| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 85002226 |
| LAW OFFICE ASSIGNED | LAW OFFICE 113 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
RESPONSE TO OFFICE ACTION
SERIAL NUMBER: 85002226 MARK: PRO-1 APPLICANT: DYK AUTOMOTIVE, LLC EXAMINER: J. BRENDAN REGAN LAW OFFICE: 113
In the Office Action dated May 25, 2010, the above application was refused because of a likelihood of confusion with the mark in U.S. Registration No. 2379957 for PRO 1. This mark is registered with respect to "engine parts, namely, cylinder heads for high performance motor vehicles" and was first used January 1, 1998.
As understood, Trademark Act Section 2(d) bars the registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods of the applicant and registrant.
In the present case, applicant first used its mark on May 2, 1983 and has continued to do so, in both printed and electronic media, to the present date. It is also known that the registrant first used its mark in 1998. Thus, counting from 1998 forward, the two marks have co-existed for over 12 years without any instance that a consumer has ever been confused or mistaken or deceived as to the source of the goods of the applicant and registrant.
This lack of confusion has occurred despite applicant being America's largest independent parts supplier and applicant's long use of its mark on the Internet, in sales catalogs and in other printed literature available to the general public. Furthermore, applicant's sales are not miniscule; they've easily exceeded a hundred thousand dollars each year for the past several years. Additionally, because of the above sales and promotional activity, applicant's mark has been viewed by a great multitude of consumers. Yet for over a decade the respective parties have used their respective marks without a single known instance of consumer confusion. Based on the above, it is thus not believed that consumers are likely to be confused, mistaken or deceived as stated in the Trademark Act and hence applicant's mark should be allowed.
The reason for this lack of confusion for over 12 years is due to the fact that applicant's goods and registrant's goods travel in different channels of trade in the automotive industry. The respective goods are not similar and they are purchased by different consumer groups. This is most readily evident by contrasting applicant's goods (engine timing and fan belts along with heater, power steering and fuel hoses) with registrant's goods (cylinder heads for high performance motor vehicles). For example, applicant's goods are flexible or pliable while registrant's goods are solid and metallic. Applicant's goods are relatively easy to install and hence are sold into the do-it-yourself market; registrant's goods are considerably harder to install and require a specialists with a high degree of skill and talent to do so. Applicant's goods can be used on all types of engines whereas registrant's goods are for use only with respect to high performance vehicles. Applicant's goods are regularly available and carried in-stock whereas registrant's goods often require special ordering and handling. Applicant's goods can be installed at home or in a garage with common tools whereas registrant's goods require a mechanic with special tools for installation. Applicant's goods are installed outside the engine while registrant's goods are installed inside the engine. Applicant's goods are used on already assembled engines whereas registrant's goods are used to assemble the engine in the first place. Applicant's goods are sold into to the mass or general market whereas registrant's goods are sold into the special high performance market. For at least these reasons, different consumer groups encounter and/or purchase these products and as a result the respective goods travel in different channels of trade. The long period of usage of the respective marks by the respective owners with no instance of confusion should be sufficient proof that there are indeed clear distinctions between these products and their respective purchasers.
There was also a stated concern about protecting the registrant from adverse commercial impact due to the use of a similar mark by a newcomer. However, based on dates of use, the registrant is the newcomer, not applicant. The registrant's date of first use is 1998 whereas applicant began using its mark 15 years earlier in 1983. Additionally, and as stated above, the two marks have been used in their respective channels of trade for well over 12 years (i.e. since 1998) with no known adverse commercial impact. Based on this history, it is believed that applicant's and registrant's marks can continue to be used as they have since the two marks are used in different markets and are viewed by different consumer groups. Consequently, this stated concern is unfounded.
In light of the above and especially in view of applicant being the largest independent parts supplier in the U.S., the hundreds of thousands of dollars in applicant's sales, and applicant's promotion of its mark all these years in print and via the Internet, it is now hoped that the Examiner will reconsider the reasons provided for initially rejecting this application and will instead permit this application to proceed to allowance.
Before doing so, however, applicant would like to take this opportunity to revise the identification of goods as recommended in this office action.
Regarding Class 7, applicant would like to thank the examiner for the suggestion and accepts the recommendation that this identification be changed to "automotive engine timing
and fan belts". This will be done at the appropriate location in electronic response to the office action that is being filed.
