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. 85549175 REDLINE(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85549175) has been amended as follows:

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

There is No Likelihood of Confusion

 

The Examining Attorney’s Section 2(d) refusal should be withdrawn.  The Applicant goods are expressly limited to products for industrial use.  This distinguishes them from the products sold by the Registrant. 

 

For the products to be related, they must be “marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source.”  This is true, even if the marks are identical.  TMEP § 1207.01(a)(i); See, e.g., Shen Manufacturing Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350 (Fed. Cir. 2004) (cooking classes and kitchen textiles not related); Local Trademarks, Inc. v. Handy Boys Inc., 16 USPQ2d 1156 (TTAB 1990) (LITTLE PLUMBER for liquid drain opener held not confusingly similar to LITTLE PLUMBER and design for advertising services, namely the formulation and preparation of advertising copy and literature in the plumbing field); Quartz Radiation Corp. v. Comm/Scope Co., 1 USPQ2d 1668 (TTAB 1986) (QR for coaxial cable held not confusingly similar to QR for various products (e.g., lamps, tubes) related to the photocopying field).

 

The Examining Attorney found the products to be related but offered no explanation for why the Applicant’s industrial products are related to the Registrant’s consumer-oriented products.  Because the Applicant’s products are for industrial use, the same consumers would not encounter the Applicant’s goods and the Registrant’s goods under the same circumstances.  Thus, the products are not related.

 

The Applicant respectfully requests that the Section 2(d) refusal be withdrawn and this application be approved for publication.

 

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 004 for COOLANTS AND CUTTING OILS FOR INDUSTRIAL USE
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 08/31/2008 and first used in commerce at least as early as 08/31/2008 , and is now in use in such commerce.

Proposed:
Tracked Text Description: COOLANTS AND CUTTING OILS FOR INDUSTRIAL USE; CUTTING OILS FOR INDUSTRIAL USEClass 004 for CUTTING OILS FOR INDUSTRIAL USE
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 08/31/2008 and first used in commerce at least as early as 08/31/2008 , and is now in use in such commerce.
SIGNATURE(S)
Response Signature
Signature: /Garrett Weber/     Date: 12/10/2012
Signatory's Name: Garrett Weber
Signatory's Position: counsel

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: 85549175
Internet Transmission Date: Mon Dec 10 17:20:06 EST 2012
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XXX-201212101720061
67501-85549175-4908ea64a6615ea7385d54670
9833ecfda7-N/A-N/A-20121210171717311692