PTO Form 1957 (Rev 5/2006) |
OMB No. 0651-0050 (Exp. 04/2009) |
Input Field |
Entered |
SERIAL NUMBER | 78635477 |
LAW OFFICE ASSIGNED | LAW OFFICE 110 |
MARK SECTION (no change) | |
ARGUMENT(S) | |
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE RESPONSE TO OFFICE ACTION
In re: Trademark Application of ) Mattel, Inc. ) 333 Continental Boulevard ) Trademark Law Office: 110 El Segundo, California 90245-5012 ) Serial No.: 78/635477 ) Examining Attorney: Filing Date: May 23, 2005 ) Sara N. Thomas Class: 28 ) Mark: POWER PACK )
Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
Madam: This is in response to the Office Action mailed December 22, 2005.
RESPONSEThe Examining Attorney has refused registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the Applicant's mark, when used on or in connection with the identified goods, so resembles the mark in U.S. Registration Number 2,066,491 POWER PAK as to be likely to cause confusion, to cause mistake, or to deceive. Applicant respectfully disagrees with the Examining Attorney's determination. In testing for likelihood of confusion under Section 2(d), the court in In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), cited factors relevant to the evaluation of whether or not source confusion is likely. Applying these factors to this subject issue, Applicant believes that any analysis balances in favor of Applicant. Applicant has narrowed the scope of the goods to better reflect Applicant's intended use and by doing so, has properly distinguished them from the goods associated with the cited registration. The Applicant asks the Examining Attorney to reconsider the requirement to disclaim the term "PACK". The wording "POWER PACK" when viewed as a whole, creates a unitary impression upon the consumer, as the mark is both alliterative and incongruous. Additionally, the registration for POWER PAK that has been cited against Applicant's mark does not disclaim the word "PAK". In view of the above, Applicant respectfully requests the Examining Attorney withdraw the refusal to register made under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d) and to pass this application to publication. Respectfully submitted, |
|
GOODS AND/OR SERVICES SECTION (current) | |
INTERNATIONAL CLASS | 028 |
DESCRIPTION | TOYS, GAMES AND PLAYTHINGS |
FILING BASIS | Section 1(b) |
GOODS AND/OR SERVICES SECTION (proposed) | |
INTERNATIONAL CLASS | 028 |
DESCRIPTION | |
TOYS, GAMES AND PLAYTHINGS, NAMELY, TOY VEHICLES AND ACCESSORIES THEREFOR | |
FILING BASIS | Section 1(b) |
ADDITIONAL STATEMENTS SECTION | |
MISCELLANEOUS STATEMENT | APPLICANT RESPONDS TO EXAMINING ATTORNEY'S ADDITIONAL INQUIRY BY SUPPLYING THE ATTACHED PHOTOGRAPH. |
MISCELLANEOUS FILE NAME(S) | \\TICRS\EXPORT5\IMAGEOUT5 \786\354\78635477\xml1\RO A0002.JPG |
SIGNATURE SECTION | |
RESPONSE SIGNATURE | /mcm/ |
SIGNATORY NAME | MICHAEL MOORE |
SIGNATORY POSITION | SENIOR COUNSEL |
SIGNATURE DATE | 06/04/2006 |
FILING INFORMATION SECTION | |
SUBMIT DATE | Mon Jun 05 11:14:53 EDT 2006 |
TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XX-2 0060605111454177051-78635 477-33238c4a618acbb52ea2f c30a0ed9b6b14-N/A-N/A-200 60602135227794142 |
PTO Form 1957 (Rev 5/2006) |
OMB No. 0651-0050 (Exp. 04/2009) |
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
RESPONSE TO OFFICE ACTION
In re: Trademark Application of )
Mattel, Inc. )
333 Continental Boulevard ) Trademark Law Office: 110
El Segundo, California 90245-5012 )
Serial No.: 78/635477 ) Examining Attorney:
Filing Date: May 23, 2005 ) Sara N. Thomas
Class: 28 )
Mark: POWER PACK )
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
Madam:
This is in response to the Office Action mailed December 22, 2005.
The Examining Attorney has refused registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the Applicant's mark, when used on or in connection with the identified goods, so resembles the mark in U.S. Registration Number 2,066,491 POWER PAK as to be likely to cause confusion, to cause mistake, or to deceive.
Applicant respectfully disagrees with the Examining Attorney's determination. In testing for likelihood of confusion under Section 2(d), the court in In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), cited factors relevant to the evaluation of whether or not source confusion is likely.
Applying these factors to this subject issue, Applicant believes that any analysis balances in favor of Applicant.
Applicant has narrowed the scope of the goods to better reflect Applicant's intended use and by doing so, has properly distinguished them from the goods associated with the cited registration.
The Applicant asks the Examining Attorney to reconsider the requirement to disclaim the term "PACK". The wording "POWER PACK" when viewed as a whole, creates a unitary impression upon the consumer, as the mark is both alliterative and incongruous. Additionally, the registration for POWER PAK that has been cited against Applicant's mark does not disclaim the word "PAK".
In view of the above, Applicant respectfully requests the Examining Attorney withdraw the refusal to register made under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d) and to pass this application to publication.
Respectfully submitted,