Regarding the identification of the goods 'hoses', applicant is unsure whether such goods are properly classified in Class 12 or in Class 17. A more accurate identification of these goods is "heater, power steering, fuel injection and fuel line hoses". The second page of the submitted specimen displays these products. Because they are intended for use in automobiles which is a land vehicle, Class 12 would seem appropriate. On the other hand, because these products are flexible in nature, an argument can also be made that they belong in Class 17. While I will defer to the examiner's greater understanding of the distinctions between the two classes, I suspect that Class 12 might be the proper class for these products since they are intended for use in vehicles. This is based on the fact that windshield wiper blades and fuel lines for vehicles, both of which are likewise flexible, are properly classified in Class 12.
For this reason, the applicant will identify its 'hose' goods as "automotive heater, power steering, fuel injection and fuel line hoses" in Class 12. Applicant
will also pay an additional fee for this additional class and will submit an additional specimen as required. Again, this will be done at the appropriate location in the electronic response to
the office action.
Applicant is also submitting a substitute specimen as requested. The substitute specimen will be added to the electronic response to the office action.
If there are any questions or outstanding issues that have not been addressed, it is respectfully requested that the examiner contact me to resolve these issues.
Michael L. Hoelter Attorney for Applicant DYK AUTOMOTIVE, LLC |
|
| GOODS AND/OR SERVICES SECTION (012)(class deleted) | |
| INTERNATIONAL CLASS | 012 |
| DESCRIPTION | Automotive hoses and belts |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 05/02/1983 |
| FIRST USE IN COMMERCE DATE | At least as early as 05/02/1983 |
| GOODS AND/OR SERVICES SECTION (007)(class added)Original Class (012) | |
| INTERNATIONAL CLASS | 007 |
| DESCRIPTION | Automotive engine timing and fan belts |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 05/02/1983 |
| FIRST USE IN COMMERCE DATE | At least as early as 05/02/1983 |
| STATEMENT TYPE | "The substitute (or new, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. |
| SPECIMEN FILE NAME(S) |
\\TICRS\EXPORT10\IMAGEOUT 10\850\022\85002226\xml5\ ROA0002.JPG |
| SPECIMEN DESCRIPTION | A scanned page from a catalog. |
| GOODS AND/OR SERVICES SECTION (012)(class added) | |
| INTERNATIONAL CLASS | 012 |
| DESCRIPTION | |
| Automotive heater, power steering, fuel injection and fuel line hoses. | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 05/02/1983 |
| FIRST USE IN COMMERCE DATE | At least as early as 05/02/1983 |
| STATEMENT TYPE | "The substitute (or new, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. |
| SPECIMEN FILE NAME(S) |
\\TICRS\EXPORT10\IMAGEOUT 10\850\022\85002226\xml5\ ROA0003.JPG |
| SPECIMEN DESCRIPTION | A scanned page from a catalog. |
| PAYMENT SECTION | |
| NUMBER OF CLASSES | 1 |
| FEE PER CLASS | 325 |
| TOTAL FEES DUE | 325 |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | /Michael L. Hoelter/ |
| SIGNATORY'S NAME | Michael L. Hoelter |
| SIGNATORY'S POSITION | Attorney of record, Tennessee bar member. |
| DATE SIGNED | 06/29/2010 |
| RESPONSE SIGNATURE | /Michael L. Hoelter/ |
| SIGNATORY'S NAME | Michael L. Hoelter |
| SIGNATORY'S POSITION | Attorney of record, Tennessee bar member. |
| DATE SIGNED | 06/29/2010 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Jun 29 17:17:53 EDT 2010 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XXX- 20100629171753921211-8500 2226-460e4a591a55435ebf72 4c6bb88a5b4058-CC-16494-2 0100629155910954940 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
RESPONSE TO OFFICE ACTION
SERIAL NUMBER: 85002226
MARK: PRO-1
APPLICANT: DYK AUTOMOTIVE, LLC
EXAMINER: J. BRENDAN REGAN
LAW OFFICE: 113
In the Office Action dated May 25, 2010, the above application was refused because of a likelihood of confusion with the mark in U.S. Registration No. 2379957 for PRO 1. This mark is registered with respect to "engine parts, namely, cylinder heads for high performance motor vehicles" and was first used January 1, 1998.
As understood, Trademark Act Section 2(d) bars the registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods of the applicant and registrant.
In the present case, applicant first used its mark on May 2, 1983 and has continued to do so, in both printed and electronic media, to the present date. It is also known that the registrant first used its mark in 1998. Thus, counting from 1998 forward, the two marks have co-existed for over 12 years without any instance that a consumer has ever been confused or mistaken or deceived as to the source of the goods of the applicant and registrant.
