| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
Response to Office Action
The table below presents the data as entered.
Input Field
|
Entered
|
| SERIAL NUMBER |
79152701 |
| LAW OFFICE ASSIGNED |
LAW OFFICE 110 |
| MARK SECTION |
| MARK |
http://uspto.report/TM/79152701/mark.png |
| LITERAL ELEMENT |
USP |
| STANDARD CHARACTERS |
YES |
| USPTO-GENERATED IMAGE |
YES |
| MARK STATEMENT |
The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) |
APPLICANT’S ARGUMENTS IN RESPONSE TO THE EXAMINING ATTORNEY’S REFUSAL TO REGISTER THE MARK UNDER SECTION 2(d) OF THE TRADEMARK ACT FOR LIKELIHOOD
OF CONFUSION
Applicant has amended the identification of goods in all three classes. Applicant has especially worded the identification of goods to show that the goods relate to the
metallurgical industry. Not only does that fact distinguish the goods as now presented from the goods identified in the six cited registrations which do not relate to the metallurgical industry, but
furthermore Applicant believes that the channels of commerce through which the Applicant’s goods travel as now set forth are different from the channels of commerce for the goods in any of the
registrations cited by the Examiner.
Firstly the Examiner has applied US Trademark Registration 1,557,789; 1,757,575; and 4,452,900 each for the mark USP which is identical to the present mark arguing “likelihood of
confusion.” Applicant believes that the Examiner should no longer apply any of these three registrations against any of the goods Applicant has now defined them in Class 7, Class 9 or Class 11 as
attached because all of the goods now identified relate to the metallurgical industry and are different goods from the goods specified in the three cited registrations. US Trademark Registration
1,557,789 relates to alarm systems in Class 9 . These goods have no connection at all with the Applicant’s machines for the metallurgical industry as specified in Class 7, or with Applicant’s
electric apparatus and instruments for the metallurgical industry as specified in Class 9, or with Applicant’s apparatuses for heating, steam generating, refrigerating, drying, ventilating, and water
supply purposes in Class 11. Furthermore the channels of trade through which Applicant’s goods pass are different from those through which the Registrant’s goods pass. Applicant’s goods
are producer goods that originate with a company that sells machinery for the production of metals and with the fabrication of metal products from those metals. Applicant sells its
goods identified in this application to companies that are involved in the production of metals, especially steel, and in the fabrication of products made of such metals. Such companies would
not expect to obtain the goods that Applicant has identified in this application from a company such as the Registrant that sells alarms and other equipment for security, which are consumer goods.
Thus both the goods themselves and the channels of commerce through which Applicant’s goods pass are very different from the goods and the channels of commerce through which the goods pass identified
in US Trademark Registration 1,557,789.
US Trademark Registration 1,757,575 relates to transient voltage surge protectors in Class 9. Such goods are far-removed from the Applicant’s goods identified in Classes 7, 9
and 11 that relate to goods used in the production of metals and in the fabrication of specific goods made of those metals. In addition the channels of commerce through which Applicant’s goods
pass are different from those of the Registrant’s goods. Applicant’s goods are producer goods that originate with a company that supplies machinery for the production of metals and for the
fabrication of metal products from those metals. Applicant sells its goods identified in this application to companies that are involved in the production of metals, especially
steel, and in the fabrication of products made of such metals. Registrant’s goods are consumer goods that would be expected to originate with a company that sells electrical supplies. Thus both the
goods themselves and the channels of commerce through which Applicant’s goods pass are very different from the goods and the channels of commerce through which the goods pass identified in US
Trademark Registration 1,757,575.
US Trademark Registration 4,452,900 relates to goods in many classes, including yarn clearers in Class 7 and testing machines and instruments for textile materials and products in
Class 9. Once again Applicant’s goods in all three classes are machinery, electrical apparatus and instruments, and heating, refrigerating, drying, ventilating and water supply equipment for
use by the metallurgical industry in the production of metals whereas Registrant’s goods in both Classes 7 and 9 relate to goods used by the textile industry. Applicant’s machinery is used to produce
metals and metal products and Registrant’s goods identified in Classes 7 and 9 are machinery used in the production of textiles. Applicant’s goods themselves are far removed from those of the
Registrant and the channels of commerce through which Applicant’s goods travel are far removed from those of the Registrant’s goods. A company that is involved in the manufacture of metals and
metal products would not expect the Applicant’s machinery in Classes 7, 9 and 11 to emanate from a company such as Registrant that makes machinery for producing textiles. Thus both the goods
themselves and the channels of commerce through which Applicant’s goods pass are very different from the goods and the channels of commerce through which the goods pass as identified in US Trademark
Registration 4,452,900.
The Examiner has found three more registrations that she has applied against the Applicant’s goods as previously identified. US Trademark Registration 4,057,600
directed to the mark USPM and not USP relates to spectroscopes for measuring lens reflectance, and to microscopes in Class 9. These goods are far removed from any of the Applicant’s machines as now
identified in Classes 7, 9 and 11 which are used for the production of metals and for the production of goods fabricated from these metals. Registrant’s goods are optical goods used in a laboratory
to analyze the physical properties of substances. Unlike Applicant’s goods which originate with companies that produce machinery for the production of metals and metal products, Registrant’s goods
originate with companies that sell optical goods and analytical devices. Thus both the goods themselves and the channels of commerce through which Applicant’s goods pass are very different from the
goods and the channels of commerce through which the goods pass as identified in US Trademark Registration 4,057,600.
