| 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) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 86906449 |
| LAW OFFICE ASSIGNED | LAW OFFICE 106 |
| MARK SECTION | |
| MARK | http://tmng-al.gov.uspto.report/resting2/api/img/86906449/large |
| LITERAL ELEMENT | JASON |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
|
AMENDMENT AND RESPONSE
In response to the Official Action dated June 10, 2016, please consider the following amendment and remarks. REMARKS
The Examining Attorney has rejected the present application asserting that the mark Jason, for among other things, vehicle seats, parts associated with vehicle seats, and vehicle sound insulators is confusingly similar to the mark Jason for Structural parts for automobiles; Structural parts for motorcycles; Connecting rods for land vehicles other than parts of motors and engines; Cranks for cycles; Axle bearings for land vehicles; Wheel bearings for land vehicles; Clutches for land vehicles; Automotive structural parts, namely, fuel storage cells and component parts therefor (the “Cited Registration”). In making this rejection, the Examining Attorney characterizes Applicant’s goods as “structural parts for automobiles and vehicles that are sold in the same trade channels [as the goods in the Cited Registration].” This characterization is incorrect. Applicant’s goods are not structural parts for vehicles. They are seats, parts of seats and sound insulators. This is a significant difference and consumers of such products (automakers), who are very sophisticated by their nature, would not expect a purveyor of vehicle seats and vehicle insulators to also be a purveyor of structural parts such as axle cranks and bearings, clutches and fuel storage cells. As such the actual consumers of these goods are not likely to be confused as to the source of such goods. With respect to the Examining Attorney’s objection to the description of various goods as indefinite, virtually every term used in the lengthy description is taken directly from a prior registration or allowed application owned by Applicant with the exception of the following: “Coated and non-coated expanded metal products, speaker grills, kitchen filter assemblies, perforated custom metal tubing; Stamped, formed, expanded and perforated metal components and subassemblies, safety grating and rail products, air and fluid filtration, home and automotive speaker grilles, fencing, parks and recreational, outdoor furniture, lighting.” See Registration and Application Nos. 85/779905, 86/285516, 4,345,315, 4,788,584, 2,817,521 and 76/597298[1]. Applicant is cognizant that the goods belong in multiple classes including classes 1, 3, 7, 12, 17, 21, and 26. For example the following goods descriptions are from allowed application no. 85/779905 and broken into classes as follows: IC 3: Buffing compounds, excluding household cleaners, for buffing and finishing metal and plastic machine parts and pieces, manufacturing equipment, industrial machine and equipment parts and pieces IC 7: Brushes being parts of surface treatment and finishing machines, namely, abrasive nylon brushes, wheel brushes, disc brushes, internal finishing and cleaning brushes, cup brushes, end brushes, wide face brushes, wire brushes, fineblanking brushes, grit wheel brushes, tube brushes, scrubber brushes, printed circuit brushes, strip brushes, scratch brushes, knotted wire brushes and stringer bead brushes; Brush adapters for use as machine parts; Brush components and replacement parts for brushes for machines; Brushes being parts of brushing machines for cleaning conveyor systems; brushes for machines, namely, abrasive nylon brushes, wheel brushes, disc brushes, internal finishing and cleaning brushes, cup brushes, end brushes, wide face brushes, wire brushes, fineblanking brushes, grit wheel brushes, tube brushes, scrubber brushes, printed circuit brushes, strip brushes, scratch brushes, knotted wire brushes and stringer bead brushes; machine parts, namely, flap discs, cutoff wheels, wheel brushes, and grinding wheels for power-operated grinders IC 16: Paint brushes; Paint rollers IC 21: Wire brushes, not being machine parts; Scrubbing bushes; Materials for brush making; hand tools, namely, tube brushes for cleaning and deburring holes and crevasses in machinery, motors, engine parts, pipes, and flues; cleaning brushes Similarly, the following goods are in class 12 in allowed application no. 86/285501: IC 12: Vehicle seats, seats for off-road equipment, namely, turf care equipment, seats for industrial equipment, namely, lift trucks, telehandlers and cargo handlers, seats for agricultural equipment, namely, tractors, combines, harvesting equipment and applicators, seats for construction equipment, namely, seats for skid steer loaders, wheel loaders, compact wheel loaders, excavators, mini excavators, bulldozers, road equipment and backhoe loaders, and parts and attachments therefore, namely, vehicle seat frames, vehicle seat cushions, arm rests for vehicle seats, backrests for vehicle seats, head-rests for vehicle seats, vehicle seat head-rest extensions, vehicle seat suspensions, vehicle seat positioning slide rails, vehicle seats with adjustable dampers, vehicle seat position adjusting mechanisms, vehicle seat swivels, leather, vinyl and fabric seat covers, vehicle seats with integrated storage, vehicle seat arm rests featuring integrated controllers for adjusting seat position; seat belts for use in vehicle seats, vehicle seat belt covers Applicant is willing to work with the Examining Attorney to reach agreement on the classes and goods descriptions. A telephone call to expedite the consideration of the various description and class issues will be initiated by Applicant after the filing of this response. [1] While this application is now abandoned, the description in the TEAS records was accepted by the Examining Attorney. |
|
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Adam L. Brookman/ |
| SIGNATORY'S NAME | Adam L. Brookman |
| SIGNATORY'S POSITION | Attorney of Record, WI Bar Member |
| SIGNATORY'S PHONE NUMBER | 414-225-9755 |
| DATE SIGNED | 10/05/2016 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Oct 05 10:25:27 EDT 2016 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XXX- 20161005102527298997-8690 6449-5702843612427fe52fa8 8af81e5efd69093e3aeb9a11e d283129c2af11eff3325-N/A- N/A-20161005102427745524 |
| 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) |
AMENDMENT AND RESPONSE
In response to the Official Action dated June 10, 2016, please consider the following amendment and remarks.
