| 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 | 87129001 |
| LAW OFFICE ASSIGNED | LAW OFFICE 122 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/87129001/mark.png |
| LITERAL ELEMENT | OREGON |
| 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) | |
|
The Examining Attorney has refused registration of Applicant’s OREGON mark for certain goods in Class 9 under § 2(d) of the Trademark Act, based on a purported likelihood of confusion with U.S. Reg. Nos. 2947732, 2947733 and 3374001, all of which cover the mark OREGON AERO (with or without additional design elements) in the name of Oregon Aero, Inc., with the term “OREGON” being disclaimed.
Applicant respectfully traverses the § 2(d) refusal, on the basis that the Examining Attorney has improperly dissected the registrant’s marks and compared Applicant’s mark with a disclaimed, non-distinctive portion of the registrant’s marks. The registrant has disclaimed the descriptive term “OREGON” in each of the cited registrations, inasmuch as the registrant is located in the state of Oregon, and thus “OREGON” is geographically descriptive of the origin of its goods. Likewise, Applicant is located in the state of Oregon, and (as noted by the Examining Attorney in also refusing registration of Applicant’s mark under § 2(e)(2)), “OREGON” is geographically descriptive of the origin of Applicant’s goods – although Applicant has acquired distinctiveness in “OREGON” through its use of that mark in commerce and prior registrations therefor, and thus is claiming acquired distinctiveness under § 2(f) herein.
The law is clear that additions or deletions to marks are sufficient to avoid a likelihood of confusion if the matter common to the marks is not likely to be perceived by purchasers as distinguishing source because it is merely descriptive. TMEP § 1207.01(b)(iii). See, e.g., Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 1356, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011) (affirming TTAB’s holding that contemporaneous use of applicant’s CAPITAL CITY BANK marks for banking and financial services, and opposer’s CITIBANK marks for banking and financial services, is not likely to cause confusion, based, in part, on findings that the phrase "City Bank" is frequently used in the banking industry and that "CAPITAL" is the dominant element of applicant’s marks, which gives the marks a geographic connotation as well as a look and sound distinct from opposer’s marks); Safer, Inc. v. OMS Invs., Inc., 94 USPQ2d 1031, 1044-45 (TTAB 2010) (holding DEER-B-GON for animal repellant used to repel deer, other ruminant animals, and rabbits, and DEER AWAY and DEER AWAY PROFESSIONAL for repellant for repelling deer, other big game, and rabbits, not likely to cause confusion, noting that "DEER" is descriptive as applied to the relevant goods and thus has no source-indicating significance); In re Bed & Breakfast Registry, 791 F.2d 157, 159 229 USPQ 818, 819 (Fed. Cir. 1986) (reversing TTAB’s holding that contemporaneous use of BED & BREAKFAST REGISTRY for making lodging reservations for others in private homes, and BED & BREAKFAST INTERNATIONAL for room booking agency services, is likely to cause confusion, because, inter alia, the descriptive nature of the shared wording weighed against a finding that the marks are confusingly similar).
Here, as in each of the cases noted above, there is no likelihood of confusion because the only matter common to the marks (“OREGON”) is geographically descriptive of the origin of both parties’ goods, and the registrant’s marks contain additional matter in the form of non-descriptive wording (“AERO”) – and, in the case of two of the cited marks, distinctive design elements – which serve to distinguish those marks from Applicant’s mark. As such, Applicant respectfully submits that it is improper to find a likelihood of confusion based solely on the parties’ common use of the descriptive term “OREGON”. The registrant is not entitled to a monopoly over use of the name of a U.S. state in relation to helmets and protective equipment. Further, the registrant’s addition of the distinctive term “AERO” creates a distinct commercial impression – suggestive of helmets and protective equipment for use in aerospace or flight applications – which is entirely absent from Applicant’s mark.
Thus, when Applicant’s and the registrant’s marks are properly compared in their entireties, with appropriate weight being given to the dominant “AERO” element of the registrant’s marks, it is clear that there is no likelihood of confusion between Applicant’s OREGON mark and the registrant’s OREGON AERO marks. As such, Applicant respectfully requests that the Examining Attorney withdraw the § 2(d) refusal and approve this application for publication.
