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. 86391079 SENTINEL(Standard Characters, see http://uspto.report/TM/86391079/mark.png) has been amended as follows:

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

STATUS OF THE APPLICATION Applicant's Mark and Services: Applicant's mark is directed to SENTINEL for the following goods (as amended): Agricultural liquid propane and natural gas space heaters and structural parts therefore (International Class 011). Section 2(d) Refusal - Likelihood of Confusion: The application is newly rejected under Trademark Act Section 2(d), 15 U.S.C. §1052(d) in view of U.S. Registration No. 2,130,915 to SENTINEL for the following goods: commercial heating and cooling ventilating unit (International Class 011). The Trademark Examining Attorney rejects Applicant's trademark based on the following: similarity of the marks, similarity and nature of the goods, and similarity of the trade channels of the goods. The Trademark Examining Attorney alleges that Applicant's goods are "closely related to the goods in the cited registration, namely, commercial heating and cooling ventilation units. Applicant disagrees with this allegation for the reasons specified below. ARGUMENTS In any likelihood of confusion analysis, the key although not exclusive considerations are the similarities of the marks and the similarities of the goods (services). Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) ("The fundamental inquiry mandated by Section 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks."). Applicant submits that the distinctions between Applicant's mark and goods and Registrant's mark and goods outweigh the similarities. The Goods are Distinct: Applicant's goods are directed to a different client base from Registrant. As opposed to Registrant, Applicant's goods are agricultural in nature, specifically directed to agricultural heaters for use in agricultural buildings, namely buildings used to heat animals such as chickens, pigs and the like. In contrast, the Registrant's goods associated with the SENTINEL mark are not heaters, but rather a ventilator/forced air unit which essentially blows air into a building. While Registrant's goods may be used in conjunction with a heater, Registrant's goods are not a heating unit. Reference is made to the attachment describing Registrant's SENTINEL product. It is readily apparent that the Registrant goods are marketed to schools to improve the indoor air quality of their classrooms. It is designed to operate in conjunction with a school's central chiller/boiler plant and is specifically designed to provide the proper amount of fresh air ventilation and to enable schools to minimize their energy consumption. The Reasonably Prudent Purchaser of these Services is a Discriminatory or Sophisticated Purchaser: Both Applicant's and Registrant's goods are specialized goods. Purchasers of these goods have a higher sophistication level and would exercise greater care in selecting the goods, thus mitigating their likelihood of confusion between the two marks. Certain buyers are more knowledgeable and exercise more care than others. Typically, professional buyers exercise more care than retail consumers. Further, the more expensive the product, the more care the buyer will use. One can Expect More Careful Inquiry in Purchasers of Expensive Goods: The price level of the goods or services is an important factor in determining the amount of care the reasonably prudent buyer will use. If the goods are relatively expensive, more care is taken and buyers are less likely to be confused as to source of affiliation. See McCarthy on Trademarks and Unfair Competition, Vol. 4, Sec. 23:95, 2014, citing McGregor-Doniger, Inc. v. Drizzle, 599 F.2d 1126, 1137, 202 U.S.P.Q. 81, 92 (2d Cir. 1979); Checkpoint Systems, Inc. v. Check Point Software Technologies, Inc., 269 F.3d 270, 284, 60 U.S.P.Q.2d 1609 (3d Cir. 2001) ("Obviously, the price level of the goods or services is an important factor in determining the amount of care the reasonably prudent buyer will use."); 7-Eleven, Inc. V. Lawrence I. Wechsler, 83 U.S.P.Q.2d 1715, 2007 WL 1431084 (T.T.A.B. 2007) ("As with the standard of the reasonable person in negligence cases, the discernment exercised by a reasonably prudent purchaser varies with the circumstances. One