| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 79199292 |
| LAW OFFICE ASSIGNED | LAW OFFICE 121 |
| MARK SECTION | |
| MARK FILE NAME | http://uspto.report/TM/79199292/mark.png |
| LITERAL ELEMENT | LAUNCH |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| COLOR(S) CLAIMED (If applicable) |
Color is not claimed as a feature of the mark. |
| ARGUMENT(S) | |
|
Applicant, by and through its attorneys, submits the following Amendment of the Identification of Goods, Amended Description of the Mark and Remarks in response to the Notice of Provisional Refusal dated January 18, 2017. REMARKS The Office Action has been received and carefully considered. The Examining Attorney has refused registration of Applicant’s mark based on U.S. Registration No. 5019692 for the mark LAUNCH used on coating machines for applying chemicals and U.S. Registration No. 4566378 for the mark LAUNCH AMAZING used on electric compressors. While Applicant can understand the reasoning of the Examining Attorney, Applicant submits that no confusion is likely to occur by the use of Applicant’s mark and the mark in the cited registration. Based on the Remarks and amendment of the Identification, withdrawal of the refusal to register Applicant’s mark is requested. There are several factors used to determine whether the likelihood of confusion exists between the two marks. Primarily, the factors include the similarity of the marks in their entirety as to appearance, sound, connotation and commercial impression; the similarity of the goods and services; the similarity of the trade channels; sophistication of the purchaser; the strength of the prior mark; the number and nature of similar marks in use on similar goods/services; any actual confusion; and other factors probative of the effects of use. In re E.I. DuPont de Nemours & Co., 177 U.S.P.Q. 563 (C.C.P.A. 1973). I. The goods are not similar and do not compete. Applicant’s goods, as modified, are “spray guns for paint; paint-spraying machines; car washing installation; fuel system cleaning machine; fuel nozzle cleaning machine; powered tire changer machines for land vehicles; disc brakes for machines; refrigerant recovery pumps; powered transmission fluid changing machines for land vehicles; hoists; lifting apparatus, namely car lifts.” Applicant’s goods are the goods are the type used on connection with land vehicles. The mark in cited registration no. 5019692 is used in connection with coating machines for applying chemical coatings to commercial products and packaging and other machines, all for use in the chemical industry. The mark in cited registration 4566378 is used in connection with electric compressors and other household machine. While all the marks are used in connection with types of machines, the goods are not related in a way that would cause any confusion. The goods are not related in such a manner that the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods come from a common source. Often, the Courts have found that even though products are in the same field, they are not likely to cause confusion because they do not compete or serve the same purpose. W.W.W. Pharmaceutical Company, Inc. v The Gillette Company, 25 USPQ 2d 1593 (2nd Cir. 1993); Lang v Retirement Living Publishing Company, Inc., 21 USPQ 2d 1041 (2nd Cir. 1991). The courts have recognized that “services are not related because they coexist in the same broad industry, but are related if the services are marketed and consumed such that buyers are likely to believe that the services similarly marked come from the same source, and are somehow connected with or are sponsored by a common company.” Homeowners Group, Inc. v Home Marketing Specialists, Inc., 18 USPQ 2d 1587 (6th Cir. 1991). In W.W.W. Pharmaceutical Company, Inc. v The Gillette Company, 25 USPQ 2d 1593 (2nd Cir. 1993), the Court found that no confusion was likely between the marks SPORTSTICK for lip balm and SPORT STICK for deodorant and antiperspirant products. The Court found that even though the products may be generally defined in the same field (personal care products), they were not likely to cause confusion because they do not compete or serve the same purpose. Because the machines provided by the parties are used for different purposes by different types of customers, confusion should be avoided. In the case at hand, the goods are various machines used in class 007. However, the function and purpose of the goods are different and non-competing. Applicant has deleted the related goods from the application and the remaining goods are not related in such a way that the conditions surrounding the marketing are not such that would give rise to any confusion. Aside from falling in the general