Should anything further be required, a phone call to the undersigned at (312) 456-8400 is respectfully invited. |
|
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 009 |
| DESCRIPTION | |
| Protective padded clothing for protection against bodily harm and blunt force trauma; protective helmets; protective work gloves; protective industrial boots; protective eyewear; respiratory masks for non-medical purposes; reflective safety vests; solenoid valves; voltage regulators; electric clutches; diodes; mechanical counters, namely, hour meters; electric wires; electrical connectors; batteries; electric switches; pressure gauges; spark tester; tachometer; electrical terminals and connectors; chainsaw guide bar and chain measuring tools | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 00/00/1990 |
| FIRST USE IN COMMERCE DATE | At least as early as 00/00/1990 |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 009 |
| TRACKED TEXT DESCRIPTION | |
| Protective padded clothing for protection against bodily harm and blunt force trauma; protective helmets; protective work gloves; protective industrial boots; protective eyewear;
respiratory masks for non-medical purposes; reflective safety vests; solenoid valves; voltage
regulators; |
|
| FINAL DESCRIPTION | |
| Protective padded clothing for protection against bodily harm and blunt force trauma; protective helmets; protective work gloves; protective industrial boots; protective eyewear; respiratory masks for non-medical purposes; reflective safety vests; solenoid valves; voltage regulators; diodes; mechanical counters, namely, hour meters; electric wires; electrical connectors; batteries; electric switches; pressure gauges; ignition spark tester; tachometer; electrical terminals and connectors; chainsaw guide bar and chain measuring tools | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 00/00/1990 |
| FIRST USE IN COMMERCE DATE | At least as early as 00/00/1990 |
| ADDITIONAL STATEMENTS SECTION | |
| SECTION 2(f) Claim of Acquired Distinctiveness, based on Five or More Years' Use | The mark has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement. |
| SECTION 2(f) Claim of Acquired Distinctiveness, based on Active Prior Registration(s) | The mark has become distinctive of the goods/services as evidenced by the ownership on the Principal Register for the same mark for sufficiently similar goods/services of active U.S. Registration No(s). 0602338, 4459489, 3789762, 4376750, 2889236, 2630993 and 3850871 |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | /Jeffrey P. Dunning/ |
| SIGNATORY'S NAME | Jeffrey P. Dunning |
| SIGNATORY'S POSITION | Attorney of record, Illinois bar member |
| SIGNATORY'S PHONE NUMBER | 312.456.8400 |
| DATE SIGNED | 05/01/2017 |
| RESPONSE SIGNATURE | /Jeffrey P. Dunning/ |
| SIGNATORY'S NAME | Jeffrey P. Dunning |
| SIGNATORY'S POSITION | Attorney of record, Illinois bar member |
| SIGNATORY'S PHONE NUMBER | 312.456.8400 |
| DATE SIGNED | 05/01/2017 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon May 01 15:49:07 EDT 2017 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XXX.XXX -20170501154907318534-871 29001-5902ad4de7411911e22 4f7a72cd3bfd1f76a5c97ee35 1ca94af5ff4699f59c5122e-N /A-N/A-201705011544285389 83 |
| 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) |
The Examining Attorney has refused registration of Applicant’s OREGON mark for certain goods in Class 9 under § 2(d) of the Trademark Act, based on a purported likelihood of confusion with U.S. Reg. Nos. 2947732, 2947733 and 3374001, all of which cover the mark OREGON AERO (with or without additional design elements) in the name of Oregon Aero, Inc., with the term “OREGON” being disclaimed.
Applicant respectfully traverses the § 2(d) refusal, on the basis that the Examining Attorney has improperly dissected the registrant’s marks and compared Applicant’s mark with a disclaimed, non-distinctive portion of the registrant’s marks. The registrant has disclaimed the descriptive term “OREGON” in each of the cited registrations, inasmuch as the registrant is located in the state of Oregon, and thus “OREGON” is geographically descriptive of the origin of its goods. Likewise, Applicant is located in the state of Oregon, and (as noted by the Examining Attorney in also refusing registration of Applicant’s mark under § 2(e)(2)), “OREGON” is geographically descriptive of the origin of Applicant’s goods – although Applicant has acquired distinctiveness in “OREGON” through its use of that mark in commerce and prior registrations therefor, and thus is claiming acquired distinctiveness under § 2(f) herein.
The law is clear that additions or deletions to marks are sufficient to avoid a likelihood of confusion if the matter common to the marks is not likely to be perceived by purchasers as distinguishing source because it is merely descriptive. TMEP § 1207.01(b)(iii). See, e.g., Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 1356, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011) (affirming TTAB’s holding that contemporaneous use of applicant’s CAPITAL CITY BANK marks for banking and financial services, and opposer’s CITIBANK marks for banking and financial services, is not likely to cause confusion, based, in part, on findings that the phrase "City Bank" is frequently used in the banking industry and that "CAPITAL" is the dominant element of applicant’s marks, which gives the marks a geographic connotation as well as a look and sound distinct from opposer’s marks); Safer, Inc. v. OMS Invs., Inc., 94 USPQ2d 1031, 1044-45 (TTAB 2010) (holding DEER-B-GON for animal repellant used to repel deer, other ruminant animals, and rabbits, and DEER AWAY and DEER AWAY PROFESSIONAL for repellant for repelling deer, other big game, and rabbits, not likely to cause confusion, noting that "DEER" is descriptive as applied to the relevant goods and thus has no source-indicating significance); In re Bed & Breakfast Registry, 791 F.2d 157, 159 229 USPQ 818, 819 (Fed. Cir. 1986) (reversing TTAB’s holding that contemporaneous use of BED & BREAKFAST REGISTRY for making lodging reservations for others in private homes, and BED & BREAKFAST INTERNATIONAL for room booking agency services, is likely to cause confusion, because, inter alia, the descriptive nature of the shared wording weighed against a finding that the marks are confusingly similar).
Here, as in each of the cases noted above, there is no likelihood of confusion because the only matter common to the marks (“OREGON”) is geographically descriptive of the origin of both parties’ goods, and the registrant’s marks contain additional matter in the form of non-descriptive wording (“AERO”) – and, in the case of two of the cited marks, distinctive design elements – which serve to distinguish those marks from Applicant’s mark. As such, Applicant respectfully submits that it is improper to find a likelihood of confusion based solely on the parties’ common use of the descriptive term “OREGON”. The registrant is not entitled to a monopoly over use of the name of a U.S. state in relation to helmets and protective equipment. Further, the registrant’s addition of the distinctive term “AERO” creates a distinct commercial impression – suggestive of helmets and protective equipment for use in aerospace or flight applications – which is entirely absent from Applicant’s mark.
Thus, when Applicant’s and the registrant’s marks are properly compared in their entireties, with appropriate weight being given to the dominant “AERO” element of the registrant’s marks, it is clear that there is no likelihood of confusion between Applicant’s OREGON mark and the registrant’s OREGON AERO marks. As such, Applicant respectfully requests that the Examining Attorney withdraw the § 2(d) refusal and approve this application for publication.
Should anything further be required, a phone call to the undersigned at (312) 456-8400 is respectfully invited.
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.