| 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 09/20/2020) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 87429083 |
| LAW OFFICE ASSIGNED | LAW OFFICE 123 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/87429083/mark.png |
| LITERAL ELEMENT | CALIBER |
| 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 present owner of Registration No. 2,088,071 (“the ‘071 Registration”) is Sapphire Scientific, Inc. (SSI or Registrant). SSI is affiliated
with Legends Brands Cleaning (LBC), http://www.legendbrandscleaning.com/. Products and services of LBC include Truckmounts, Portable
Extractors, Accessories, and Solutions. A “brand” name of Legends Brands Cleaning is Sapphire Scientific. See
http://www.legendbrandscleaning.com/Products?c=Sapphire, attached. See also http://www.facebook.com/SapphireScientific/ and the photos of products of SSI at
http://www.facebook.com/pg/SapphireScientific/photos/?ref=page_internal. The products and services of LBC (and SSI) relate to cleaning of carpets and hard surfaces. On the website, the following applications are listed: carpet care; green-certified cleaning; hard surface care; odor control; upholstery, rug, leather care; and wood floor care. Chemicals of LBC include Water-Based Tile and Grout Sealer (“to repel everyday soils, grease and oils . . . “); Chemspec Paint, Oil and Grease Remover; Citrus Gel (“removes a wide variety of spots from most hard and soft surfaces including asphalt, tar, gum, auto grease . . . .”; Biosolv® Booster (“to tackle the toughest soils, oils, stains and heavy greases”); etc. See http://www.legendbrandscleaning.com/Products?c=CleaningSolutions. Applicant is unable to locate any reference to a product of LBC or SSI bearing the mark CALIBER. The internet pages of LBC or SSI are consistent, however, with the goods listed in the ‘071 Registration. Applicant’s goods (“industrial greases”) are inconsistent with the goods and services of LBC and SSI. It is unreasonable to conclude that
a cleaning service uses an industrial grease to remove stains and greases. The websites and advertising literature of LBC and SSI support the objective to be the
contrary, i.e., to remove greases, not to the use of greases. The Examining Attorney cites, as a basis for the refusal, the “similarity and nature of the goods and/or services” and the “similarity of the trade channels of the goods and/or services”. However, there is no similarity in the goods and/or services or trade channels of Applicant versus the Registrant. In fact, the nature of the goods and/or services and trade channels would appear to be apposite to each other. The Examining Attorney states that “it is common for the same entity to manufacture both parties’ goods and market the goods under the same mark.” Again, this would be contrary to the objective of the cleaning solutions offered by LBC and SSI. The Examining Attorney further justifies the rejection on third party websites and states that the “evidence establishes that the same entity commonly manufactures greases and cleaning preparations and markets the good under the same mark.” Rather this is true is irrelevant. The issue is whether the mark of the Registrant would travel in the same channels of trade as that of Applicant.
|
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_9665227109-20180131124548474089_._Legend_Brands_Cleaning___Find_a_Product__003_.pdf |
| CONVERTED PDF FILE(S) (6 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\874\290\87429083\xml4\ROA0002.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\874\290\87429083\xml4\ROA0003.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\874\290\87429083\xml4\ROA0004.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\874\290\87429083\xml4\ROA0005.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\874\290\87429083\xml4\ROA0006.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\874\290\87429083\xml4\ROA0007.JPG | |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /John Wilson Jones/ |
| SIGNATORY'S NAME | John Wilson Jones |
| SIGNATORY'S POSITION | Attorney of record, Texas Bar Member |
| SIGNATORY'S PHONE NUMBER | 7134294800 |
| DATE SIGNED | 01/31/2018 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Jan 31 12:52:52 EST 2018 |
| TEAS STAMP | USPTO/ROA-XX.XX.XXX.XXX-2 0180131125252315321-87429 083-5102f76e1bb5c121ad65d 4747230f7b9f482604e163971 5ec84a95ec3e31fa093-N/A-N /A-20180131124548474089 |
| 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 09/20/2020) |
The present owner of Registration No. 2,088,071 (“the ‘071 Registration”) is Sapphire Scientific, Inc. (SSI or Registrant). SSI is affiliated
with Legends Brands Cleaning (LBC), http://www.legendbrandscleaning.com/. Products and services of LBC include Truckmounts, Portable
Extractors, Accessories, and Solutions. A “brand” name of Legends Brands Cleaning is Sapphire Scientific. See
http://www.legendbrandscleaning.com/Products?c=Sapphire, attached. See also http://www.facebook.com/SapphireScientific/ and the photos of products of SSI at
http://www.facebook.com/pg/SapphireScientific/photos/?ref=page_internal.
The products and services of LBC (and SSI) relate to cleaning of carpets and hard surfaces. On the website, the following applications are listed: carpet care; green-certified cleaning; hard surface care; odor control; upholstery, rug, leather care; and wood floor care. Chemicals of LBC include Water-Based Tile and Grout Sealer (“to repel everyday soils, grease and oils . . . “); Chemspec Paint, Oil and Grease Remover; Citrus Gel (“removes a wide variety of spots from most hard and soft surfaces including asphalt, tar, gum, auto grease . . . .”; Biosolv® Booster (“to tackle the toughest soils, oils, stains and heavy greases”); etc. See http://www.legendbrandscleaning.com/Products?c=CleaningSolutions. Applicant is unable to locate any reference to a product of LBC or SSI bearing the mark CALIBER. The internet pages of LBC or SSI are consistent, however, with the goods listed in the ‘071 Registration.
Applicant’s goods (“industrial greases”) are inconsistent with the goods and services of LBC and SSI. It is unreasonable to conclude that
a cleaning service uses an industrial grease to remove stains and greases. The websites and advertising literature of LBC and SSI support the objective to be the
contrary, i.e., to remove greases, not to the use of greases.
The Examining Attorney cites, as a basis for the refusal, the “similarity and nature of the goods and/or services” and the “similarity of the trade channels of the goods and/or services”. However, there is no similarity in the goods and/or services or trade channels of Applicant versus the Registrant. In fact, the nature of the goods and/or services and trade channels would appear to be apposite to each other.
The Examining Attorney states that “it is common for the same entity to manufacture both parties’ goods and market the goods under the same mark.” Again, this would be contrary to the objective of the cleaning solutions offered by LBC and SSI.
The Examining Attorney further justifies the rejection on third party websites and states that the “evidence establishes that the same entity commonly manufactures greases and cleaning preparations and markets the good under the same mark.” Rather this is true is irrelevant. The issue is whether the mark of the Registrant would travel in the same channels of trade as that of Applicant.