REMARKS
The Examining Attorney has rejected the present application asserting that the mark Jason, for among other things, vehicle seats, parts associated with vehicle seats, and vehicle sound insulators is confusingly similar to the mark Jason for Structural parts for automobiles; Structural parts for motorcycles; Connecting rods for land vehicles other than parts of motors and engines; Cranks for cycles; Axle bearings for land vehicles; Wheel bearings for land vehicles; Clutches for land vehicles; Automotive structural parts, namely, fuel storage cells and component parts therefor (the “Cited Registration”). In making this rejection, the Examining Attorney characterizes Applicant’s goods as “structural parts for automobiles and vehicles that are sold in the same trade channels [as the goods in the Cited Registration].” This characterization is incorrect.
Applicant’s goods are not structural parts for vehicles. They are seats, parts of seats and sound insulators. This is a significant difference and consumers of such products (automakers), who are very sophisticated by their nature, would not expect a purveyor of vehicle seats and vehicle insulators to also be a purveyor of structural parts such as axle cranks and bearings, clutches and fuel storage cells. As such the actual consumers of these goods are not likely to be confused as to the source of such goods.
With respect to the Examining Attorney’s objection to the description of various goods as indefinite, virtually every term used in the lengthy description is taken directly from a prior registration or allowed application owned by Applicant with the exception of the following: “Coated and non-coated expanded metal products, speaker grills, kitchen filter assemblies, perforated custom metal tubing; Stamped, formed, expanded and perforated metal components and subassemblies, safety grating and rail products, air and fluid filtration, home and automotive speaker grilles, fencing, parks and recreational, outdoor furniture, lighting.” See Registration and Application Nos. 85/779905, 86/285516, 4,345,315, 4,788,584, 2,817,521 and 76/597298[1]. Applicant is cognizant that the goods belong in multiple classes including classes 1, 3, 7, 12, 17, 21, and 26.
For example the following goods descriptions are from allowed application no. 85/779905 and broken into classes as follows:
IC 3: Buffing compounds, excluding household cleaners, for buffing and finishing metal and plastic machine parts and pieces, manufacturing equipment, industrial machine and equipment parts and pieces
IC 7: Brushes being parts of surface treatment and finishing machines, namely, abrasive nylon brushes, wheel brushes, disc brushes, internal finishing and cleaning brushes, cup brushes, end brushes, wide face brushes, wire brushes, fineblanking brushes, grit wheel brushes, tube brushes, scrubber brushes, printed circuit brushes, strip brushes, scratch brushes, knotted wire brushes and stringer bead brushes; Brush adapters for use as machine parts; Brush components and replacement parts for brushes for machines; Brushes being parts of brushing machines for cleaning conveyor systems; brushes for machines, namely, abrasive nylon brushes, wheel brushes, disc brushes, internal finishing and cleaning brushes, cup brushes, end brushes, wide face brushes, wire brushes, fineblanking brushes, grit wheel brushes, tube brushes, scrubber brushes, printed circuit brushes, strip brushes, scratch brushes, knotted wire brushes and stringer bead brushes; machine parts, namely, flap discs, cutoff wheels, wheel brushes, and grinding wheels for power-operated grinders
IC 16: Paint brushes; Paint rollers
IC 21: Wire brushes, not being machine parts; Scrubbing bushes; Materials for brush making; hand tools, namely, tube brushes for cleaning and deburring holes and crevasses in machinery, motors, engine parts, pipes, and flues; cleaning brushes
Similarly, the following goods are in class 12 in allowed application no. 86/285501:
IC 12: Vehicle seats, seats for off-road equipment, namely, turf care equipment, seats for industrial equipment, namely, lift trucks, telehandlers and cargo handlers, seats for agricultural equipment, namely, tractors, combines, harvesting equipment and applicators, seats for construction equipment, namely, seats for skid steer loaders, wheel loaders, compact wheel loaders, excavators, mini excavators, bulldozers, road equipment and backhoe loaders, and parts and attachments therefore, namely, vehicle seat frames, vehicle seat cushions, arm rests for vehicle seats, backrests for vehicle seats, head-rests for vehicle seats, vehicle seat head-rest extensions, vehicle seat suspensions, vehicle seat positioning slide rails, vehicle seats with adjustable dampers, vehicle seat position adjusting mechanisms, vehicle seat swivels, leather, vinyl and fabric seat covers, vehicle seats with integrated storage, vehicle seat arm rests featuring integrated controllers for adjusting seat position; seat belts for use in vehicle seats, vehicle seat belt covers
Applicant is willing to work with the Examining Attorney to reach agreement on the classes and goods descriptions. A telephone call to expedite the consideration of the various description and class issues will be initiated by Applicant after the filing of this response.
[1] While this application is now abandoned, the description in the TEAS records was accepted by the Examining Attorney.