field of machines, the goods are not related. II. The goods are marketed to different customers. The channels of trade are also different. In the case of In re Fesco, Inc., 219 USPQ 437 (TTAB 1983), the Court found that the mark FESCO, for distributorships in the field of farm equipment and machinery and the mark FESCO for fertilizer and fertilizer processing equipment are not likely to cause confusion among purchasers. Here, the marks were identical and the goods were related. However, the Court found that although the goods were related, they would not come to the attention of the same kind of purchasers because the goods move through different channels. Applicant’s goods are provided to companies working in the automotive industry. The goods in the cited registrations are targeted towards the chemical industry and the consumer electronics and appliances industry. The customers are completely different, largely due to the very different purposes of the goods. The targeted purchasers of Applicant’s goods are not the targeted purchasers of the goods in each of the cited registrations. The goods are different and move through different channels of trade, such that the marks are not going to come into contact with the same kind of purchaser. III. Conclusion Applicant submits that no confusion is likely to occur by the use of Applicant’s mark and the cited marks on their respective goods. Applicant has amended its identification to clarify the goods are sufficiently different and do not compete or service the same purpose. Additionally, the goods flow through different channels of trade and the marks are not likely to come to the attention of the same type of purchaser. Accordingly, Applicant respectfully requests that the Examining Attorney withdraw the refusal to register. |
|
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 007 |
| DESCRIPTION | |
| Spray guns for paint; paint-spraying machines; electrostatic coating machines; car washing installation; fuel system cleaning machine; fuel nozzle cleaning machines; tyre removing and installing machines; air compressors for inflating tires; disc brakes for machines; refrigerant recovery pumps; transmission fluid changing machines; hoist; lifting apparatus | |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 007 |
| TRACKED TEXT DESCRIPTION | |
| Spray guns for paint; paint-spraying machines; |
|
| FINAL DESCRIPTION | |
| Spray guns for paint; paint-spraying machines; car washing installation; fuel system cleaning machine; fuel nozzle cleaning machines; powered tire changer machines for land vehicles; disc brakes for machines; refrigerant recovery pumps; powered transmission fluid changing machines for land vehicles; hoists; lifting apparatus, namely car lifts | |
| ADDITIONAL STATEMENTS SECTION | |
| DESCRIPTION OF THE MARK (and Color Location, if applicable) |
The mark consists of the wording LAUNCH in stylized form. |
| NEW ATTORNEY SECTION | |
| NAME | Lin Xiao |
| FIRM NAME | YOUNG BASILE HANLON & MACFARLANE P.C. |
| OTHER APPOINTED ATTORNEY | Molly B. Markley, Kathleen G. Mellon |
| INTERNAL ADDRESS | Suite 624 |
| STREET | 3001 West Big Beaver Road |
| CITY | Troy |
| STATE | Michigan |
| ZIP/POSTAL CODE | 48084-3107 |
| COUNTRY | United States |
| PHONE | 248-649-3333 |
| FAX | 248-649-3338 |
| docketing@youngbasile.com | |
| AUTHORIZED EMAIL COMMUNICATION | Yes |
| CORRESPONDENCE SECTION | |
| ORIGINAL ADDRESS | Guangdong Scihead Huaxu Trademark Agent Co., Ltd. Unit 1508, Huaxu Commercial & Trade Building, 510070 Guangdong CN |
| NEW CORRESPONDENCE SECTION | |
| NAME | Lin Xiao |
| FIRM NAME | YOUNG BASILE HANLON & MACFARLANE P.C. |
| INTERNAL ADDRESS | Suite 624 |
| STREET | 3001 West Big Beaver Road |
| CITY | Troy |
| STATE | Michigan |
| ZIP/POSTAL CODE | 48084-3107 |
| COUNTRY | United States |
| PHONE | 248-649-3333 |
| FAX | 248-649-3338 |
| docketing@youngbasile.com | |
| AUTHORIZED EMAIL COMMUNICATION | Yes |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Molly B. Markley/ |
| SIGNATORY'S NAME | Molly B. Markley |
| SIGNATORY'S POSITION | Attorney and Authorized Agent of Applicant |
| SIGNATORY'S PHONE NUMBER | 248-649-3333 |
| DATE SIGNED | 06/29/2017 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu Jun 29 16:15:08 EDT 2017 |
| TEAS STAMP | USPTO/ROA-XX.XX.XXX.X-201 70629161508590750-7919929 2-590ad461442be15cfcce81d 55c26614ad87ede56e1cbdba7 a510327bf2c9227f58-N/A-N/ A-20170629155616014326 |
| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 07/31/2017) |
Applicant, by and through its attorneys, submits the following Amendment of the Identification of Goods, Amended Description of the Mark and Remarks in response to the Notice of Provisional Refusal dated January 18, 2017.
