| PTO Form 1957 (Rev 5/2006) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
| SERIAL NUMBER | 78633485 |
| LAW OFFICE ASSIGNED | LAW OFFICE 101 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
Section 2(d) Refusal The Examiner has refused registration of Applicant's mark on the basis of a likelihood of confusion with Registration No. 1036621 "AMI 1" for "assembly machines" owned by Great Lakes Automation Services, Inc. ("GLAS"). Specifically, the Examiner has determined that the parties' marks share the salient feature "AMI" and that the parties' goods are closely related. On the issue of similarity between the marks, Applicant respectfully submits that although both marks contain the letters "AMI," the Examiner should not ignore the numeral "1" contained in GLAS's mark which is significant in that it connotes a particular model, type or generation of GLAS's products. It is the combination of "AMI" and "1" as a whole that creates the trademark significance. Accordingly, Applicant respectfully requests that the Examiner reconsider his position on the issue of similarity between the marks. As for the issue of relatedness of the parties' goods, it appears that the Examiner has relied solely on a few (a total of four) third party registrations for marks that cover both welding machines and assembly machines, to prove that the parties' goods are closely related. The Examiner's assumption seems to be that those third party registrations prove that buyers are used to seeing the same mark on both welding machines and assembly machines. The difficulty with the Examiner's approach is that courts and the TTAB have often criticized the evidentiary weight of third party registrations as evidence of buyer perceptions. For example, courts and TTAB have held that third party registrations are not evidence of use so as to have conditioned the mind of prospective purchasers. See, e.g., San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 196 USPQ 1 (CCPA 1977); American Hospital Supply Corp. v. Air Products & Chemicals, Inc., 194 USPQ 340 (TTAB 1977). The existence of third party registrations is not evidence of what happens in the market place or that customers are familiar with their use. See Scarves by Vera, Inc. v. Todo Imports, Ltd., 192 USPQ 289 (2d Cir. 1976). Absent proof of use and effect on the public mind, third party registrations can have no impact on the strength and likely confusion issues because the purchasing public is not aware of registrations reposing in the Patent & Trademark Office. See Smith Bros. Mfg. Co. v. Stone Mfg. Co., 177 USPQ 462 (CCPA 1973). Also, of the third party registrations cited by the Examiner, at least one registration - namely, Registration No. 2382204 "METEOR" - appears to have been issued under Section 44(e). The TTAB has held that third party registrations issued under Section 44(e), without any use in commerce basis, have very little persuasive value on this point. See In re Albert Trostel & Sons Company, 29 USPQ2d 1783 (TTAB 1993); In re. Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988). In view of the foregoing, Applicant respectfully submits that the Examiner has not met the requisite burden of proof in establishing that welding machines and assembly machines are closely related goods. Accordingly, Applicant respectfully requests that the Examiner either reconsider his refusal or present additional evidence to prove that welding machines and assembly machines are indeed closely related goods. |
|
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 007 |
| DESCRIPTION | |
| ELECTRIC ARC WELDING MACHINES; ELECTRIC WELDING MACHINES; GAS WELDING MACHINES; LASER WELDING MACHINES; PLASMA WELDING MACHINES; GTAW (GAS TUNGSTEN ARC WELDING) WELDING MACHINES; GMAW (GAS METAL ARC WELDING) WELDING MACHINES; PAW (PLASMA ARC WELDING) WELDING MACHINES; DC (DIRECT CURRENT) WELDING MACHINES; AC (ALTERNATING CURRENT) WELDING MACHINES; FCAW (FLUX CORED ARC WELDING) WELDING MACHINES; MAG (METAL ACTIVE GAS) WELDING MACHINES; SMAW (SHIELDED METAL ARC WELDING) WELDING MACHINES; RESISTANCE WELDING MACHINES; SPOT WELDING MACHINES; FRICTION STIR WELDING MACHINES; INDUCTION WELDING MACHINES; PARTS OF AND ACCESSORIES FOR THE FOREGOING, NAMELY, WELDING HEADS, PIPE WELDING HEADS, TUBE WELDING HEADS, FITTING WELDING