Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 85446671 STANDARD(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85446671) has been amended as follows:

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

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

SERIAL NO.: 85/446,671 Examining Attorney:

Sara N. Benjamin

Law Office 110

APPLICANT: Frigid Fluid Company

TRADEMARK: STANDARD

RESPONSE TO OFFICE ACTION DATED FEBRUARY 7, 2012

In response to the Office Action dated February 7, 2012, Applicant

hereby responds as follows:

REMARKS

The Examining Attorney has refused registration of Applicant's mark,

STANDARD, on the grounds that it so resembles an existing trademark

registration that its use is likely to cause confusion, mistake or deception. The

cited registration is as follows:

STANDARDFIT GR (Reg. No. 3,496,200) - This is a registration of Rossi

S.P.A. (Italy) which was issued on May 22, 2007, in Class 7.

PRELIMINARY STATEMENT

This application has been refused because of one registration which

includes but does not constitute the word "Standard."

In evaluating the potential confusion between the cited registration, it is

essential to recognize four independent and compelling points:

1. The marks are different and distinguishable on their face;

2. The marks are different in their commercial impressions;

3. The goods, the classes and the channels of trade for the respective

marks are vastly different; and

4. There are numerous "Standard" trademarks in Class 7 which all

peacefully coexist.

The Applicant submits that its mark is different in sound, appearance

and meaning from the cited registration. Their commercial impressions are

wholly different. And, the channels of trade and the goods themselves are

different from the cited marks suggesting that not only is confusion not "likely,"

it is virtually impossible.

I. THE TRADEMARKS ARE DIFFERENT

The Applicant has applied for STANDARD for the following services:

Class 8 — Gravity-powered casket lowering device for use in cemeteries

and other places of interment."

Because this is a graw'tiy-powered product (which the Applicant will agree

is in Class 8) and given the Applicant's agreement to the Examiner's request to

modify the identification of goods accordingly, this modification automatically

sets this mark apart from the cited registration. When evaluating two (or more)

marks as here, it is critical to examine the differences - not just a lone

similarity. Here, the similarity consists of one common word — "Standard."

However the cited registration is STANDARDFIT R 86 Gear design within a

rounded square. This mark is registered in Class 7 for the following:

"Gear power transmissions for machines; gear reducers, other than for

land vehicles, namely gear cutters; electric motors, other than for land

vehicles, namely planetary gear motors, starter motors, airplane motors,

gear motors, other than for land vehicles, namely planetary gear motors,

starter motors, airplane motors,; integrated motor-inverters, other than

for land vehicles, namely direct current motors."

The difference between these marks is not only dramatic — but the

respective marks actually speak of the difference. The cited registration

displays (in the design) and otherwise references gear (electrical) motor "power"

of the goods. The implicit power source alone suggests a difference in the two

marks. And this difference points to how consumers might also view the

marks in a side-by-side comparison. The Applicant's mark contains 8 letters.

The cited registration has 11 letters in the initial mark plus another letter ("R")

following within a gear design. The cited registration is powerful. Electric

power. Gear power.

When you have such fundamental — and discernible — differences in the

underlying marks (and of course the respective goods and the overall

commercial impression), it takes a great leap of faith to conclude that

confusion is "likely." The Applicant submits that there is no likelihood of

confusion and that the citation of this registered mark should be withdrawn.

It is well-settled that distinctive letters added to a mark distinguish the

mark and eliminate likely confusion. See Champagne Louis Roederer S.A. v.

Delicato Vineyards, 47 U.S.P.Q.2d 1459, 1461 (Fed. Cir. 1998) (no likelihood of

confusion between CRYSTAL CREEK for wine and CRISTAL for champagne;

Interstate Brands Corp. v. Celestial Seasonings, Inc., 576 F.2d 926, 928-29

(C.C.P.A. 1978) (RED ZINGER for herb tea and ZINGERS for cakes not

confusingly similar); In re Jacques Bemier, Inc., 1 U.S.P.Q.2d 1924, 1925

(T.T.A.B. 1987) (SPORTS CLUB for men's cologne and INTERNATIONAL

SPORTS CLUB for men's clothing not confusingly similar); Electronic Realty

Associates, Inc. v. Kayser-Roth Corp., 216 U.S.P.Q. 61, 64 (T.T.A.B. 1982)

(GOLDEN ERA for clothing and ERA for clothing not confusingly similar).

Likelihood of confusion? Not likely. The Applicant submits that the

marks are suitably different to allow the Applicant's mark to proceed.

