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. 85096099 has been amended as follows:

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

            The mark, KHK, is an abbreviated form of the applicant’s name, specifically Kohara Haguruma Kogyou, which translates to Kohara Gear Industry.

            The identification of applicant’s goods in class 7 has been revised to clarify the goods, or products, of particular interest.  Applicant distributes “toothed transmission wheels made in metric dimensions, namely…internal gears and screw gears” for use as internal components of machines and equipment to transmission motion. 

Applicant maintains over 7,000 configurations of toothed wheels (or gears) in stock, as shown on the website <www.khkgears.co.jp> maintained by KHK Stock Gears.  Applicant also manufactures and sells custom toothed transmission wheels made in conformance with (the) customer’s specification and manufacturing drawings.

            Applicant’s goods (or products), whether manufactured as stock items or custom made to the customer’s specification and manufacturing drawings, are incorporated into diverse mechanisms, and are not useful by themselves.

            The products bearing the KHK mark are sold primarily to original equipment manufacturers (OEM) through distributors for power transmission components.  The products are marketed to engineers who design equipment.  The engineers are skilled and technically trained customers for applicant’s products.

            Quality Transmission Components (QTC), a division of Designatronics, Inc., of New Hyde Park, New York, is the exclusive distributor of KHK gears in the U.S.  KHK’s products are QTC’s 536 page catalog.  Q420, which contains the product line, a technical section including 124 pages directed to gearing technology, and 28 pages of technical standards and specifications.  The pages of the catalog may viewed by visiting the QTC website at <www.qtcgears.com> and clicking on the image of Catalog Q420.

            The rejection based upon the likelihood of confusion with Registration 2,164,512, KHK, under Section 2(d) of the Trademark Act should be withdrawn.  Though the registered registration, and the pending application, are directed to the KHK mark, the goods in the cited registration are readily distinguishable.  Applicant’s mark is applied to toothed transmission wheels used as an internal component in machines and equipment to transmit motion.  The toothed transmission wheels are distributed to engineers for inclusion within equipment and machines for transmitting motion; the toothed wheels may be purchases as a stock item, or may be custom made to the specifications and drawings of a particular customer.  Applicant does not distribute “diamond saw blades…”, “diamond grinding wheels…”, or “diamond core bit and drill for drilling holes on the wall or any other non metal material.”

            Prompt and favorable consideration of the Amendment is believed to be in order.  If the Examining Attorney believes that a telephone interview might expedite prosecution, he is invited to contact the undersigned attorney at 202-216-9505 ext. 245.

EVIDENCE
Evidence in the nature of 1. Printout form www.khkgears.co.jp 2. Printout from www.qtcgears.com has been attached.
Original PDF file:
evi_708813173-121721785_._Attachment_1__12-15-10_.pdf
Converted PDF file(s) (3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_708813173-121721785_._Attachment_2__12-15-10_.pdf
Converted PDF file(s) (4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 007 for standardized metric gears, namely, spur gears, helical gears, racks and pinions, bevel gears, miter gears, worm gears, internal gears, and screw gears; custon gears
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Proposed:
Tracked Text Description: standardized metric gears, namely, spur gears, helical gears, racks and pinions, bevel gears, miter gears, worm gears, internal gears, and screw gears; standardized metric gears, toothed transmission wheels made in metric dimensions, namely spur gears, helical gears, racks, pinion gears, bevel gears, miter gears, worm gears and worm wheels, internal gears, and screw gears for use as internal components of machines and equipment to transmit motion; custon gears; custom gearsClass 007 for standardized metric gears, toothed transmission wheels made in metric dimensions, namely spur gears, helical gears, racks, pinion gears, bevel gears, miter gears, worm gears and worm wheels, internal gears, and screw gears for use as internal components of machines and equipment to transmit motion; custom gears
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

CORRESPONDENCE ADDRESS CHANGE
Applicant proposes to amend the following:
Current:
MARTIN P. HOFFMAN
HOFFMAN, WASSON AND GITLER
2461 S CLARK ST STE 522
ARLINGTON, VA 22202-3874

Proposed:
Martin P. Hoffman of Stein McEwen LLP, having an address of
Suite 300 1400 Eye St., N.W. Washington, District of Columbia 20005
United States
docketing@smiplaw.com
202-216-9505
202-216-9510
The attorney docket/reference number is 0156.20036.



SIGNATURE(S)
Response Signature
Signature: /Martin P. Hoffman/     Date: 12/15/2010
Signatory's Name: Martin P. Hoffman
Signatory's Position: Attorney of Records, Bar Member DC and VA

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.

Mailing Address:    Martin P. Hoffman
   Stein McEwen LLP
   Suite 300
   1400 Eye St., N.W.
   Washington, District of Columbia 20005
        
Serial Number: 85096099
Internet Transmission Date: Wed Dec 15 12:27:20 EST 2010
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20101215122720346
423-85096099-4703faeb64afbf127f691f0e2da
133755-N/A-N/A-20101215121721785285