US Trademark Registration 4,072,803 directed to the mark Uspa and Design and not USP relates to plumbing fixtures in Class 11, specifically bidets water purifiers for household
purposes, bath tubs, showers, toilet seats, urinals and shower enclosures. These goods are far removed from the Applicant’s goods for the metallurgical industry as discussed herein above in all
three classes. In addition Registrant’s goods are consumer goods, not producer goods, that would be expected to emanate from a plumbing supply company and not from a company that produces machinery
for the metallurgical industry, such as Applicant. Thus both the goods themselves and the channels of commerce through which Applicant’s goods pass are very different from the goods and
the channels of commerce through which the goods pass identified in US Trademark Registration 4,072,803.
US Trademark Registration 2,929,329 directed to the mark USP STRUCTURAL COMPONENTS and not USP relates to metal goods identified in Class 6 for use by the construction industry of
geodesic and other buildings as well as to computer software for the design of such buildings using the metal goods identified in Class 6. Such goods and the computer software that relates to
these goods have no connection whatsoever to any of the Applicant’s machinery as now identified in Classes 7, 9 and 11. In addition, Registrant’s goods would be marketed to the building trades
by companies that provide building supplies and not by companies, such as Applicant, to companies that manufacture metals or fabricate articles made from metals. Thus both the goods
themselves and the channels of commerce through which Applicant’s goods pass are very different from the goods and the channels of commerce through which the goods pass as identified in US Trademark
Registration 2,929,329.
In view of the above Applicant respectfully requests withdrawal of the refusal to register the mark USP on the grounds of likelihood of confusion under Section 2(d) of the
Trademark Act.
|
| GOODS AND/OR SERVICES SECTION (007)(current) |
| INTERNATIONAL CLASS |
007 |
| DESCRIPTION |
| Machines and machine parts (included in this class) for metal working and treatment; machine tools; parts of machine tools (included in
this class); motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles) |
| GOODS AND/OR SERVICES SECTION (007)(proposed) |
| INTERNATIONAL CLASS |
007 |
| TRACKED TEXT DESCRIPTION |
Machines and machine parts (included in this class) for metal working and treatment; MACHINES FOR THE METALLURGICAL INDUSTRY, NAMELY, MACHINES FOR FILLING AND EMPTYING BLAST FURNACES, MACHINES FOR TILTING, PIVOTING, AND MOVING CONVERTERS AND LADLES;
machine tools; MACHINES FOR THE METALLURGICAL INDUSTRY, NAMELY, CONTINUOUS CASTING MACHINES, ROLLING MACHINES FOR ROLLING
METALS, FORGING MACHINES, PRESSES FOR METALS; parts of machine tools (included in this class); MACHINE TOOLS FOR
METALWORKING; motors and engines (except for land vehicles); PARTS OF THE FOREGOING MACHINES, NAMELY, CLUTCHES AND
COUPLINGS AND DEVICES FOR POWER TRANSFER OF THE AFOREMENTIONED MACHINES; machine coupling and transmission components (except for land vehicles);
MOTORS AND ENGINES EXCEPT ENGINES FOR LAND VEHICLES; MACHINE COUPLINGS AND TRANSMISSION COMPONENTS EXCEPT SUCH FOR LAND
VEHICLES |
| FINAL DESCRIPTION |
| MACHINES FOR THE METALLURGICAL INDUSTRY, NAMELY, MACHINES FOR FILLING AND EMPTYING BLAST FURNACES, MACHINES FOR TILTING, PIVOTING, AND
MOVING CONVERTERS AND LADLES; MACHINES FOR THE METALLURGICAL INDUSTRY, NAMELY, CONTINUOUS CASTING MACHINES, ROLLING MACHINES FOR ROLLING METALS, FORGING MACHINES, PRESSES FOR METALS; MACHINE TOOLS
FOR METALWORKING; PARTS OF THE FOREGOING MACHINES, NAMELY, CLUTCHES AND COUPLINGS AND DEVICES FOR POWER TRANSFER OF THE AFOREMENTIONED MACHINES; MOTORS AND ENGINES EXCEPT ENGINES FOR LAND VEHICLES;
MACHINE COUPLINGS AND TRANSMISSION COMPONENTS EXCEPT SUCH FOR LAND VEHICLES |
| GOODS AND/OR SERVICES SECTION (009)(current) |
| INTERNATIONAL CLASS |