can expect, for example, more careful inquiry in purchasers of expensive rather than inexpensive items." (quoting Restatement)); see also Restatement Third, Unfair Competition § 20, comment h ("The reasonably prudent purchaser often invoked in determining likelihood of confusion is the ordinary purchaser of the goods or services buying with ordinary care. As with the standard of the reasonable person in negligence cases, the discernment exercised by a reasonably prudent purchaser varies with the circumstances. One can expect, for example, more careful inquiry in purchasers of expensive rather than inexpensive items."). The reasonably prudent buyer is assumed to take more care in purchasing "expensive" items, which she buys more infrequently, than in buying every day, relatively inexpensive items. Weiss Assoc., Inc. v. HRL Assoc., Inc., 902 F.2d 1546, 14 U.S.P.Q.2d 1840 (Fed. Cir. 1990) ("In making purchasing decisions regarding 'expensive' goods, the reasonably prudent person standard is elevated to the standard of the 'discriminating purchaser.'"). The goods at issue are consistent with other items that have been classified as "expensive goods" in which a greater degree of care is exercised by the consumer. Some examples of items that have been classified as "expensive goods" in which a higher degree of care is exercised are: 183 Air Conditioning Units and Furnaces Syncromatic Air Conditioning Corp. v. Williams Oil-O-Matic Heating Corp., 109 F.2d 784, 44 U.S.P.Q. 598 (C.C.P.A. 1940) ("In this case the goods of the particular parties are substantially identical, but they are relatively expensive and undoubtedly their purchase would be made only after a careful investigation of different apparatus for air conditioning systems."); L. J. Mueller Furnace Co. v. United Conditioning Corp., 222 F.2d 755, 757-58, 106 U.S.P.Q. 112 (C.C.P.A. 1955)(finding that consumers in the market for furnaces are discriminating purchasers). 183 Home Septic Tank Systems Jet, Inc. v. Sewage Aeration Systems, 165 F.3d 419, 49 U.S.P.Q.2d 1355 (6th Cir. 1999) ("[T]he high cost of either product-and of installing a septic system in general-are likely to induce great care even in the nonexpert homeowner."). 183 Expensive Vehicles AM General Corp. v. DaimlerChrysler Corp., 311 F.3d 796, 65 U.S.P.Q.2d 1001 (7th Cir. 2002) (finding that "consumers who buy or lease a vehicle that sells for more than $16,000.00… are likely to use a very high degree of care."); Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 U.S.P.Q.2d 1917, 2006 WL 173463 (T.T.A.B. 2006), appeal dismissed, 2006 WL 1876836 (Fed. Cir. 2006) ("[I]t is clear that automobiles are expensive and would only be purchased after careful consideration, thereby reducing the risk of confusion."). 183 Electronic Testing Apparatus Magnaflux Corp. v. Sonoflux Corp., 231 F.2d 669, 109 U.S.P.Q. 313 (C.C.P.A. 1956) (finding the electrical testing apparatuses "are expensive and are sold to discriminating purchasers" and thus not confusingly similar.) Professional Buyers Are Less Likely To Be Confused Than the Ordinary Consumer: Where the relevant buyer class is composed of professional or commercial purchasers, it is reasonable to set a higher standard of care than exists for consumers. Such professional buyers are less likely to be confused than the ordinary consumer. See Astra Pharmaceutical Products, Inc. v. Beckman Instruments, Inc., 718 F.2d 1201, 220 U.S.P.Q. 786 (1st Cir. 1983) (finding no likelihood of confusion between ASTRA local anesthetic preparation versus ASTRA computerized blood analyzer machine based on the "most critical factor" being the sophistication of the buyers of the products); see also Oreck Corp. v. U.S. Floor Systems, Inc., 803 F.2d 166, 174, 231 U.S.P.Q. 634 (5th Cir. 1986) (finding large-size steam carpet cleaners were sold to purchasers who "are virtually certain to be informed, deliberative buyers" and who are not easily confused.) The purchasers of the goods at issue have a higher sophistication level and would exercise greater care in selecting a service, mitigating any likelihood of confusion between the marks. The purchasers of the goods at issue are consistent with other purchasers that have been classified as "professional" or "sophisticated" buyers. Some examples in which a higher degree of care was