| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 85016880 |
| LAW OFFICE ASSIGNED | LAW OFFICE 112 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
The Examining Attorney has initially refused registration under Section 2(d) of the Trademark Act, 15 USC §1052(d), on the basis of Registration No. 2,991,109, issued to DeguDent,Gmbh, a German company, on September 6, 2005, covering the mark SOLARIS for, in Class 017 “heat-shrinkable sleeves for the insulation of the electrodes of electroplating devices and their power supplies in the dental field”, as well as related goods in Classes 001, 003, 005, 009, and 010. Applicant respectfully disagrees, for the following reasons. The determination of likelihood of confusion under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); see also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks themselves, and the similarities between the listed goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by §2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks”). While the marks themselves are identical, Applicant respectfully asserts that the goods described do not overlap, and in addition that the channels of trade for the goods are completely unrelated. Regarding the description of goods, the Registrant's description of goods in Class 017 is very narrow, limited to heat-shrinkable sleeves for insulating electrodes. Further, such heat-shrinkable sleeves are only used to insulate the electrodes of electroplating devices and their power supplies, and even further only with respect to electroplating devices used in the dental field. The Solaris device owned by DeguDent is a device for fabricating dental prosthetic appliances, such as crowns and bridge frameworks, which are coated with 99.9% pure gold. Using the electroplating device described in Class 009, the electroplating machine is used to apply a gold layer onto the surface of the prosthetic appliance. Applicant respectfully asserts that the Registrant clearly only intended the listed goods to be used with the mark in connection with the described very specialized electroplating machine, and so the heat-shrinkable sleeves described in Class 017 are only used with this machine. The Registrant confirms this in an Amendment filed on December 13, 2004, copy attached, in the Remarks section on page 4, in response to an initial Section 2(d) refusal. Here, the Registrant states that "Applicant's goods are sophisticated products all designed for the dental industry and not for general laboratory use. The purchasers of Applicant's goods must be considered as sophisticated and accordingly, great care is exercised by such consumers in selection of these expensive products and systems." In contrast, the present Applicant's goods are not "heat-shrinkable sleeves", but rather a pourable clear silicone rubber compound, in which measured amounts of Part A and Part B materials are mixed and then poured so that the compound flows around a component or assembly such as a solar cell to encapsulate the assembly. Not only does the encapsulation provide good insulation, but it also protects against moisture, dust, chemicals, ozone, and other environmental hazards, and in addition is transparent while providing UV resistance. By the Registrant's own words, the listed goods are only used to insulate electrodes used with a very specialized electroplating machine, in the very specialized field of dental prosthetic appliances. Furthermore, electrodes used for electroplating normally would be considered as electrical components, while Applicant's silicone rubber compound is used with electronic components. Although such difference is somewhat subtle, these are actually completely different scientific fields and industries. Therefore, the channels of trade for the goods are different. Undoubtedly, Applicant's pourable silicone compound would not be used in the same manner as the Registrant’s heat-shrinkable sleeves. It is therefore respectfully asserted that there is no likelihood of confusion between Applicant’s and the Registrant’s mark, and withdrawal of the outstanding refusal is respectfully requested. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_1736213152-105347864_._Smooth-OnSolarisOA.pdf |
| CONVERTED PDF FILE(S) (5 pages) |
\\TICRS\EXPORT11\IMAGEOUT11\850\168\85016880\xml3\ROA0002.JPG |
| \\TICRS\EXPORT11\IMAGEOUT11\850\168\85016880\xml3\ROA0003.JPG | |
| \\TICRS\EXPORT11\IMAGEOUT11\850\168\85016880\xml3\ROA0004.JPG | |
| \\TICRS\EXPORT11\IMAGEOUT11\850\168\85016880\xml3\ROA0005.JPG | |
| \\TICRS\EXPORT11\IMAGEOUT11\850\168\85016880\xml3\ROA0006.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Amendment filed in U.S. registration no. 2,991,109 |
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 017 |
| DESCRIPTION | |
| clear silicone rubber compound designed for use in protection of electronic components by potting or encapsulation of the components and assemblies | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 03/00/2010 |