II. THE GOODS AND CHANNELS OF TRADE ARE DISTINGUISHABLE

It is critical to look at the goods of the Applicant's mark and those of the

cited registration — and the anticipated channels of trade for those goods. The

cited registration deals with a variety of motors, transmissions and "gear

reducers" in Class 7. The motors and transmissions are designed for non-land

vehicles. The term "Airplanes" is mentioned twice. "Land vehicles" (albeit

limiting in the goods description) is mentioned four times.

The Applicant's mark? You probably cannot get any more limited in

terms of product identification, channels of trade, markets and consumer

recognition. The Applicant's mark is used in one place: the funeral and

cemetery industry. And this mark has been used in this highly-specialized

industry for over sixty years] No electrical power is needed. No motors. It is

quiet. It works by itself. It is in Class 8 not Class 7. None of the goods in the

cited registration are even related much less confusingly similar. Unlike the

cited registration which provides motors for airplanes which soar, the

Applicant's mark provides a quiet, gravity-powered device — which buries the

dead. Beneath the ground.

Where there are differences in the purpose or intended use of goods,

confusion is less likely. See, e.g., In re Hair Standards Goods, Inc., 17 U.S.P.Q.

2d 1335, 1336 (Fed. Cir. 1990) (difference between HAIR STANDARDS for hair

styling goods and HAIRSTANDARD for hair tonic sufficient to permit

registration of mark); G.H.Mumm & Cie v. Desnoes & Geddes, Ltd., 917 F. 2d

1292, 1295 (Fed. Cir. 1990) (no likelihood of confusion between RED STRIPE

for premium champagne and RED STRIPE for beer); In re Jacques Bemier, Inc.,

1 U.S.P.Q. 2d 1924, 1925 (T.T.A.B. 1987) (differences between SPORTS CLUB

for men's cologne and INTERNATIONAL SPORTS CLUB for men's clothing

sufficient to permit registration); In re Mars, Inc., 741 F. 2d 395, 396 (Fed. Cir.

1984) (CANYON for candy bars and CANYON for fresh citrus fruits not

confusing); In re Donnay International, Societe Anonyme, 31 U.S.P.Q.2d 1953

(T.T.A.B. 1994) (THE GHOST for soccer balls and GHOST for tennis, table

tennis, squash and badminton rackets and bags not confusingly similar).

We therefore ask the pivotal question — likelihood of confusion? Answer?

It is just not possible.

III. THE MARKS HAVE DIFFERENT COMMERCIAL IMPRESSIONS AND

MUST BE VIEWED AS A WHOLE

These two marks have completely different commercial impressions to

consumers. The universe of consumers for the Applicant's product is not just

limited — it is extremely limited. While likelihood of confusion should can be

based upon a similarity of letters, the overall commercial impression needs to

be factored in to any analysis. Here, the Examining Attorney engages in a

casual dissection of Applicant's mark (ignoring the cited marks' differences). In

Packard Press, Inc. v. Hewlett-Packard Co., 56 U.S.P.Q.2d 1351, 1354 (Fed. Cir.

2000), the Court of Appeals found that the Board improperly dissected the

marks PACKARD TECHNOLOGIES and HEWLETT-PACKARD by discussing

only the similarity of the shared word "Packard." The Board undertook no

analysis of the similarity of the PACKARD marks in their entirety.

In the present case, a finding of similarity based on the common use of

the word "Standard" without any consideration for the commercial impact of

the respective marks and the corresponding products is superficial and

erroneous. These are marks which are different and create dramatically

different commercial impressions in their respective (and quite distinguishable)

markets.

In the present case, a finding of similarity based on the common use of

one word without any consideration for the overall commercial impression of

the marks (as well as the goods and channels of trade) is misguided. The

Applicant submits that it is the differences that compel this application to

proceed.

IV. THE CITED REGISTRATION AND THE INSTANT APPLICATION CAN

COEXIST

What is especially "telling" is that the cited registration and the cited

application have coexisted for more than half a century. Quite peacefully in

fact.

This fact of coexistence should be given j u s t a bit of added weight given

the dilution of the word "Standard" in PTO records. There are no fewer than

6

3,500 "Standard" trademarks in PTO records. (See Exhibit A). In recent years,

37 "Standard" applications have been filed in Class 8 alone! (See Exhibit B).

The sheer deluge of "Standard" trademarks in PTO records suggests that one

more "Standard" trademark is not going to suddenly create confusion —

especially when it is as distinguishable as it is (and in a class different from the

cited registration). A Boolean search of "Standard" with "casket" and/or

"cemetery" as the goods reveals one mark — the Applicant's.

