| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 86425932 |
| LAW OFFICE ASSIGNED | LAW OFFICE 118 |
| MARK SECTION | |
| MARK FILE NAME | http://uspto.report/TM/86425932/mark.png |
| LITERAL ELEMENT | PRONTO |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| COLOR(S) CLAIMED (If applicable) |
Color is not claimed as a feature of the mark. |
| DESCRIPTION OF THE MARK (and Color Location, if applicable) |
The mark consists of PRONTO. |
| ARGUMENT(S) | |
|
The Examining Attorney has refused registration of the subject mark, alleging a likelihood of confusion between the stylized mark as used in connection with “remote controls, control panels and smart device software applications for controlling audio sets, television sets, video recorders, DVD players and air conditioners; electronic computer tablets for controlling audio sets, television sets, video recorders, DVD players and air conditioners,’ in Class 9 and seven (7) different registrations which are owned by six (6) different entities:
Applicant respectfully submits that no likelihood of confusion exists, in light of the differences in the marks and the goods on which they are used, and requests that the Examining Attorney withdraw the refusal to register for the reasons set forth below.
With regard to the two registrations owned by the National Pronto Association, Applicant respectfully submits that Applicant’s amendments to the identification of goods make it clear that no likelihood of confusion exists between the two parties marks. In addition to the differences in the marks, National Pronto Association’s marks are used on very specific products in the automotive industry, namely, automotive batteries, wiring, engine controls, sensors and other items that are specifically used for vehicles. By contrast, Applicant’s mark will be used on remote controls, control panels and smart device software applications used in the home to control audio sets, television sets, video recorders, and the like. The parties’ products will be found in very different channels of trade, and will be marketed towards different consumers. If goods and services are not 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, then even if the marks are identical (and they are not), confusion is not likely. Local Trademarks, Inc. v. Handyboys, Inc., 16 USPQ 2d 1156 (TTAB 1990); Quartz Radiation Corp. v. Comm/Scope Co., 1 USPQ 2d 1668 (TTAB 1986).
With regard to the mark PRONTOFLOW, Applicant notes that, in making the determination as to whether there is a likelihood of confusion or not, important factors to be considered are the similarity or dissimilarity of the respective marks as to appearance, sound, commercial impression and connotation. Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983). Applicant seeks registration of the stylized mark . By contrast, the cited mark is PRONTOFLOW. A cursory review of the cited mark immediately reveals the incorporation of the term FLOW in the mark, which has a specific commercial impression as applied to Degree’s thermal management systems and component which are used in industrial and commercial applications. The two marks appear completely different and create completely different commercial impressions. The goods are also quite different. Applicant’s mark will be used on home remote controls and related goods for users’ television sets, video recorders and the like. The goods are unrelated, and they will not be marketed to the same consumers or found in the same channels of trade. Applicant has amended its identification of goods to clarify the nature of its products, and respectfully submits that the differences in the goods remove any chance of a likelihood of confusion. See In re Sears Roebuck and Company, 2 USPQ 2d 1312 (TTAB 1987).
Applicant’s mark is also unlikely to be confused with the mark PRONTO! as owned by Stalker Software. Stalker Software offers communications software for use in email, calendaring, contacts, chat and the like. See http://www.communigate.com/main/pronto/. The registration is clear on its face that Stalker Software uses the mark for software for communications purposes. By contrast, Applicant’s products are remote controls and related products for controlling television sets, video recorders, DVD players, and the like. The products and their functions are quite different and will be found in different channels of trade, so that consumers are unlikely to encounter the marks in any situations in which they are likely to be confused into believing that the goods originate from the same source.
The citation of WIMBA’s registration for Pronto should also be withdrawn. It is well settled that the issue of likelihood of confusion between marks must be determined on the basis of the goods or services as they are identified in the application and the registration. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); Paula Payne Products Co. v. Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76 (CCPA 1973). WIMBA uses its mark in connection with “children's educational software; Computer software to enhance the audio-visual capabilities of multimedia applications, namely, for the integration of text, audio, graphics, still images and moving pictures.” These products are significantly different from Applicant’s remote control products, and are unlikely to be found in the same channels of trade or marketed towards the same consumers. As a result, confusion is highly unlikely.
With regard to the mark S2 pronto, Applicant respectfully submits that there are significant differences between the cited mark S2 pronto, in which the first and arguably most dominant term is S2, and Applicant’s mark. Moreover, the mark S2 pronto is registered for computer hardware and software for use in computer security, which is unrelated to Applicant’s home remote control products for controlling audio sets, television sets, video recorders, etc. The two parties’ products will not be marketing or sold to the same consumers or in the same channels of trade, and so they are unlikely to be confused, especially given the differences in the marks.
Finally, the registration for PRONTO owned by Quanta Computer Inc. covers very specific computer networking apparatus such as routers, bridges, etc. and networking storage systems with multiple removable RAID cartridges. Applicant also seeks to register its mark for very specific – but very different --products in the nature of home remote controls for televisions, etc. which are unlikely to be confused with those products sold by Quanta Computer Inc.
