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. 85805437 ENDURA(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85805437) has been amended as follows:

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

The Applicant has reviewed the Supplemental Office Action indicating a refusal based on a likelihood of confusion with US Registration No. 3,894,808.  The Applicant respectfully disagrees for the following reasons. 

In the seminal case involving §2(d),In re E. I. du Pont de Nemours & Co., the U.S. Court of Customs and Patent Appeals discussed the factors relevant to a determination of likelihood of confusion. 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). Furthermore, the significance of a particular factor may differ from case to case. See du Pont, 476 F.2d at 1361-62, 177 USPQ at 567-68; Dixie Rests., 105 F.3d at 1406-07, 41 USPQ2d at 1533 (noting that “any one of the factors may control a particular case”). TMEP 1207.01.  While the similarity of the marks and the goods described in the application and registration are given key consideration, additional factors must be considered if there is pertinent evidence of record.  In this case, in addition to the differences in the marks and the goods, the Applicant submits that the coexistence of the two marks for several years without any instances of actual confusion is a relevant factor for consideration in this application. See, MPEP 1207.01(d)(ii).

A.    DIFFERENCES IN THE MARKS AND THE GOODS TO WHICH THEY ARE APPLIED

The applied for ENDURA trademark is different from the registered mark ENDURANCE in terms of its appearance, sound, and meaning.  In terms of appearance, the registered mark is a complete word that is readily recognizable.  In contrast, ENDURA is not an actual word and has no readily recognizable meaning.   ENDURA is shorter than ENDURANCE and lacks the letters “nce” giving it a different appearance.  Likewise, in terms of sound, the last three letters of the ENDURANCE mark give it a significantly different pronunciation.  These letters provide a sibilant sound as opposed to the vowel sound created by the letter “A” at the end of ENDURA.  Finally, the meaning of the marks is different.  The defnition of ENDURANCE is the ability to do something difficult for a long period of time or a quality of continuing for a long time period.  www.merriam-webster.com.  ENDURA, on the other hand, has no recognizable meaning.  These differences would provide distinctions in the eyes, ears and minds of a consumer considering the goods associated with each mark. 

In that regard, the also provide a basis for distinction.  The goods’ descriptions of the ENDURA and ENDURANCE marks indicate that the electrodes are used for distinct purposes.  In the case of ENDURANCE, the electrodes are used for welding while in the applied for mark, the electrodes are used for plasma cutting.

B.     COEXISTENCE OF THE MARKS FOR SEVERAL YEARS

The coexistence of marks in the marketplace for a number of years without any instances of actual confusion is relevant evidence supporting a lack of a likelihood of confusion.  Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482, 490 (1^st Cir. 1981)( “absent evidence of actual confusion, when the marks have been in the market, side-byside, for a substantial period of time, there is a presumption that there is little likelihood of confusion.”).  In Pignons, the court recognized that four years was a substantial period of time. Id. 

Here, Select-Arc registered its ENDURANCE mark in 2010 and indicated a date of first use on August 31, 2009 in its registration.  The Applicant and its predecessor have been using the ENDURA mark for plasma cutting electrodes well before Select-Arc began using its mark. Decl. J. Winn.  The Applicant has used the mark on sales sheets (Decl. J. Winn, Ex. A) and on product labels (Decl. J. Winn, Ex. B).  Based on Select-Arc’s registration, the marks have coexisted in the market place for over four years.  Customers purchasing Select-Arc or the Applicant’s products exercise considerable care in purchasing the respective products.  A copy of Select-Arc’s catalog is attached.  As can be seen, Select-Arc offers over 100 different welding electrodes based on the type of weld process, the materials being joined and the desired weld characteristics. The entry for the ENDURANCE electrode states:

Select-Arc Catalog, p. 15.  Likewise, as can be seen in Ex. A, the Applicant’s electrodes take into consideration the welding process and amperage to be used during cutting.  Given the specialized purpose of each electrode and the factors that go into a purchase decision, a consumer would exercise greater than ordinary care in purchasing the respective goods associated with each mark.

EVIDENCE
Evidence in the nature of Complete response, photocopy of product catalog, and signed declaration with exhibits. has been attached.
Original PDF file:
evi_38101576-103736160_._master_select_arc_catalog.pdf
Converted PDF file(s) ( 100 pages)
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Original PDF file:
evi_38101576-103736160_._201990_06090_Response.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
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Original PDF file:
evi_38101576-124329660_._Declaration_of_Jackie_Winn.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
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ADDITIONAL STATEMENTS
Miscellaneous Statement
Considering this level of care, the differences in the goods, the differences in the marks and the coexistence of the two marks in the marketplace for over four years without confusion, the relevant du Pont factors weigh against a likelihood of confusion. In view of this, the Applicant respectfully requests withdrawal of the Section 2(d) refusal based on a likelihood of confusion. The Applicant submits that the application is in condition for publication and respectfully requests notice of the same.


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: /Shannon V. McCue/      Date: 09/26/2013
Signatory's Name: Shannon V. McCue
Signatory's Position: Attorney for Applicant
Signatory's Phone Number: 330-864-5550


Response Signature
Signature: /Shannon V. McCue/     Date: 09/26/2013
Signatory's Name: Shannon V. McCue
Signatory's Position: Attorney for Applicant

Signatory's Phone Number: 330-864-5550

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: 85805437
Internet Transmission Date: Thu Sep 26 13:47:25 EDT 2013
TEAS Stamp: USPTO/ROA-XX.XXX.XX.X-201309261347252455
53-85805437-50083b7d0ccdc112281423757dbc
df86b398e51a4245329abe69c89e936a7c6e8-N/
A-N/A-20130926124329660847