exercised by a "professional buyer, " which would include both the Registrant's and the Applicant's customers, include: 183 Building supplies selected by architects: Republic Steel Corp. v. M.P.H. Mfg. Corp., 312 F.2d 940, 136 U.S.P.Q. 447 (C.C.P.A. 1963) (finding the goods are "usually purchased with care by technically trained and/or informed persons" and thus holding no likelihood of confusion); Sunbeam Lighting Co. v. Sunbeam Corp., 183 F.2d 969, 86 U.S.P.Q. 240 (9th Cir. 1950), cert. denied, 340 U.S. 920, 95 L. Ed. 665, 71 S. Ct. 357, 88 U.S.P.Q. 569 (1951) (finding architects and lighting engineers are the typical purchasers of supplies and there is no likelihood of confusion); Merchant & Evans, Inc. v. Roosevelt Bldg. Products Co., 963 F.2d 628, 22 U.S.P.Q.2d 1730, 1737 (3d Cir. 1992) (finding the sophistication of architects and contractors contributes to no likelihood of confusion as to source of roofing materials). 183 Electrical equipment bought by large electrical contractors: GB Elec. v. Thomas & Betts Corp., 37 U.S.P.Q.2d 1177, 1995 WL 795660 (E.D. Wis. 1995) (finding that contractors are sophisticated purchasers of electrical products). 183 Users of welding equipment in heavy industries: Welding Services, Inc. v. Forman, 509 F.3d 1351, 85 U.S.P.Q.2d 1233 (11th Cir. 2007) (purchasers of maintenance services for large scale welding equipment "must be sophisticated consumers" who are less likely to be confused. No infringement was found.). The Goods Travel in Unrelated Trade Channels: The consideration of how and to whom these goods are sold is relevant to the issue of a buyer's likelihood of confusion. Thus, it is relevant to evaluate whether Applicant's and Registrant's goods are actually sold in the same channels of trade. If goods are sold to discrete groups, then likelihood of confusion is unlikely. See, for example, the following: 183 Pep Boys-Manny, Moe and Jack v. Edwin F. Guth Co., 39 C.C.P.A. 1015, 197 F.2d 527, 94 U.S.P.Q. 158 (1952) (finding lighting fixtures and storage batteries sold in different channels of trade); 183 In re The W.W. Henry Company, L.P., 82 U.S.P.Q.2d 1213, 2007 WL 186661 (T.T.A.B. 2007) (finding no conflict between cited PATCH 'N GO for chemical filler to repair polyolefin sold to plastic manufacturers and applicant's PATCH & GO for cement patch for drywall, concrete and the like, sold to do-it-yourselfers and contractors in hardware stores. The two products would be sold "to different classes of purchasers through different channels of trade."). 183 Information Clearing House, Inc. v. Find Magazine, 492 F. Supp. 147, 209 U.S.P.Q. 936 (S.D. N.Y. 1980) (finding similar FIND titles on magazines directed to specialized business clients and on consumer family magazine held not likely to cause confusion); 183 Sunenblick v. Harrell, 895 F. Supp. 616, 629, 38 U.S.P.Q.2d 1716 (S.D. N.Y. 1995), aff'd without opinion, 101 F.3d 684 (2d Cir. 1996) (finding no likelihood of confusion between producers of musical recordings both using the UPTOWN label because plaintiff, a small producer selling recordings of jazz musicians, distributed to an audience completely distinct from those who were the target of defendant's large scale sales of "rap" and "hip- hop" music.); and 183 Clayton Mark & Co. v. Westinghouse Elec. Corp., 53 C.C.P.A. 951, 356 F.2d 943, 148 U.S.P.Q. 672 (1966) (finding no confusion likely between similar marks used on electrical conduit and industrial circuit breakers sold in different channels for different uses). Applicant submits that Applicant and Registrant are different classes of purchasers as described above. Even if goods are marketed to and used by a common field, confusion is unlikely. For example, the Trademark Board held that applicant's VIGILANZ computer monitoring system used by hospital pharmacies to analyze lab results for adverse drug interactions was not likely to cause confusion with Opposer's VIGILANCE heart monitor and software used in critical care settings. The two products, while both within the medical care field and utilized within a single hospital, were used by different personnel. See Edwards Lifesciences Corporation v. VigiLanz Corporation, 94 U.S.P.Q.2d 1399, 2010 WL 1514315 (T.T.A.B. 2010) ("[T]he same people do not encounter the marks and products; or, if they did, they would do so only