009 |
| DESCRIPTION |
| Electric and electronic apparatus and instruments (included in this class), namely scientific, surveying, optical, weighing, measuring,
signaling and control apparatus and instruments; magnetic data carriers, digital data carriers; data processing equipment, computers; computer software |
| GOODS AND/OR SERVICES SECTION (009)(proposed) |
| INTERNATIONAL CLASS |
009 |
| TRACKED TEXT DESCRIPTION |
Electric and electronic apparatus and instruments (included in this class), namely scientific,
surveying, optical, weighing, measuring, signaling and control apparatus and instruments; ELECTRIC APPARATUS AND INSTRUMENTS FOR THE METALLURGICAL INDUSTRY,
NAMELY, ELECTRIC AND ELECTRONIC CONTROL DEVICES FOR STEEL MILLS, NAMELY, FLATNESS CONTROLLERS, ROUGHNESS CONTROLLERS, PRESSURE CONTROLLERS AND TENSIONING CONTROLLERS FOR INFLUENCING THE PROPERTIES OF
ROLLED STEEL; magnetic data carriers, digital data carriers; SCIENTIFIC, SURVEYING, OPTICAL, WEIGHING, MEASURING,
SIGNALING, CONTROL AND TEACHING APPARATUS AND INSTRUMENTS, NAMELY, STRIP FLATNESS METERS, THERMOMETERS, SPEEDOMETERS, PRESSURE GAUGES, ANGLE GAUGES, DISTANCE METERS, ROUGHNESS GAUGES, ALL FOR USE IN
OPERATING AND CONTROLLING OPERATIONS OF METALLURGICAL PLANTS, CASTING PLANTS FOR METALS AND ROLLING MILLS FOR METALS; data processing equipment,
computers; APPARATUS FOR RECORDING, TRANSMISSION OR REPRODUCTION OF SOUND OR IMAGES, NAMELY, SIGNAL TRANSMITTERS FOR USE IN ROLLING MILLS AND CONTINUOUS CASTING
PLANTS; computer software; CALCULATING MACHINES, DATA PROCESSORS, AND COMPUTERS ALL FOR USE IN OPERATING AND CONTROLLING
OPERATIONS OF METALLURGICAL PLANTS AND ROLLING MILLS; PRERECORDED MAGNETIC DATA CARRIERS FEATURING INFORMATION FOR CONTROLLING ROLLING MILLS; STORED COMPUTER PROGRAMS FOR CONTROLLING ROLLING MILLS, FURNACE PLANTS, CONTINUOUS CASTING MACHINES; STORED COMPUTER PROGRAMS FOR
CONTROLLING AND REGULATING ALL OF THE FOLLOWING MACHINES FOR THE METALLURGICAL INDUSTRY AND THE STEEL INDUSTRY, NAMELY, CONTINUOUS CASTING MACHINES, ROLLING MACHINES, FORGING MACHINES, PRESSING
MACHINES, AND COMPUTER APPLICATIONS SOFTWARE STORED ON MAGNETIC DATA CARRIERS FOR CONTROLLING MACHINE TOOLS |
| FINAL DESCRIPTION |
| ELECTRIC APPARATUS AND INSTRUMENTS FOR THE METALLURGICAL INDUSTRY, NAMELY, ELECTRIC AND ELECTRONIC CONTROL DEVICES FOR STEEL MILLS,
NAMELY, FLATNESS CONTROLLERS, ROUGHNESS CONTROLLERS, PRESSURE CONTROLLERS AND TENSIONING CONTROLLERS FOR INFLUENCING THE PROPERTIES OF ROLLED STEEL; SCIENTIFIC, SURVEYING, OPTICAL, WEIGHING,
MEASURING, SIGNALING, CONTROL AND TEACHING APPARATUS AND INSTRUMENTS, NAMELY, STRIP FLATNESS METERS, THERMOMETERS, SPEEDOMETERS, PRESSURE GAUGES, ANGLE GAUGES, DISTANCE METERS, ROUGHNESS GAUGES, ALL
FOR USE IN OPERATING AND CONTROLLING OPERATIONS OF METALLURGICAL PLANTS, CASTING PLANTS FOR METALS AND ROLLING MILLS FOR METALS; APPARATUS FOR RECORDING, TRANSMISSION OR REPRODUCTION OF SOUND OR
IMAGES, NAMELY, SIGNAL TRANSMITTERS FOR USE IN ROLLING MILLS AND CONTINUOUS CASTING PLANTS; CALCULATING MACHINES, DATA PROCESSORS, AND COMPUTERS ALL FOR USE IN OPERATING AND CONTROLLING OPERATIONS OF
METALLURGICAL PLANTS AND ROLLING MILLS; PRERECORDED MAGNETIC DATA CARRIERS FEATURING INFORMATION FOR CONTROLLING ROLLING MILLS; STORED COMPUTER PROGRAMS FOR CONTROLLING ROLLING MILLS, FURNACE PLANTS,
CONTINUOUS CASTING MACHINES; STORED COMPUTER PROGRAMS FOR CONTROLLING AND REGULATING ALL OF THE FOLLOWING MACHINES FOR THE METALLURGICAL INDUSTRY AND THE STEEL INDUSTRY, NAMELY, CONTINUOUS CASTING
MACHINES, ROLLING MACHINES, FORGING MACHINES, PRESSING MACHINES, AND COMPUTER APPLICATIONS SOFTWARE STORED ON MAGNETIC DATA CARRIERS FOR CONTROLLING MACHINE TOOLS |
| GOODS AND/OR SERVICES SECTION (011)(current) |
| INTERNATIONAL CLASS |
011 |
| DESCRIPTION |
| Apparatus for heating, steam generating, refrigerating, drying, ventilating and water supply purposes |
| GOODS AND/OR SERVICES SECTION (011)(proposed) |
| INTERNATIONAL CLASS |
011 |
| TRACKED TEXT DESCRIPTION |