HEADS, TUBE-TO-TUBESHEET WELDING HEADS, NARROW-GAP WELDING HEADS, SEAM WELDING HEADS, WELD CLADDING HEADS, WELDING TORCHES, WELD CLADDING TORCHES, WELDING TORCH MANIPULATORS, WELDING TORCH HOLDERS, ELECTRODE HOLDERS, ELECTRODE EXTENDERS, TUNGSTEN ELECTRODES, TUNGSTEN ALLOY ELECTRODES, WELD OBSERVATION VIDEO CAMERA ASSEMBLIES, WELD PUDDLE VIEWING EQUIPMENT, WELDING MACHINE PROGRAMMING SOFTWARE, WELDING MACHINE CONTROL SOFTWARE, WELDING DATA COLLECTION DEVICES, WELDING DATA COLLECTION SOFTWARE, PIPE CLAMP INSERTS, TUBE CLAMP INSERTS, WELDING HEAD GUIDE RINGS, WELDING WIRE FEEDERS, WELDING WIRE MANIPULATORS, WELDING MACHINE COOLING UNITS, WELDING TORCH COOLING UNITS, WELDING EQUIPMENT CABLES, WELDING EQUIPMENT EXTENSION CABLES, WELDING MACHINE CONTROL PENDANTS, WELDING MACHINE INTERFACE DEVICES, PURGE MANDREL TOOLS, TUBE ALIGNMENT GAUGES, FITTING SUPPORT MANDRELS, WELD HEAD ALIGNMENT FIXTURES, WELD SHIELDING DEVICES, WELD VIEWING EQUIPMENT, AND PARTS AND ACCESSORIES THEREOF; PIPE CUTTING AND FACING EQUIPMENT, TUBE CUTTING AND FACING EQUIPMENT, WELD INSPECTION EQUIPMENT AND PARTS AND ACCESSORIES THEREOF; WELDER TRAINING MANUALS, WELDER PROTECTIVE EQUIPMENT; CONSUMABLE WELD FILLER PRODUCTS, CONSUMABLE WELDING TORCH PARTS, WELDING GAS CONTROL DEVICES; WELDING POWER SUPPLIES AND PARTS AND ACCESSORIES THEREOF AND THEREFOR | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 11/30/1977 |
| FIRST USE IN COMMERCE DATE | At least as early as 11/30/1977 |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 007 |
| DESCRIPTION | |
| ELECTRIC ARC WELDING MACHINES; ELECTRIC WELDING MACHINES; GAS WELDING MACHINES; LASER WELDING MACHINES; PLASMA WELDING MACHINES; GTAW (GAS TUNGSTEN ARC WELDING) WELDING MACHINES; GMAW (GAS METAL ARC WELDING) WELDING MACHINES; PAW (PLASMA ARC WELDING) WELDING MACHINES; DC (DIRECT CURRENT) WELDING MACHINES; AC (ALTERNATING CURRENT) WELDING MACHINES; FCAW (FLUX CORED ARC WELDING) WELDING MACHINES; MAG (METAL ACTIVE GAS) WELDING MACHINES; SMAW (SHIELDED METAL ARC WELDING) WELDING MACHINES; RESISTANCE WELDING MACHINES; SPOT WELDING MACHINES; FRICTION STIR WELDING MACHINES; INDUCTION WELDING MACHINES; PARTS OF AND ACCESSORIES FOR THE FOREGOING, NAMELY, WELDING HEADS, WELDING HEADS FOR WELDING OF PIPES, WELDING HEADS FOR WELDING OF TUBING, WELDING HEADS FOR WELDING OF FITTINGS, WELDING HEADS FOR WELDING OF TUBES TO TUBESHEETS, WELDING HEADS FOR WELDING OF PIPES AND PLATES WITH NARROW GAPS BETWEEN PIPES OR PLATES, WELDING HEADS FOR WELDING OF SEAMS BETWEEN FLAT OR CURVED PLATES, WELDING HEADS FOR CLADDING WITH AN ALLOY PIPE OR PLATE SURFACES BY WELDING PROCESS; WELD PUDDLE VIEWING EQUIPMENT, NAMELY, EQUIPMENT THAT INCORPORATES CAMERAS, OPTICS AND OPTICAL FILTERS USED TO OBSERVE AND TRANSMIT TO A RECEIVER IMAGES OF THE MOLTEN METAL PUDDLE THAT IS GENERATED DURING WELDING; WELDING DATA COLLECTION DEVICES, NAMELY, DEVICES THAT MEASURE WELDING PARAMETERS SUCH AS VOLTAGE, AMPERAGE, LINEAR OR CIRCUMFERENTIAL PROGRESS OF THE WELD AND OTHER FUNCTIONS AND RECORD THEM FOR FUTURE USE OR TRANSMIT THEM TO A REMOTE RECIPIENT; WELDING HEAD GUIDE RINGS; WELDING WIRE FEEDERS; WELDING WIRE MANIPULATORS; WELDING MACHINE CONTROL PENDANTS; WELDING MACHINE INTERFACE DEVICES, NAMELY, DEVICES THAT ALLOW A WELDING MACHINE TO COOPERATE WITH A DIFFERENT MACHINE, SUCH AS WITH A ROTATING DEVICE FOR THE PARTS BEING WELDED; TUBE ALIGNMENT GAUGES, NAMELY, GAUGES THAT ARE EMPLOYED TO BRING INTO ALIGNMENT THE ENDS OF TUBES SO THAT WELDING OF THE TUBES ONE TO ANOTHER MAY BE CARRIED OUT; WELD HEAD ALIGNMENT FIXTURES, NAMELY, FIXTURES THAT ARE USED TO POSITION WELD HEADS IN DESIRED RELATIONSHIP TO THE PART BEING WELDED; WELD VIEWING EQUIPMENT, NAMELY, EQUIPMENT THAT INCORPORATES CAMERAS, OPTICS AND OPTICAL FILTERS USED TO OBSERVE AND TRANSMIT TO A RECEIVER IMAGES OF THE WELD ZONE BEFORE WELDING, THE WELD PROCESS DURING WELDING AND THE RESULTING WELD AFTER WELDING, AND PARTS AND ACCESSORIES THEREOF; PIPE CUTTING AND FACING EQUIPMENT, NAMELY, EQUIPMENT INCORPORATING CUTTING TOOLS WHICH ARE EMPLOYED TO CUT APART PIPE SECTIONS OR TO PREPARE THE FACES OF PIPE ENDS FOR WELDING; TUBE CUTTING AND FACING EQUIPMENT, NAMELY, EQUIPMENT INCORPORATING CUTTING TOOLS WHICH ARE EMPLOYED TO CUT APART TUBE SECTIONS OR TO PREPARE THE FACES OF TUBING ENDS FOR WELDING; CONSUMABLE WELDING TORCH PARTS, NAMELY, PARTS OF WELDING TORCHES SUCH AS GAS CUPS THAT DIRECT INERT GAS TOWARDS THE WELD OR TUNGSTEN ELECTRODES THAT EMIT THE WELDING ARC AND WHICH WEAR OUT WITH USE AND THEREFORE ARE "CONSUMED" BUT NOT INCORPORATED INTO THE WELD METAL. | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 11/30/1977 |