It is quite clear from the Office Action alone, in which the Examining Attorney cited seven (7) different registrations owned by six (6) different entities, that the wording in the registrants’ marks does not warrant a broad ambit of protection, and certainly is not strong enough that the public will be confused. Moreover, there are a number of other registrations for marks incorporating the term “PRONTO” for goods in Class 9 such that consumers are accustomed to distinguishing among them based on differences in the marks and goods, and would not likely be confused by Applicant’s mark.
Accordingly, Applicant respectfully requests that the Examining Attorney withdraw her refusal to register, and approve the mark for publication in the Official Gazette at her earliest convenience. If the Examining Attorney has any questions, she is urged to telephone the undersigned attorney. |
|
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 009 |
| DESCRIPTION | |
| REMOTE CONTROLS, CONTROL PANELS, CONTROL HUBS, ELECTRONIC TABLETS, WIRELESS SENSORS AND SMART DEVICE APPS ALL FOR AUDIO SETS, TELEVISION SETS, VIDEO RECORDERS, DVD and BLUERAY SETS, TELEVISIONS, AIRCONDITIONERS, FOR WIRELESS CONNECTING THE INTERNET, FOR AUDIO/VIDEO/PHOTO CONTENT NAVIGATION, FOR HOME AUTOMATION CONTROL | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 009 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Remote controls, control panels and smart device software applications for controlling audio sets, television sets, video recorders, DVD players and air conditioners; electronic computer tablets for controlling audio sets, television sets, video recorders, DVD players and air conditioners | |
| FILING BASIS | Section 1(b) |
| ADDITIONAL STATEMENTS SECTION | |
| DESCRIPTION OF THE MARK (and Color Location, if applicable) |
The mark consists of the stylized wording "PRONTO" in which the top of the "O" is displayed as three curved lines and the bottom of the "O" is solid. |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Lori S. Kozak/ |
| SIGNATORY'S NAME | Lori S. Kozak |
| SIGNATORY'S POSITION | Attorney of Record, California Bar Member |
| SIGNATORY'S PHONE NUMBER | 310.207.3800 |
| DATE SIGNED | 05/18/2015 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon May 18 19:15:17 EDT 2015 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.XXX-2 0150518191517282286-86425 932-5307343d78f9419b86411 68114924f917d68199d1f693a 501e34f0720e1ed-N/A-N/A-2 0150518190829532835 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
The Examining Attorney has refused registration of the subject mark, alleging a likelihood of confusion between the stylized mark as used in connection with “remote controls, control panels and smart device software applications for controlling audio sets, television sets, video recorders, DVD players and air conditioners; electronic computer tablets for controlling audio sets, television sets, video recorders, DVD players and air conditioners,’ in Class 9 and seven (7) different registrations which are owned by six (6) different entities:
PRONTO THE SMART CHOICE FOR AUTO PARTS & Design for “automotive batteries; battery terminals, namely, solderless terminals; automotive electronic temperature controls, electrical wires and cables for automotive use; automotive cruise control transducers; temperature control products, namely, engine thermostats; solderless battery terminals; vehicle engine parts, namely, thermostats; land vehicle engine control systems, comprised of spark plug wires, electronic control modules, oxygen sensors, temperature sensors, EGR valves, emission control modules and parts therefore, all sold as a unit; mass air flow sensors” in Class 9, and goods in other classes, all relating to automobiles and vehicles, owned by National Pronto Association;
PRONTO & Design for “automotive batteries; battery terminals, namely, solderless terminals; automotive electronic temperature controls, electrical wires and cables for automotive use; automotive cruise control transducers; temperature control products, namely, engine thermostats; solderless battery terminals; vehicle engine parts, namely, thermostats; land vehicle engine control systems, comprised of electronic control modules, temperature sensors, EGR valves, emission control modules and parts therefore, all sold as a unit; mass air flow sensors” in Class 9, and goods in other classes, all relating to automobiles and vehicles, owned by National Pronto Association;
PRONTOFLOW for “thermal management systems and components for use with electronic goods, namely, air flow sensors, thermal controllers, flow trays, and fan and blower assemblies” in Class 9, owned by Degree Controls, Inc.;
PRONTO! (Stylized) for “software for communicating among electronic devices; software for communicating with electronic devices” in Class 9, owned by Stalker Software, Inc.;
Pronto for “children's educational software; Computer software to enhance the audio-visual capabilities of multimedia applications, namely, for the integration of text, audio, graphics, still images and moving pictures” in Class 9, owned by WIMBA, Inc.;
S2 pronto for “computer hardware and software for use in computer security, namely, computer hardware and software for controlling access to facilities and areas, and for use in security monitoring, management of users and their access privileges, identity management and photo ID, video surveillance and management, and environmental monitoring” in Class 9, owned by S2 Security Corp.;
PRONTO for “Computer networking apparatus, namely, routers, bridges, switches, hubs, multilayer switches, Ethernet switches, enterprise switches, protocol converters, bridge routers, network wireless cards, LAN cards for connection of computer devices to computer networks, gateways routers in the nature of computer control hardware, networking servers, networking storages in the nature of computer backup and storage systems with multiple removable RAID cartridges” in Class 9, owned by Quanta Computer Inc.