Apparatus for heating, steam generating, refrigerating, drying, ventilating and water supply
purposes; APPARATUS FOR HEATING, STEAM GENERATING, REFRIGERATING, DRYING, VENTILATING, AND WATER SUPPLY PURPOSES FOR THE METALLURGICAL INDUSTRY, IN THE NATURE OF
FURNACES FOR METALLURGICAL PLANTS, FOR STEEL MILLS, FOR CONTINUOUS METAL CASTING PLANTS, FOR ROLLING MILLS, FOR FORGING AND PRESSING PLANTS; APPARATUS FOR
HEATING, STEAM GENERATING, REFRIGERATING, DRYING, VENTILATING, AND WATER SUPPLY PURPOSES FOR THE METALLURGICAL INDUSTRY IN THE NATURE OF COOLING SYSTEMS FOR MACHINES FOR THE METALLURGICAL INDUSTRY,
FOR MACHINES FOR THE STEEL MILL INDUSTRY, FOR CONTINUOUS CASTING MACHINES, FOR ROLLING MACHINES FOR THE ROLLING OF METALS, FOR FORGING MACHINES, FOR PRESSES FOR METALS; APPARATUS FOR HEATING, STEAM GENERATING, REFRIGERATING, DRYING, VENTILATING, AND WATER SUPPLY PURPOSES FOR THE METALLURGICAL INDUSTRY, IN THE NATURE OF DRYING, VENTILATING FANS AND
LOUVERS AND COOLING WATER CIRCUIT INSTALLATIONS IN THE NATURE OF COOLING TOWERS FOR METALLURGICAL PLANTS, FOR STEEL MILLS, FOR CONTINUOUS CASTING PLANTS, FOR ROLLING MILLS, AND FOR FORGING AND
PRESSING PLANTS |
| FINAL DESCRIPTION |
| APPARATUS FOR HEATING, STEAM GENERATING, REFRIGERATING, DRYING, VENTILATING, AND WATER SUPPLY PURPOSES FOR THE METALLURGICAL INDUSTRY,
IN THE NATURE OF FURNACES FOR METALLURGICAL PLANTS, FOR STEEL MILLS, FOR CONTINUOUS METAL CASTING PLANTS, FOR ROLLING MILLS, FOR FORGING AND PRESSING PLANTS; APPARATUS FOR HEATING, STEAM GENERATING,
REFRIGERATING, DRYING, VENTILATING, AND WATER SUPPLY PURPOSES FOR THE METALLURGICAL INDUSTRY IN THE NATURE OF COOLING SYSTEMS FOR MACHINES FOR THE METALLURGICAL INDUSTRY, FOR MACHINES FOR THE STEEL
MILL INDUSTRY, FOR CONTINUOUS CASTING MACHINES, FOR ROLLING MACHINES FOR THE ROLLING OF METALS, FOR FORGING MACHINES, FOR PRESSES FOR METALS; APPARATUS FOR HEATING, STEAM GENERATING, REFRIGERATING,
DRYING, VENTILATING, AND WATER SUPPLY PURPOSES FOR THE METALLURGICAL INDUSTRY, IN THE NATURE OF DRYING, VENTILATING FANS AND LOUVERS AND COOLING WATER CIRCUIT INSTALLATIONS IN THE NATURE OF COOLING
TOWERS FOR METALLURGICAL PLANTS, FOR STEEL MILLS, FOR CONTINUOUS CASTING PLANTS, FOR ROLLING MILLS, AND FOR FORGING AND PRESSING PLANTS |
| ADDITIONAL STATEMENTS SECTION |
| MISCELLANEOUS STATEMENT |
Please recognize Jonathan Myers of Lucas & Mercanti, LLP as the attorney of record in this application. |
| NEW ATTORNEY SECTION |
| NAME |
Jonathan Myers |
| FIRM NAME |
Lucas & Mercanti, LLP |
INDIVIDUAL ATTORNEY
DOCKET/REFERENCE NUMBER |
HEMM-1002-TM |
| INTERNAL ADDRESS |
21st Floor |
| STREET |
30 Broad Street |
| CITY |
New York |
| STATE |
New York |
| ZIP/POSTAL CODE |
10004 |
| COUNTRY |
United States |
| PHONE |
212.661.8000 |
| FAX |
212.661.8002 |
| EMAIL |
JMmail@lmiplaw.com |
| AUTHORIZED EMAIL COMMUNICATION |
Yes |
| CORRESPONDENCE SECTION |
| ORIGINAL ADDRESS |
Hemmerich & Kollegen
Hammerstraße 2
57072 Siegen
DE
|
| NEW CORRESPONDENCE SECTION |
| NAME |
Jonathan Myers |
| FIRM NAME |
Lucas & Mercanti, LLP |
| DOCKET/REFERENCE NUMBER |
HEMM-1002-TM |
| INTERNAL ADDRESS |
21st Floor |
| STREET |
30 Broad Street |
| CITY |
New York |
| STATE |
New York |
| ZIP/POSTAL CODE |
10004 |
| COUNTRY |
United States |
| PHONE |
212.661.8000 |
| FAX |
212.661.8002 |
| EMAIL |
JMmail@lmiplaw.com;info@lmiplaw.com |
| AUTHORIZED EMAIL COMMUNICATION |
Yes |
| SIGNATURE SECTION |
| RESPONSE SIGNATURE |
/Jonathan Myers/ |
| SIGNATORY'S NAME |
Jonathan Myers |
| SIGNATORY'S POSITION |
Attorney for Applicant, NY Bar |
| SIGNATORY'S PHONE NUMBER |
212.661.8000 |
| DATE SIGNED |
01/21/2015 |
| AUTHORIZED SIGNATORY |
YES |
| FILING INFORMATION SECTION |
| SUBMIT DATE |
Wed Jan 21 09:49:51 EST 2015 |
| TEAS STAMP |
USPTO/ROA-XX.XX.XXX.XXX-2
0150121094951164009-79152
701-530f0d6d40f39bf78888a
7a33344ec57612afff4df14f7
24af96c53c84f380da-N/A-N/
A-20150121092942994016 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
Response to Office Action
To the Commissioner for Trademarks:
Application serial no.
