applicant’s Mark and Registration 1,612,672 on the basis of the remaining goods in the Application. Applicant believes the deletion and amendment of the goods at issue sufficiently addresses the Examiner’s refusal, and the citation should be withdrawn.

Registration No. 2,659,869

The Examining Attorney’s citation of this registration is also presumably premised upon the inclusion of certain goods in Applicant’s Application which subsequently have been amended or deleted from the Application, specifically, "electric pumps," and "power tools." "Electric pumps" have been deleted and the remaining "power tools" are clearly related to construction, woodworking, tile work and the like. All of the remaining goods of the Application differ significantly from the grease guns and lubricant pumps covered by Registration No. 2,659,869. Applicant’s goods serve a different purpose from the goods covered by Registration No. 2,659,869 and are intended for different consumers. Accordingly, Applicant believes the amendment of the Application sufficiently addresses the Examiner’s refusal, such that the citation should be withdrawn.

Given the above discussion, it is clear that the goods to be offered under Applicant’s Mark are different from those of both Cited Marks, are used for different purposes, and are not competitive with the goods of the Cited Marks.

2. Doubts Resolved in Favor of the Applicant

If the Examining Attorney still waivers on the question of likelihood of confusion, Applicant urges the Examining Attorney to consider that doubts are to be resolved in the Applicant’s favor, on the theory that any person who believes that he or she would be damaged by the registration will have an opportunity to oppose the registration. In re Gourmet Bakers, Inc., 173 U.S.P.Q. 565 (T.T.A.B. 1972); see also In re Conductive Sys., Inc., 220 U.S.P.Q. 84 (T.T.A.B.) 1983; accord In re Aid Labs., Inc., 221 U.S.P.Q. 1215 (T.T.A.B. 1984); In re Bel Paese Sales Co., 1 U.S.P.Q.2d 1233 (T.T.A.B. 1986); In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F2d 1567 (Fed. Cir. 1987).

CONCLUSION

In view of the foregoing, Applicant respectfully submits that this Application is in condition for publication and action consistent therewith is respectfully requested. If a telephone conference would expedite the processing of this Application, the Examining Attorney is requested to contact the undersigned at (302) 798-0620. Please date stamp and return the enclosed postcard to acknowledge receipt of this material.

Classification and Listing of Goods/Services

Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 007 for power tools; pressure washers; paint sprayers; steamers; heat tools; bench/stationary tools; fasteners; generators; compressors; wallpaper adhesive and removing tools; electric pumps; sanders; hammers; saws; wrenches; grinders; drills; screwdrivers; household appliances; lawn and garden tools, shears, trimmers, spreaders, blowers, shredders, edgers; snow blowers; lawn mowers
Original Filing Basis: 1(b).
Proposed: Class 007 for Portable battery-powered power tools, namely, drills, saws and sanders; electric powered tools, namely, sanders, hammers, saws, wrenches, grinders, drills, screwdrivers, ratchets, sockets and tile cutters; multi-purpose high pressure washers; paint spray guns; electric generators; electric compressors; power bench tools, namely, drill presses, table saws and sanders

Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant 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). 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). 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: /Steven M Levy/      Date: 01/23/2006
Signatory's Name: Steven M. Levy
Signatory's Position: President

Response Signature

Signature: /Steven M Levy/     Date: 01/23/2006
Signatory's Name: Steven M. Levy
Signatory's Position: President
        
Serial Number: 78534314
Internet Transmission Date: Mon Jan 23 14:37:54 EST 2006
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XX-2006012314375442
4566-78534314-320e79f4ff5b94e8bdab0b6358
cc2c5c3c-N/A-N/A-20060123142406538354