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. 85092402 has been amended as follows:

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

In response to the 2(d) refusal, applicant notes that the term "X PRO" is a weak formative in the clothing industry.  In fact, the PTO has allowed the registration of all of the following marks, all of which contain "X PRO" or variants thereof, and all of which are associated with clothing in Class 025:

• X PRO BIG & TALL SUPER HEAVY, Reg. No. 3062678, covering clothing;
• PRO EX, Reg. No. 3778730, covering clothing;
• XProTex, Reg. No. 3740618, covering clothing; and
• XPRO, Serial No. 85050477, covering clothing.

The above-listed trademark registrations, all of which cover clothing in Class 025, are owned by four (4) different entities.  See attached evidence. The fact that the PTO has allowed at least four (4) different entities to register "X PRO"-formative trademarks in connection with clothing in Class 025 (none of which have encountered any oppositions) serves to suggest that the term "X PRO" is weak in the clothing industry, and therefore deserves a very narrow scope of protection.  If the PTO has allowed various different parties to register "X PRO BIG & TALL SUPER HEAVY", "PRO EX", "XProTex", and "XPRO", all for clothing in Class 025, then surely this Applicant should likewise be allowed to register its mark for "XPRO" for bags in Class 018.  Clearly, the PTO is of the view that slight differences in "X PRO"-formative marks in the clothing industry serve to obviate any potential confusion among consumers.  And if "X PRO"-formative marks are receiving a very narrow scope of protection in Class 025, then surely the scope of protection would be even narrower for non-clothing goods in Class 018.

Indeed, the TMEP specifically states: "If the common element of two marks is 'weak' in that it is generic, descriptive, or highly suggestive of the named goods or services, consumers typically will be able to avoid confusion unless the overall combinations have other commonality."  TMEP 1207.01(b)(viii).  In this, case, the common element is weak (the term "X PRO" is commonly used in connection with clothing, as evidenced by the 4 trademarks listed above, which are owned by 4 different entities), and there is no other commonality. Accordingly, consumers should be able to avoid confusion in this case.

Due to the weakness of the common term "X PRO" in the clothing industry as evidenced by the 4 attached trademarks (which are owned by 4 different entities), confusion is not likely in this case, especially given that the applicant's good are non-clothing goods in Class 018.  Accordingly, the Applicant respectfully requests that the refusal be withdrawn.

EVIDENCE
Evidence in the nature of Third-party registrations. has been attached.
Original PDF file:
evi_761460118-163643079_._Latest_Status_Info.pdf
Converted PDF file(s) (4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Original PDF file:
evi_761460118-163643079_._Latest_Status_Info2.pdf
Converted PDF file(s) (4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Original PDF file:
evi_761460118-163643079_._Latest_Status_Info3.pdf
Converted PDF file(s) (5 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Original PDF file:
evi_761460118-163643079_._Latest_Status_Info4.pdf
Converted PDF file(s) (4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4

SIGNATURE(S)
Response Signature
Signature: /xm/     Date: 05/10/2011
Signatory's Name: Xavier Morales
Signatory's Position: Attorney of record

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: 85092402
Internet Transmission Date: Tue May 10 16:55:14 EDT 2011
TEAS Stamp: USPTO/ROA-XX.XX.XX.XXX-20110510165514154
860-85092402-4802ae254b0d59560f7d925355b
48b0a4-N/A-N/A-20110510163643079415