in the context of a lengthy sales process leaving no room for misunderstanding about the sources of the respective products."). Applicant's and Registrant's Marks have been in Concurrent Use for at least Ten Years Without any Confusion: The Trademark Examining Attorney is correct in that the overriding concern is to prevent buyer confusion as the source of the goods and to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. However and as argued above, Applicant's goods and Registrant's goods are in different channels of trade. A sophisticated purchaser, which the customers of both the Applicant and the Registrant must certainly be, would not confuse the goods. Quite simply, a builder of schools and the like would not be shopping in the same venue as a farmer or person in the agriculture business. Further, Applicant's goods have been sold in public since early 2005, approximately 10 years, without any indication of confusion by the public with respect to Registrant's mark. The coexistence of two marks for this length of time without confusion is evidence supporting a finding of no likely confusion (Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 588 F.3d 97, 117, 92 U.S.P.Q.2d 1769, 2d Cir. 2009; Aktiebolaget Electrolux v. Armatron Intern., Inc., 999 F.2d 1, 4, 27 U.S.P.Q.2d 1460, 1st Cir. 1993). Conclusion: Registrant's customer base is different from Applicant. Registrant provides a ventilation system, and not a heating system, primarily directed to schools. On the other hand, Applicant's goods are specifically directed to heating agricultural buildings. As stated in NEC Electronics (supra at 865), "the nature of the products they sell, the different individuals they deal with, the sophistication of prospective customers, and the nature of their self- promotion all weigh against a finding that potential purchasers are likely to confuse…" Finally, the relative sophistication of the users/purchasers of these two products shows that the customer base, and therefore the channel of trade, is different. The courts have made it abundantly clear that in any likelihood of confusion analysis, purchaser "sophistication is important and often dispositive because sophisticated consumers may be expected to exercise greater care." Electronic Design & Sales v. Electronic Data Systems, 954 F.2d 713, 21 USPQ2d 1388, 1392 (Fed. Cir.1992). On the basis of the distinctions in the overall appearance of the marks, when viewed in connection with the proffered goods, there is no likelihood of confusion. Applicant therefore submits that its proposed mark has been appropriately distinguished from Registrant's mark and should now be allowed and published for opposition. Early notification of the same is earnestly solicited. Should the Trademark Examining Attorney have any questions of the Applicant, the Trademark Examining Attorney is encouraged to contact the undersigned attorney.

EVIDENCE
Evidence in the nature of PDF document describing Registrant's SENTINEL product which is referenced in Applicant's response has been attached.
Original PDF file:
evi_6617026184-20150303103533763767_._VERTICAL_UNIT_VENTILATOR.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 011 for Agricultural space heaters and parts therefore
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 01/31/2005 and first used in commerce at least as early as 03/31/2005 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Agricultural space heaters and parts therefore; Agricultural liquid propane and natural space heaters and structural parts thereforeClass 011 for Agricultural liquid propane and natural space heaters and structural parts therefore
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 01/31/2005 and first used in commerce at least as early as 03/31/2005 , and is now in use in such commerce.
SIGNATURE(S)
Response Signature
Signature: /CSSara/     Date: 03/03/2015
Signatory's Name: Charles S. Sara
Signatory's Position: Attorney of record, Wisconsin State Bar

Signatory's Phone Number: 608-395-6784

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: 86391079
Internet Transmission Date: Tue Mar 03 10:46:38 EST 2015
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2015030310463818
5604-86391079-530472cb12aba5f78ae82af987
1e7391df07f24ed972e8af77ff4a82cf5ec3eae2
-N/A-N/A-20150303103533763767