| FIRST USE IN COMMERCE DATE | At least as early as 03/00/2010 |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 017 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| pourable clear silicone rubber compound for protecting electronic components and assemblies by potting or encapsulation | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 03/00/2010 |
| FIRST USE IN COMMERCE DATE | At least as early as 03/00/2010 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /chw/ |
| SIGNATORY'S NAME | Clinton H. Wilkinson |
| SIGNATORY'S POSITION | Attorney or record, Pennsylvania bar member |
| DATE SIGNED | 01/29/2011 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Sat Jan 29 11:13:14 EST 2011 |
| TEAS STAMP | USPTO/ROA-XXX.XX.XXX.XX-2 0110129111314571082-85016 880-480c47b273de1974c4b97 19e8a9c724b44-N/A-N/A-201 10129105347864595 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
The Examining Attorney has initially refused registration under Section 2(d) of the Trademark Act, 15 USC §1052(d), on the basis of Registration No. 2,991,109, issued to DeguDent,Gmbh, a German company, on September 6, 2005, covering the mark SOLARIS for, in Class 017 “heat-shrinkable sleeves for the insulation of the electrodes of electroplating devices and their power supplies in the dental field”, as well as related goods in Classes 001, 003, 005, 009, and 010. Applicant respectfully disagrees, for the following reasons.
The determination of likelihood of confusion under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); see also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks themselves, and the similarities between the listed goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by §2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks”).
While the marks themselves are identical, Applicant respectfully asserts that the goods described do not overlap, and in addition that the channels of trade for the goods are completely unrelated. Regarding the description of goods, the Registrant's description of goods in Class 017 is very narrow, limited to heat-shrinkable sleeves for insulating electrodes. Further, such heat-shrinkable sleeves are only used to insulate the electrodes of electroplating devices and their power supplies, and even further only with respect to electroplating devices used in the dental field. The Solaris device owned by DeguDent is a device for fabricating dental prosthetic appliances, such as crowns and bridge frameworks, which are coated with 99.9% pure gold. Using the electroplating device described in Class 009, the electroplating machine is used to apply a gold layer onto the surface of the prosthetic appliance.
Applicant respectfully asserts that the Registrant clearly only intended the listed goods to be used with the mark in connection with the described very specialized electroplating machine, and so the heat-shrinkable sleeves described in Class 017 are only used with this machine. The Registrant confirms this in an Amendment filed on December 13, 2004, copy attached, in the Remarks section on page 4, in response to an initial Section 2(d) refusal. Here, the Registrant states that "Applicant's goods are sophisticated products all designed for the dental industry and not for general laboratory use. The purchasers of Applicant's goods must be considered as sophisticated and accordingly, great care is exercised by such consumers in selection of these expensive products and systems."
In contrast, the present Applicant's goods are not "heat-shrinkable sleeves", but rather a pourable clear silicone rubber compound, in which measured amounts of Part A and Part B materials are mixed and then poured so that the compound flows around a component or assembly such as a solar cell to encapsulate the assembly. Not only does the encapsulation provide good insulation, but it also protects against moisture, dust, chemicals, ozone, and other environmental hazards, and in addition is transparent while providing UV resistance.
By the Registrant's own words, the listed goods are only used to insulate electrodes used with a very specialized electroplating machine, in the very specialized field of dental prosthetic appliances. Furthermore, electrodes used for electroplating normally would be considered as electrical components, while Applicant's silicone rubber compound is used with electronic components. Although such difference is somewhat subtle, these are actually completely different scientific fields and industries. Therefore, the channels of trade for the goods are different. Undoubtedly, Applicant's pourable silicone compound would not be used in the same manner as the Registrant’s heat-shrinkable sleeves. It is therefore respectfully asserted that there is no likelihood of confusion between Applicant’s and the Registrant’s mark, and withdrawal of the outstanding refusal is respectfully requested.