This lack of confusion has occurred despite applicant being America's largest independent parts supplier and applicant's long use of its mark on the Internet, in sales catalogs and in other printed literature available to the general public. Furthermore, applicant's sales are not miniscule; they've easily exceeded a hundred thousand dollars each year for the past several years. Additionally, because of the above sales and promotional activity, applicant's mark has been viewed by a great multitude of consumers. Yet for over a decade the respective parties have used their respective marks without a single known instance of consumer confusion. Based on the above, it is thus not believed that consumers are likely to be confused, mistaken or deceived as stated in the Trademark Act and hence applicant's mark should be allowed.
The reason for this lack of confusion for over 12 years is due to the fact that applicant's goods and registrant's goods travel in different channels of trade in the automotive industry. The respective goods are not similar and they are purchased by different consumer groups. This is most readily evident by contrasting applicant's goods (engine timing and fan belts along with heater, power steering and fuel hoses) with registrant's goods (cylinder heads for high performance motor vehicles). For example, applicant's goods are flexible or pliable while registrant's goods are solid and metallic. Applicant's goods are relatively easy to install and hence are sold into the do-it-yourself market; registrant's goods are considerably harder to install and require a specialists with a high degree of skill and talent to do so. Applicant's goods can be used on all types of engines whereas registrant's goods are for use only with respect to high performance vehicles. Applicant's goods are regularly available and carried in-stock whereas registrant's goods often require special ordering and handling. Applicant's goods can be installed at home or in a garage with common tools whereas registrant's goods require a mechanic with special tools for installation. Applicant's goods are installed outside the engine while registrant's goods are installed inside the engine. Applicant's goods are used on already assembled engines whereas registrant's goods are used to assemble the engine in the first place. Applicant's goods are sold into to the mass or general market whereas registrant's goods are sold into the special high performance market. For at least these reasons, different consumer groups encounter and/or purchase these products and as a result the respective goods travel in different channels of trade. The long period of usage of the respective marks by the respective owners with no instance of confusion should be sufficient proof that there are indeed clear distinctions between these products and their respective purchasers.
There was also a stated concern about protecting the registrant from adverse commercial impact due to the use of a similar mark by a newcomer. However, based on dates of use, the registrant is the newcomer, not applicant. The registrant's date of first use is 1998 whereas applicant began using its mark 15 years earlier in 1983. Additionally, and as stated above, the two marks have been used in their respective channels of trade for well over 12 years (i.e. since 1998) with no known adverse commercial impact. Based on this history, it is believed that applicant's and registrant's marks can continue to be used as they have since the two marks are used in different markets and are viewed by different consumer groups. Consequently, this stated concern is unfounded.
In light of the above and especially in view of applicant being the largest independent parts supplier in the U.S., the hundreds of thousands of dollars in applicant's sales, and applicant's promotion of its mark all these years in print and via the Internet, it is now hoped that the Examiner will reconsider the reasons provided for initially rejecting this application and will instead permit this application to proceed to allowance.
Before doing so, however, applicant would like to take this opportunity to revise the identification of goods as recommended in this office action.
Regarding Class 7, applicant would like to thank the examiner for the suggestion and accepts the recommendation that this identification be changed to "automotive engine timing
and fan belts". This will be done at the appropriate location in electronic response to the office action that is being filed.
Regarding the identification of the goods 'hoses', applicant is unsure whether such goods are properly classified in Class 12 or in Class 17. A more accurate identification of these goods is "heater, power steering, fuel injection and fuel line hoses". The second page of the submitted specimen displays these products. Because they are intended for use in automobiles which is a land vehicle, Class 12 would seem appropriate. On the other hand, because these products are flexible in nature, an argument can also be made that they belong in Class 17. While I will defer to the examiner's greater understanding of the distinctions between the two classes, I suspect that Class 12 might be the proper class for these products since they are intended for use in vehicles. This is based on the fact that windshield wiper blades and fuel lines for vehicles, both of which are likewise flexible, are properly classified in Class 12.
For this reason, the applicant will identify its 'hose' goods as "automotive heater, power steering, fuel injection and fuel line hoses" in Class 12. Applicant
will also pay an additional fee for this additional class and will submit an additional specimen as required. Again, this will be done at the appropriate location in the electronic response to
the office action.
Applicant is also submitting a substitute specimen as requested. The substitute specimen will be added to the electronic response to the office action.
If there are any questions or outstanding issues that have not been addressed, it is respectfully requested that the examiner contact me to resolve these issues.
Michael L. Hoelter
Attorney for Applicant
DYK AUTOMOTIVE, LLC