| FIRST USE IN COMMERCE DATE | At least as early as 11/30/1977 |
| ADDITIONAL STATEMENTS SECTION | |
| MISCELLANEOUS STATEMENT | "AMI" is the acronym for "ARC MACHINES, INC." and has no known meaning in any foreign language. |
| 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 | /Han Yu/ |
| SIGNATORY NAME | Han Yu |
| SIGNATORY POSITION | Attorney for Applicant |
| SIGNATURE DATE | 06/21/2006 |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Jun 21 19:42:27 EDT 2006 |
| TEAS STAMP | USPTO/ROA-XX.XX.XX.XXX-20 060621194227916319-786334 85-3325b426c8e836b74fa724 6e5e5f4d6dd5b-N/A-N/A-200 60621193723013597 |
| PTO Form 1957 (Rev 5/2006) |
| OMB No. 0651-0050 (Exp. 04/2009) |
Section 2(d) Refusal
The Examiner has refused registration of Applicant's mark on the basis of a likelihood of confusion with Registration No. 1036621 "AMI 1" for "assembly machines" owned by Great Lakes Automation Services, Inc. ("GLAS"). Specifically, the Examiner has determined that the parties' marks share the salient feature "AMI" and that the parties' goods are closely related. On the issue of similarity between the marks, Applicant respectfully submits that although both marks contain the letters "AMI," the Examiner should not ignore the numeral "1" contained in GLAS's mark which is significant in that it connotes a particular model, type or generation of GLAS's products. It is the combination of "AMI" and "1" as a whole that creates the trademark significance. Accordingly, Applicant respectfully requests that the Examiner reconsider his position on the issue of similarity between the marks.
As for the issue of relatedness of the parties' goods, it appears that the Examiner has relied solely on a few (a total of four) third party registrations for marks that cover both welding machines and assembly machines, to prove that the parties' goods are closely related. The Examiner's assumption seems to be that those third party registrations prove that buyers are used to seeing the same mark on both welding machines and assembly machines. The difficulty with the Examiner's approach is that courts and the TTAB have often criticized the evidentiary weight of third party registrations as evidence of buyer perceptions. For example, courts and TTAB have held that third party registrations are not evidence of use so as to have conditioned the mind of prospective purchasers. See, e.g., San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 196 USPQ 1 (CCPA 1977); American Hospital Supply Corp. v. Air Products & Chemicals, Inc., 194 USPQ 340 (TTAB 1977). The existence of third party registrations is not evidence of what happens in the market place or that customers are familiar with their use. See Scarves by Vera, Inc. v. Todo Imports, Ltd., 192 USPQ 289 (2d Cir. 1976). Absent proof of use and effect on the public mind, third party registrations can have no impact on the strength and likely confusion issues because the purchasing public is not aware of registrations reposing in the Patent & Trademark Office. See Smith Bros. Mfg. Co. v. Stone Mfg. Co., 177 USPQ 462 (CCPA 1973). Also, of the third party registrations cited by the Examiner, at least one registration - namely, Registration No. 2382204 "METEOR" - appears to have been issued under Section 44(e). The TTAB has held that third party registrations issued under Section 44(e), without any use in commerce basis, have very little persuasive value on this point. See In re Albert Trostel & Sons Company, 29 USPQ2d 1783 (TTAB 1993); In re. Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988). In view of the foregoing, Applicant respectfully submits that the Examiner has not met the requisite burden of proof in establishing that welding machines and assembly machines are closely related goods. Accordingly, Applicant respectfully requests that the Examiner either reconsider his refusal or present additional evidence to prove that welding machines and assembly machines are indeed closely related goods.