79152701 USP(Standard Characters, see http://uspto.report/TM/79152701/mark.png) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
APPLICANT’S ARGUMENTS IN RESPONSE TO THE EXAMINING ATTORNEY’S REFUSAL TO REGISTER THE MARK UNDER SECTION 2(d) OF THE TRADEMARK ACT FOR LIKELIHOOD OF CONFUSION
Applicant has amended the identification of goods in all three classes. Applicant has especially worded the identification of goods to show that the goods relate to the
metallurgical industry. Not only does that fact distinguish the goods as now presented from the goods identified in the six cited registrations which do not relate to the metallurgical industry, but
furthermore Applicant believes that the channels of commerce through which the Applicant’s goods travel as now set forth are different from the channels of commerce for the goods in any of the
registrations cited by the Examiner.
Firstly the Examiner has applied US Trademark Registration 1,557,789; 1,757,575; and 4,452,900 each for the mark USP which is identical to the present mark arguing “likelihood of
confusion.” Applicant believes that the Examiner should no longer apply any of these three registrations against any of the goods Applicant has now defined them in Class 7, Class 9 or Class 11 as
attached because all of the goods now identified relate to the metallurgical industry and are different goods from the goods specified in the three cited registrations. US Trademark Registration
1,557,789 relates to alarm systems in Class 9 . These goods have no connection at all with the Applicant’s machines for the metallurgical industry as specified in Class 7, or with Applicant’s
electric apparatus and instruments for the metallurgical industry as specified in Class 9, or with Applicant’s apparatuses for heating, steam generating, refrigerating, drying, ventilating, and water
supply purposes in Class 11. Furthermore the channels of trade through which Applicant’s goods pass are different from those through which the Registrant’s goods pass. Applicant’s goods
are producer goods that originate with a company that sells machinery for the production of metals and with the fabrication of metal products from those metals. Applicant sells its
goods identified in this application to companies that are involved in the production of metals, especially steel, and in the fabrication of products made of such metals. Such companies would
not expect to obtain the goods that Applicant has identified in this application from a company such as the Registrant that sells alarms and other equipment for security, which are consumer goods.
Thus both the goods themselves and the channels of commerce through which Applicant’s goods pass are very different from the goods and the channels of commerce through which the goods pass identified
in US Trademark Registration 1,557,789.
US Trademark Registration 1,757,575 relates to transient voltage surge protectors in Class 9. Such goods are far-removed from the Applicant’s goods identified in Classes 7, 9
and 11 that relate to goods used in the production of metals and in the fabrication of specific goods made of those metals. In addition the channels of commerce through which Applicant’s goods
pass are different from those of the Registrant’s goods. Applicant’s goods are producer goods that originate with a company that supplies machinery for the production of metals and for the
fabrication of metal products from those metals. Applicant sells its goods identified in this application to companies that are involved in the production of metals, especially
steel, and in the fabrication of products made of such metals. Registrant’s goods are consumer goods that would be expected to originate with a company that sells electrical supplies. Thus both the
goods themselves and the channels of commerce through which Applicant’s goods pass are very different from the goods and the channels of commerce through which the goods pass identified in US
Trademark Registration 1,757,575.
US Trademark Registration 4,452,900 relates to goods in many classes, including yarn clearers in Class 7 and testing machines and instruments for textile materials and products in
Class 9. Once again Applicant’s goods in all three classes are machinery, electrical apparatus and instruments, and heating, refrigerating, drying, ventilating and water supply equipment for
use by the metallurgical industry in the production of metals whereas Registrant’s goods in both Classes 7 and 9 relate to goods used by the textile industry. Applicant’s machinery is used to produce
metals and metal products and Registrant’s goods identified in Classes 7 and 9 are machinery used in the production of textiles. Applicant’s goods themselves are far removed from those of the
Registrant and the channels of commerce through which Applicant’s goods travel are far removed from those of the Registrant’s goods. A company that is involved in the manufacture of metals and
metal products would not expect the Applicant’s machinery in Classes 7, 9 and 11 to emanate from a company such as Registrant that makes machinery for producing textiles. Thus both the goods
themselves and the channels of commerce through which Applicant’s goods pass are very different from the goods and the channels of commerce through which the goods pass as identified in US Trademark
Registration 4,452,900.
