Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 85016796 has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Applicant has amended the description of goods to clarify that Applicants mark is intended for use on automotive paints.   As shown on the already submitted specimens, these automotive paints are intended for use by “…TRAINED PROFESSIONALS USING PROPER EQUIPMENT UNDER CONTROLLED USE CONDITIONS. NOT INTENDED FOR THE RETAIL TRADE. …”

Professional automotive painters using specialized equipment would be expected to exercise special care in selecting their products which would prevent any likelihood of confusion.

In this case, the marks are different; the cited mark is two words and has a very different sound and appearance as a whole than applicants mark.   The cited mark includes the distinctive term “KILZ” further differentiating the marks.  Professional automotive painters would not be confused.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 002 for Paints
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 09/03/2002 and first used in commerce at least as early as 09/03/2002, and is now in use in such commerce.

Proposed:
Tracked Text Description: Paints; Automotive PaintsClass 002 for Automotive Paints
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 09/03/2002 and first used in commerce at least as early as 09/03/2002, and is now in use in such commerce.
SIGNATURE(S)
Response Signature
Signature: /rmcd/     Date: 01/21/2011
Signatory's Name: Robert E. McDonald
Signatory's Position: Attorney of record, Ohio Bar member

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: 85016796
Internet Transmission Date: Fri Jan 21 16:31:29 EST 2011
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.X-20110121163129801
829-85016796-470489669469bd78b9c6976b93d
cfda621f-N/A-N/A-20110121160839764090