Given the abundance of other "Standard" trademarks in PTO records,

this metric — the lone "Standard" trademark used for the "casket" or "cemetery"

industry is quite instructive.

It would thus seem that a second — more accurate — test of likelihood of

confusion would be to examine whether goods or services are offered — or

focused — in the same industry. Will the goods of the cited registration and the

Applicant's mark ever "cross paths" in commerce? If you have a gravitypowered

casket lowering device destined for use only in cemeteries, one would

be hard-pressed to find that there was potential confusion with airplane

motors, elevator motors or planetary gear motors.

Thus the Applicant respectfully asks that these significant — and pivotal

~ differences be considered when viewing the instant application and the cited

mark.

V. INFORMALITIES

A. Identification of Services — The Applicant would agree to modify

its identification of services to the following:

7

Class 8 — "Gravity powered casket-lowering device for use in cemeteries

and other places of interment."

B. Specimens — The Applicant has attached a substitute specimen (a

label for the Applicant's product) which was in use at least as early as the filing

date of this application. An appropriate declaration is filed with this specimen.

C. 2(f) Claim — The Applicant will agree to withdraw the 2(f) claim per

the Examiner's request.

VI. CONCLUSION

For the reasons set forth above, Applicant respectfully requests approval

of its application for publication.

Date: May 3 1 , 2012 Respectfully submitted,

FRIGID FLUID COMPANY

Scott W. Petersen

Holland 86 Knight LLP

131 South Dearborn, 30t h Floor

Chicago, Illinois 60603

Telephone 312.263.3600

Direct Dial 312.578.6689

Fax 312.578.6666

scott.petersen(a),hklaw.com

Attorneys for Applicant

8

CERTIFICATE OF FILING

I hereby certify that on May 31, 2012 the above Response to Office

Action dated February 7, 2012, is electronically filed with the United States

Patent & Trademark Office.

Scott W. Petersen

Attorney for Applicant

#665174 v82

EVIDENCE
Evidence in the nature of Evidence consists of the origina Response to Office Action dated February 7, 2012, plus Exhibits A and B (PTO records) has been attached.
Original PDF file:
evi_661954926-150554843_._STANDARD_-_Response_to_Office_Action.pdf
Converted PDF file(s) ( 15 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 007 for Casket lowering device for use in cemeteries and other places of interment

Applicant hereby adds the following class of goods/services to the application:
New: Class 008 (Original Class: 007 ) for Gravity powered casket lowering device for use in cemeteries and other places of interment
Filing Basis: Section 1(a), Use in Commerce: The mark was first used at least as early as 02/28/1949 and first used in commerce at least as early as 02/28/1949 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 008 . The specimen(s) submitted consists of This is a product spec (specification) sheet which accompanies product purchased by consumers .
"The substitute (or new, or originally submitted, 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, or originally submitted, 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]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPU0-661954926-150554843_._Standard_-_Product_Spec_Sheet.pdf
Converted PDF file(s) ( 5 pages)
Specimen File1
Specimen File2
Specimen File3
Specimen File4
Specimen File5

ADDITIONAL STATEMENTS
Miscellaneous Statement
The Applicant will agree to withdraw the 2(f) claim as requested by the Examiner.


SIGNATURE(S)
Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant has had 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. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii); and/or the applicant has had a bona fide intention to exercise legitimate control over the use of the mark in commerce by its members. 37 C.F. R. Sec. 2.44. If the applicant is seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods and/or services listed in the application as of the application filing date or as of the date of any submitted allegation of use. 37 C.F.R. Secs. 2.34(a)(1)(i); and/or the applicant has exercised legitimate control over the use of the mark in commerce by its members. 37 C.F.R. Sec. 2.44. The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. Section 1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true.

Signature: /Scott W. Petersen/      Date: 05/31/2012
Signatory's Name: Scott W. Petersen
Signatory's Position: Attorney of record, IL bar member
Signatory's Phone Number: 312.578.6689


Response Signature
Signature: /Scott W. Petersen/     Date: 05/31/2012
Signatory's Name: Scott W. Petersen
Signatory's Position: Attorney of record, IL bar member

Signatory's Phone Number: 312.578.6689

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: 85446671
Internet Transmission Date: Thu May 31 15:26:00 EDT 2012
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20120531152600971
958-85446671-490c4ac30716197d329db3c41ee
94e22-N/A-N/A-20120531150554843637