Applicant respectfully submits that no likelihood of confusion exists, in light of the differences in the marks and the goods on which they are used, and requests that the Examining Attorney withdraw the refusal to register for the reasons set forth below.
With regard to the two registrations owned by the National Pronto Association, Applicant respectfully submits that Applicant’s amendments to the identification of goods make it clear that no likelihood of confusion exists between the two parties marks. In addition to the differences in the marks, National Pronto Association’s marks are used on very specific products in the automotive industry, namely, automotive batteries, wiring, engine controls, sensors and other items that are specifically used for vehicles. By contrast, Applicant’s mark will be used on remote controls, control panels and smart device software applications used in the home to control audio sets, television sets, video recorders, and the like. The parties’ products will be found in very different channels of trade, and will be marketed towards different consumers. If goods and services are not 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, then even if the marks are identical (and they are not), confusion is not likely. Local Trademarks, Inc. v. Handyboys, Inc., 16 USPQ 2d 1156 (TTAB 1990); Quartz Radiation Corp. v. Comm/Scope Co., 1 USPQ 2d 1668 (TTAB 1986).
With regard to the mark PRONTOFLOW, Applicant notes that, in making the determination as to whether there is a likelihood of confusion or not, important factors to be considered are the similarity or dissimilarity of the respective marks as to appearance, sound, commercial impression and connotation. Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983). Applicant seeks registration of the stylized mark . By contrast, the cited mark is PRONTOFLOW. A cursory review of the cited mark immediately reveals the incorporation of the term FLOW in the mark, which has a specific commercial impression as applied to Degree’s thermal management systems and component which are used in industrial and commercial applications. The two marks appear completely different and create completely different commercial impressions. The goods are also quite different. Applicant’s mark will be used on home remote controls and related goods for users’ television sets, video recorders and the like. The goods are unrelated, and they will not be marketed to the same consumers or found in the same channels of trade. Applicant has amended its identification of goods to clarify the nature of its products, and respectfully submits that the differences in the goods remove any chance of a likelihood of confusion. See In re Sears Roebuck and Company, 2 USPQ 2d 1312 (TTAB 1987).
Applicant’s mark is also unlikely to be confused with the mark PRONTO! as owned by Stalker Software. Stalker Software offers communications software for use in email, calendaring, contacts, chat and the like. See http://www.communigate.com/main/pronto/. The registration is clear on its face that Stalker Software uses the mark for software for communications purposes. By contrast, Applicant’s products are remote controls and related products for controlling television sets, video recorders, DVD players, and the like. The products and their functions are quite different and will be found in different channels of trade, so that consumers are unlikely to encounter the marks in any situations in which they are likely to be confused into believing that the goods originate from the same source.
The citation of WIMBA’s registration for Pronto should also be withdrawn. It is well settled that the issue of likelihood of confusion between marks must be determined on the basis of the goods or services as they are identified in the application and the registration. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); Paula Payne Products Co. v. Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76 (CCPA 1973). WIMBA uses its mark in connection with “children's educational software; Computer software to enhance the audio-visual capabilities of multimedia applications, namely, for the integration of text, audio, graphics, still images and moving pictures.” These products are significantly different from Applicant’s remote control products, and are unlikely to be found in the same channels of trade or marketed towards the same consumers. As a result, confusion is highly unlikely.
With regard to the mark S2 pronto, Applicant respectfully submits that there are significant differences between the cited mark S2 pronto, in which the first and arguably most dominant term is S2, and Applicant’s mark. Moreover, the mark S2 pronto is registered for computer hardware and software for use in computer security, which is unrelated to Applicant’s home remote control products for controlling audio sets, television sets, video recorders, etc. The two parties’ products will not be marketing or sold to the same consumers or in the same channels of trade, and so they are unlikely to be confused, especially given the differences in the marks.
Finally, the registration for PRONTO owned by Quanta Computer Inc. covers very specific computer networking apparatus such as routers, bridges, etc. and networking storage systems with multiple removable RAID cartridges. Applicant also seeks to register its mark for very specific – but very different --products in the nature of home remote controls for televisions, etc. which are unlikely to be confused with those products sold by Quanta Computer Inc.
It is quite clear from the Office Action alone, in which the Examining Attorney cited seven (7) different registrations owned by six (6) different entities, that the wording in the registrants’ marks does not warrant a broad ambit of protection, and certainly is not strong enough that the public will be confused. Moreover, there are a number of other registrations for marks incorporating the term “PRONTO” for goods in Class 9 such that consumers are accustomed to distinguishing among them based on differences in the marks and goods, and would not likely be confused by Applicant’s mark.
Accordingly, Applicant respectfully requests that the Examining Attorney withdraw her refusal to register, and approve the mark for publication in the Official Gazette at her earliest convenience. If the Examining Attorney has any questions, she is urged to telephone the undersigned attorney.