Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

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

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

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

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 86590042 POWERPRO(Standard Characters, see http://tmng-al.gov.uspto.report/resting2/api/img/86590042/large) has been amended as follows:

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

First and foremost, our PowerPro marking is being used in a completely different market then the registrant's POWERPRO. The registrant uses the marking in "mobile equipment for supplying primary direct current electrical power to an industrial lifting magnet where a permanently wired power source is not available." Our primary use is in automotive air compressors and small power generators for the home user. There is no crossover between these two markets and therefore, there will not be confusion amongst individual consumers. We do not sell industrial lifting magnets or anything that could successfully power an industrial lifting magnet, which is the primary good of the previous registrant. The air compressors we sell have nothing to do with the market for industrial lifting magnets. No reasonable person would confuse an industrial lifting magnet with a small air compressor or portable generator. There will be no initial interest confusion amongst our two separate clientele bases. There is also no likelihood that the prior registrant will bridge the gap in the market place due to their distinctive focus on industrial users versus our focus on the home user. Their buyers are sophisticated buyers searching for extremely specific products to power industrial magnet lifts. Because the buyers of the previous registrant's products are all knowledgable industrial workers, they are aware enough to not confuse the power supply of an industrial lifting magnet with a 2-gallon home air compressor. Finally, we have been using this mark in commerce since 2005. I have attached an old Black Friday ad from 2005 as proof of this. I also have attached screenshots of our products on Amazon. The registrant's PowerPro mark does not appear in any of the same commercial vendors as us.

EVIDENCE
Evidence in the nature of There is one picture showing the power generator in a 2005 black Friday ad. The other picture shows a PowerPro air compressor available on Amazon. These are the primary vendors we are selling through - neither of which is occupied by the current registrant, therefore preventing confusion amongst customers. has been attached. 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 007 for AC generators; Air compressors; Electric compressors; Electric generators; Electric generators and related equipment, namely, automatic standby electric generator sets; Electric power generators for emergency use; Electricity generators; Emergency power generators; Gas-operated power generators; Portable electric power generators
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 02/05/2005 and first used in commerce at least as early as 02/05/2005 , and is now in use in such commerce.

Proposed:
Tracked Text Description: AC generators; Air compressors; Portable electric power generators; Electric compressors; Electric generators; Electric generators and related equipment, namely, automatic standby electric generator sets; Electric power generators for emergency use; Electricity generators; Emergency power generators; Gas-operated power generatorsClass 007 for Air compressors; Portable electric power generators
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 02/05/2005 and first used in commerce at least as early as 02/05/2005 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 007 . The specimen(s) submitted consists of A demonstration of our mark in commerce on the PowerPro 2-Gallon Air Compressor. This compressor is available for sale on Amazon, Home Depot, Sears and in stores at Autozone. .
"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]. Specimen File1

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Brandon Daley/      Date: 01/08/2016
Signatory's Name: Brandon Daley
Signatory's Position: Director of Marketing
Signatory's Phone Number: 847-695-3681


Response Signature
Signature: /Brandon Daley/     Date: 01/08/2016
Signatory's Name: Brandon Daley
Signatory's Position: Director of Marketing

Signatory's Phone Number: 847-695-3681

The signatory has confirmed that he/she is not represented by either an authorized attorney or Canadian attorney/agent, and that he/she is either: (1) the owner/holder ; or (2) a person(s) with legal authority to bind the owner/holder; and if an authorized U.S. attorney or Canadian attorney/agent previously represented him/her in this matter, either he/she has filed a signed revocation of power of attorney with the USPTO or the USPTO has granted the request of his/her prior representative to withdraw.

        
Serial Number: 86590042
Internet Transmission Date: Fri Jan 08 17:21:52 EST 2016
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201601081721526
13358-86590042-550eaed5839843a76e8ae8cc9
1ccb12e9c4f7c7ec546884c4a849279b6ab314ea
-N/A-N/A-20160108160707168046