The Examiner has found three more registrations that she has applied against the Applicant’s goods as previously identified. US Trademark Registration 4,057,600
directed to the mark USPM and not USP relates to spectroscopes for measuring lens reflectance, and to microscopes in Class 9. These goods are far removed from any of the Applicant’s machines as now
identified in Classes 7, 9 and 11 which are used for the production of metals and for the production of goods fabricated from these metals. Registrant’s goods are optical goods used in a laboratory
to analyze the physical properties of substances. Unlike Applicant’s goods which originate with companies that produce machinery for the production of metals and metal products, Registrant’s goods
originate with companies that sell optical goods and analytical devices. Thus both the goods themselves and the channels of commerce through which Applicant’s goods pass are very different from the
goods and the channels of commerce through which the goods pass as identified in US Trademark Registration 4,057,600.
US Trademark Registration 4,072,803 directed to the mark Uspa and Design and not USP relates to plumbing fixtures in Class 11, specifically bidets water purifiers for household
purposes, bath tubs, showers, toilet seats, urinals and shower enclosures. These goods are far removed from the Applicant’s goods for the metallurgical industry as discussed herein above in all
three classes. In addition Registrant’s goods are consumer goods, not producer goods, that would be expected to emanate from a plumbing supply company and not from a company that produces machinery
for the metallurgical industry, such as Applicant. Thus both the goods themselves and the channels of commerce through which Applicant’s goods pass are very different from the goods and
the channels of commerce through which the goods pass identified in US Trademark Registration 4,072,803.
US Trademark Registration 2,929,329 directed to the mark USP STRUCTURAL COMPONENTS and not USP relates to metal goods identified in Class 6 for use by the construction industry of
geodesic and other buildings as well as to computer software for the design of such buildings using the metal goods identified in Class 6. Such goods and the computer software that relates to
these goods have no connection whatsoever to any of the Applicant’s machinery as now identified in Classes 7, 9 and 11. In addition, Registrant’s goods would be marketed to the building trades
by companies that provide building supplies and not by companies, such as Applicant, to companies that manufacture metals or fabricate articles made from metals. Thus both the goods
themselves and the channels of commerce through which Applicant’s goods pass are very different from the goods and the channels of commerce through which the goods pass as identified in US Trademark
Registration 2,929,329.
In view of the above Applicant respectfully requests withdrawal of the refusal to register the mark USP on the grounds of likelihood of confusion under Section 2(d) of the
Trademark Act.
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 007 for Machines and machine parts (included in this class) for metal working and treatment; machine tools; parts of machine tools (included in this class); motors and engines
(except for land vehicles); machine coupling and transmission components (except for land vehicles)
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.
Proposed:
Tracked Text Description: Machines and machine parts (included in this class) for metal working and treatment;
MACHINES FOR
THE METALLURGICAL INDUSTRY, NAMELY, MACHINES FOR FILLING AND EMPTYING BLAST FURNACES, MACHINES FOR TILTING, PIVOTING, AND MOVING CONVERTERS AND LADLES;
machine
tools;
MACHINES FOR THE METALLURGICAL INDUSTRY, NAMELY, CONTINUOUS CASTING MACHINES, ROLLING MACHINES FOR ROLLING METALS, FORGING MACHINES, PRESSES FOR
METALS;
parts of machine tools (included in this class);
MACHINE TOOLS FOR METALWORKING;
motors and engines (except for land vehicles);
PARTS OF THE FOREGOING MACHINES, NAMELY, CLUTCHES AND COUPLINGS AND DEVICES FOR POWER TRANSFER OF THE
AFOREMENTIONED MACHINES;
machine coupling and transmission components (except for land vehicles);
MOTORS AND ENGINES
EXCEPT ENGINES FOR LAND VEHICLES;
MACHINE COUPLINGS AND TRANSMISSION COMPONENTS EXCEPT SUCH FOR LAND VEHICLESClass 007 for MACHINES FOR THE METALLURGICAL
INDUSTRY, NAMELY, MACHINES FOR FILLING AND EMPTYING BLAST FURNACES, MACHINES FOR TILTING, PIVOTING, AND MOVING CONVERTERS AND LADLES; MACHINES FOR THE METALLURGICAL INDUSTRY, NAMELY, CONTINUOUS
CASTING MACHINES, ROLLING MACHINES FOR ROLLING METALS, FORGING MACHINES, PRESSES FOR METALS; MACHINE TOOLS FOR METALWORKING; PARTS OF THE FOREGOING MACHINES, NAMELY, CLUTCHES AND COUPLINGS AND
DEVICES FOR POWER TRANSFER OF THE AFOREMENTIONED MACHINES; MOTORS AND ENGINES EXCEPT ENGINES FOR LAND VEHICLES; MACHINE COUPLINGS AND TRANSMISSION COMPONENTS EXCEPT SUCH FOR LAND VEHICLES
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Electric and electronic apparatus and instruments (included in this class), namely scientific, surveying, optical, weighing, measuring, signaling and control apparatus
and instruments; magnetic data carriers, digital data carriers; data processing equipment, computers; computer software
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.
