Response to Office Action

PTO Form 1957 (Rev 9/2005)

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

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PTO Form 1957 (Rev 9/2005)

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

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 79024423 has been amended as follows:
Argument(s)
In response to the substantive refusal(s), please note the following:

The Applicant’s mark as amended is dissimilar in terms of appearance, connotation and commercial impression to the cited marks.

 

The Applicant’s mark, FENIX and design, differs in appearance from the marks that are cited in the refusal to allow the mark registration.  The marks cited against the application generally exhibit PHOENIX marks which are comprise a “PH” as well as an additional “O” in their appearances. Likewise the connotations of the FENIX mark are dissimilar to that in the cited applications.  The Applicant’s mark is a coined term with no dictionary definitions while the cited marks connote generally, a mythical bird consumed by fire. Furthermore, the Applicant’s mark relies on a pause within the mind of the ordinary consumer when viewing the FENIX mark rather than an immediate association with the general definition of a term such as in the PHOENIX marks.

 

The Applicant’s mark as amended travels through dissimilar channels of trade and are offered to different classes of consumers than the cited marks.

 

The Applicant’s mark as amended is used on “pocket flashlights” in International Class 011.  On the other hand, the cited marks in 011 relate mainly to goods associated with industrial lighting for buildings and vehicles. The channels of trade differ since pocket flashlights would be provided in a different commercial setting than the marks cited. In addition, the ordinary consumers seeking these different goods would be in different classes when seeking to purchase pocket flashlights as opposed to electric heavy-duty industrial lighting and fixtures and therefore be able to differentiate as to the source of the respective goods.

 

In addition, the marks cited against the application also imply an industrial application of the electronic light fixtures and the settings within which they will be used.  Applicant’s marks on the other hand relate to lamps used for ordinary consumer purposes and on bicycles which would travel in a different stream of commerce than those cited in the other marks.

 

Likewise the Applicant’s good for refrigerators is offered for ordinary consumer purposes. Conversely, the cited mark for are replacement parts in a mobile setting for refrigerated trucks and would be presented in different commercial settings and would be approached by dissimilar classes of consumers.

 

Finally, the Applicant’s remaining goods would travel in different streams of commerce than those of the cited applications and also be presented to different classes of consumers.

Classification and Listing of Goods/Services

Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 011 for Lamps, torches (pocket) electric, bicycle lights, cooking utensils (electric), refrigerators, air cooling apparatus, hot air apparatus, heating installations, bath installations, disinfectant apparatus

Proposed: Class 011 for Lamps; pocket flashlights; bicycle lights; electric cooking stoves and ovens; refrigerators; air cooling apparatus; hot air apparatus; heating installations; bath installations; disinfectant apparatus
Filing Basis: Section 66(a).

Procedural Matters/Informalities
Applicant proposes to amend the following:
Original: Su Huiyun, Yang Jianxu a(n) having an address of No.9 Tieji Road, Yulin Town, Yuzhou District, Yulin City; Guangxi province , CN .
Proposed: Yang Jianxu Su Huiyun, a citizen of China, having an address of No.9 Tieji Road, Yulin Town, Yuzhou District, Yulin City; Guangxi province Yulin City, China .


Declaration Signature
I hereby elect to bypass the submission of a signed declaration, because I believe a declaration is not required by the rules of practice. I understand that the examining attorney could still, upon later review, require a signed declaration.
Response Signature
Signature: /david w lee/     Date: 04/24/2007
Signatory's Name: David W. Lee
Signatory's Position: Attorney of record

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: 79024423
Internet Transmission Date: Tue Apr 24 19:37:52 EDT 2007
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2007042419375284
9822-79024423-370d78826493cbd15efd7da7e2
fa9c326c-N/A-N/A-20070424192948572079