REMARKS
The Office Action has been received and carefully considered. The Examining Attorney has refused registration of Applicant’s mark based on U.S. Registration No. 5019692 for the mark LAUNCH used on coating machines for applying chemicals and U.S. Registration No. 4566378 for the mark LAUNCH AMAZING used on electric compressors. While Applicant can understand the reasoning of the Examining Attorney, Applicant submits that no confusion is likely to occur by the use of Applicant’s mark and the mark in the cited registration. Based on the Remarks and amendment of the Identification, withdrawal of the refusal to register Applicant’s mark is requested.
There are several factors used to determine whether the likelihood of confusion exists between the two marks. Primarily, the factors include the similarity of the marks in their entirety as to appearance, sound, connotation and commercial impression; the similarity of the goods and services; the similarity of the trade channels; sophistication of the purchaser; the strength of the prior mark; the number and nature of similar marks in use on similar goods/services; any actual confusion; and other factors probative of the effects of use. In re E.I. DuPont de Nemours & Co., 177 U.S.P.Q. 563 (C.C.P.A. 1973).
I. The goods are not similar and do not compete.
Applicant’s goods, as modified, are “spray guns for paint; paint-spraying machines; car washing installation; fuel system cleaning machine; fuel nozzle cleaning machine; powered tire changer machines for land vehicles; disc brakes for machines; refrigerant recovery pumps; powered transmission fluid changing machines for land vehicles; hoists; lifting apparatus, namely car lifts.” Applicant’s goods are the goods are the type used on connection with land vehicles. The mark in cited registration no. 5019692 is used in connection with coating machines for applying chemical coatings to commercial products and packaging and other machines, all for use in the chemical industry. The mark in cited registration 4566378 is used in connection with electric compressors and other household machine. While all the marks are used in connection with types of machines, the goods are not related in a way that would cause any confusion. The goods are not related in such a manner that the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods come from a common source. Often, the Courts have found that even though products are in the same field, they are not likely to cause confusion because they do not compete or serve the same purpose. W.W.W. Pharmaceutical Company, Inc. v The Gillette Company, 25 USPQ 2d 1593 (2nd Cir. 1993); Lang v Retirement Living Publishing Company, Inc., 21 USPQ 2d 1041 (2nd Cir. 1991). The courts have recognized that “services are not related because they coexist in the same broad industry, but are related if the services are marketed and consumed such that buyers are likely to believe that the services similarly marked come from the same source, and are somehow connected with or are sponsored by a common company.” Homeowners Group, Inc. v Home Marketing Specialists, Inc., 18 USPQ 2d 1587 (6th Cir. 1991).
In W.W.W. Pharmaceutical Company, Inc. v The Gillette Company, 25 USPQ 2d 1593 (2nd Cir. 1993), the Court found that no confusion was likely between the marks SPORTSTICK for lip balm and SPORT STICK for deodorant and antiperspirant products. The Court found that even though the products may be generally defined in the same field (personal care products), they were not likely to cause confusion because they do not compete or serve the same purpose. Because the machines provided by the parties are used for different purposes by different types of customers, confusion should be avoided.
In the case at hand, the goods are various machines used in class 007. However, the function and purpose of the goods are different and non-competing. Applicant has deleted the related goods from the application and the remaining goods are not related in such a way that the conditions surrounding the marketing are not such that would give rise to any confusion. Aside from falling in the general field of machines, the goods are not related.
II. The goods are marketed to different customers.
The channels of trade are also different. In the case of In re Fesco, Inc., 219 USPQ 437 (TTAB 1983), the Court found that the mark FESCO, for distributorships in the field of farm equipment and machinery and the mark FESCO for fertilizer and fertilizer processing equipment are not likely to cause confusion among purchasers. Here, the marks were identical and the goods were related. However, the Court found that although the goods were related, they would not come to the attention of the same kind of purchasers because the goods move through different channels.
Applicant’s goods are provided to companies working in the automotive industry. The goods in the cited registrations are targeted towards the chemical industry and the consumer electronics and appliances industry. The customers are completely different, largely due to the very different purposes of the goods. The targeted purchasers of Applicant’s goods are not the targeted purchasers of the goods in each of the cited registrations. The goods are different and move through different channels of trade, such that the marks are not going to come into contact with the same kind of purchaser.
III. Conclusion
Applicant submits that no confusion is likely to occur by the use of Applicant’s mark and the cited marks on their respective goods. Applicant has amended its identification to clarify the goods are sufficiently different and do not compete or service the same purpose. Additionally, the goods flow through different channels of trade and the marks are not likely to come to the attention of the same type of purchaser. Accordingly, Applicant respectfully requests that the Examining Attorney withdraw the refusal to register.