Proposed:
Tracked Text Description: Electric and electronic apparatus and instruments (included in this class), namely scientific, surveying, optical, weighing, measuring,
signaling and control apparatus and instruments;
ELECTRIC APPARATUS AND INSTRUMENTS FOR THE METALLURGICAL INDUSTRY, NAMELY, ELECTRIC AND ELECTRONIC CONTROL
DEVICES FOR STEEL MILLS, NAMELY, FLATNESS CONTROLLERS, ROUGHNESS CONTROLLERS, PRESSURE CONTROLLERS AND TENSIONING CONTROLLERS FOR INFLUENCING THE PROPERTIES OF ROLLED STEEL;
magnetic data carriers, digital data carriers;
SCIENTIFIC, SURVEYING, OPTICAL, WEIGHING, MEASURING, SIGNALING, CONTROL AND TEACHING APPARATUS AND
INSTRUMENTS, NAMELY, STRIP FLATNESS METERS, THERMOMETERS, SPEEDOMETERS, PRESSURE GAUGES, ANGLE GAUGES, DISTANCE METERS, ROUGHNESS GAUGES, ALL FOR USE IN OPERATING AND CONTROLLING OPERATIONS OF
METALLURGICAL PLANTS, CASTING PLANTS FOR METALS AND ROLLING MILLS FOR METALS;
data processing equipment, computers;
APPARATUS FOR RECORDING, TRANSMISSION OR REPRODUCTION OF SOUND OR IMAGES, NAMELY, SIGNAL TRANSMITTERS FOR USE IN ROLLING MILLS AND CONTINUOUS CASTING PLANTS;
computer software;
CALCULATING MACHINES, DATA PROCESSORS, AND COMPUTERS ALL FOR USE IN OPERATING AND CONTROLLING OPERATIONS OF METALLURGICAL PLANTS AND
ROLLING MILLS;
PRERECORDED MAGNETIC DATA CARRIERS FEATURING INFORMATION FOR CONTROLLING ROLLING MILLS;
STORED COMPUTER
PROGRAMS FOR CONTROLLING ROLLING MILLS, FURNACE PLANTS, CONTINUOUS CASTING MACHINES;
STORED COMPUTER PROGRAMS FOR CONTROLLING AND REGULATING ALL OF THE
FOLLOWING MACHINES FOR THE METALLURGICAL INDUSTRY AND THE STEEL INDUSTRY, NAMELY, CONTINUOUS CASTING MACHINES, ROLLING MACHINES, FORGING MACHINES, PRESSING MACHINES, AND COMPUTER APPLICATIONS
SOFTWARE STORED ON MAGNETIC DATA CARRIERS FOR CONTROLLING MACHINE TOOLSClass 009 for ELECTRIC APPARATUS AND INSTRUMENTS FOR THE METALLURGICAL INDUSTRY, NAMELY, ELECTRIC AND ELECTRONIC CONTROL
DEVICES FOR STEEL MILLS, NAMELY, FLATNESS CONTROLLERS, ROUGHNESS CONTROLLERS, PRESSURE CONTROLLERS AND TENSIONING CONTROLLERS FOR INFLUENCING THE PROPERTIES OF ROLLED STEEL; SCIENTIFIC, SURVEYING,
OPTICAL, WEIGHING, MEASURING, SIGNALING, CONTROL AND TEACHING APPARATUS AND INSTRUMENTS, NAMELY, STRIP FLATNESS METERS, THERMOMETERS, SPEEDOMETERS, PRESSURE GAUGES, ANGLE GAUGES, DISTANCE METERS,
ROUGHNESS GAUGES, ALL FOR USE IN OPERATING AND CONTROLLING OPERATIONS OF METALLURGICAL PLANTS, CASTING PLANTS FOR METALS AND ROLLING MILLS FOR METALS; APPARATUS FOR RECORDING, TRANSMISSION OR
REPRODUCTION OF SOUND OR IMAGES, NAMELY, SIGNAL TRANSMITTERS FOR USE IN ROLLING MILLS AND CONTINUOUS CASTING PLANTS; CALCULATING MACHINES, DATA PROCESSORS, AND COMPUTERS ALL FOR USE IN OPERATING AND
CONTROLLING OPERATIONS OF METALLURGICAL PLANTS AND ROLLING MILLS; PRERECORDED MAGNETIC DATA CARRIERS FEATURING INFORMATION FOR CONTROLLING ROLLING MILLS; STORED COMPUTER PROGRAMS FOR CONTROLLING
ROLLING MILLS, FURNACE PLANTS, CONTINUOUS CASTING MACHINES; STORED COMPUTER PROGRAMS FOR CONTROLLING AND REGULATING ALL OF THE FOLLOWING MACHINES FOR THE METALLURGICAL INDUSTRY AND THE STEEL
INDUSTRY, NAMELY, CONTINUOUS CASTING MACHINES, ROLLING MACHINES, FORGING MACHINES, PRESSING MACHINES, AND COMPUTER APPLICATIONS SOFTWARE STORED ON MAGNETIC DATA CARRIERS FOR CONTROLLING MACHINE
TOOLS
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 011 for Apparatus for heating, steam generating, refrigerating, drying, ventilating and water supply purposes
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.
Proposed:
Tracked Text Description: Apparatus for heating, steam generating, refrigerating, drying, ventilating and water supply purposes;
APPARATUS FOR HEATING, STEAM GENERATING, REFRIGERATING, DRYING, VENTILATING, AND WATER SUPPLY PURPOSES FOR THE METALLURGICAL INDUSTRY, IN THE NATURE OF FURNACES FOR METALLURGICAL PLANTS, FOR
STEEL MILLS, FOR CONTINUOUS METAL CASTING PLANTS, FOR ROLLING MILLS, FOR FORGING AND PRESSING PLANTS;
APPARATUS FOR HEATING, STEAM GENERATING, REFRIGERATING,
DRYING, VENTILATING, AND WATER SUPPLY PURPOSES FOR THE METALLURGICAL INDUSTRY IN THE NATURE OF COOLING SYSTEMS FOR MACHINES FOR THE METALLURGICAL INDUSTRY, FOR MACHINES FOR THE STEEL MILL INDUSTRY,
FOR CONTINUOUS CASTING MACHINES, FOR ROLLING MACHINES FOR THE ROLLING OF METALS, FOR FORGING MACHINES, FOR PRESSES FOR METALS;
APPARATUS FOR HEATING, STEAM
GENERATING, REFRIGERATING, DRYING, VENTILATING, AND WATER SUPPLY PURPOSES FOR THE METALLURGICAL INDUSTRY, IN THE NATURE OF DRYING, VENTILATING FANS AND LOUVERS AND COOLING WATER CIRCUIT INSTALLATIONS
IN THE NATURE OF COOLING TOWERS FOR METALLURGICAL PLANTS, FOR STEEL MILLS, FOR CONTINUOUS CASTING PLANTS, FOR ROLLING MILLS, AND FOR FORGING AND PRESSING PLANTSClass 011 for APPARATUS FOR
HEATING, STEAM GENERATING, REFRIGERATING, DRYING, VENTILATING, AND WATER SUPPLY PURPOSES FOR THE METALLURGICAL INDUSTRY, IN THE NATURE OF FURNACES FOR METALLURGICAL PLANTS, FOR STEEL MILLS, FOR
CONTINUOUS METAL CASTING PLANTS, FOR ROLLING MILLS, FOR FORGING AND PRESSING PLANTS; APPARATUS FOR HEATING, STEAM GENERATING, REFRIGERATING, DRYING, VENTILATING, AND WATER SUPPLY PURPOSES FOR THE
METALLURGICAL INDUSTRY IN THE NATURE OF COOLING SYSTEMS FOR MACHINES FOR THE METALLURGICAL INDUSTRY, FOR MACHINES FOR THE STEEL MILL INDUSTRY, FOR CONTINUOUS CASTING MACHINES, FOR ROLLING MACHINES
FOR THE ROLLING OF METALS, FOR FORGING MACHINES, FOR PRESSES FOR METALS; APPARATUS FOR HEATING, STEAM GENERATING, REFRIGERATING, DRYING, VENTILATING, AND WATER SUPPLY PURPOSES FOR THE METALLURGICAL
INDUSTRY, IN THE NATURE OF DRYING, VENTILATING FANS AND LOUVERS AND COOLING WATER CIRCUIT INSTALLATIONS IN THE NATURE OF COOLING TOWERS FOR METALLURGICAL PLANTS, FOR STEEL MILLS, FOR CONTINUOUS
CASTING PLANTS, FOR ROLLING MILLS, AND FOR FORGING AND PRESSING PLANTS
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.
ATTORNEY ADDRESS
Applicant proposes to amend the following:
Proposed:
Jonathan Myers of Lucas & Mercanti, LLP, having an address of
21st Floor 30 Broad Street New York, New York 10004
United States
JMmail@lmiplaw.com
212.661.8000
212.661.8002
The attorney docket/reference number is HEMM-1002-TM .
CORRESPONDENCE ADDRESS CHANGE
Applicant proposes to amend the following:
Current:
Hemmerich & Kollegen
Hammerstraße 2
57072 Siegen
DE
Proposed:
Jonathan Myers of Lucas & Mercanti, LLP, having an address of
21st Floor 30 Broad Street New York, New York 10004
United States
JMmail@lmiplaw.com;info@lmiplaw.com
212.661.8000
212.661.8002
The docket/reference number is HEMM-1002-TM .
ADDITIONAL STATEMENTS
Miscellaneous Statement
Please recognize Jonathan Myers of Lucas & Mercanti, LLP as the attorney of record in this application.
SIGNATURE(S)
Response Signature
Signature: /Jonathan Myers/ Date: 01/21/2015
Signatory's Name: Jonathan Myers
Signatory's Position: Attorney for Applicant, NY Bar
Signatory's Phone Number: 212.661.8000
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.
Mailing Address: Jonathan Myers
Lucas & Mercanti, LLP
21st Floor
30 Broad Street
New York, New York 10004
Serial Number: 79152701
Internet Transmission Date: Wed Jan 21 09:49:51 EST 2015
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2015012109495116
4009-79152701-530f0d6d40f39bf78888a7a333
44ec57612afff4df14f724af96c53c84f380da-N
/A-N/A-20150121092942994016