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 09/20/2020)

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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 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 87622851 STRATUS(Standard Characters, see http://uspto.report/TM/87622851/mark.png) has been amended as follows:

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

The application was refused on the basis of likelihood of confusion with three registrations for STRATUS for various goods. Applicant has amended the identification of goods to "industrial air filter machines for particulate filtration." The term "industrial" reflects the intended use of the air filter machines in manufacturing businesses, as supported by the definition of "industrial," meaning "having to do with the business of manufacturing." See Exhibit A. "Industrial" use is distinguished from "home" or "office" use, which are uses in the homes or offices of the purchasers, which are small rooms and office spaces. Home and office machines are light-duty and are not designed to handle the volumes and types of particulate created in a manufacturing environment. The first reference (Sol) is the mark STRATUS registered for "electric vaporizers." The evidence shows parties that sell home and office air purifiers and humidifiers, but none that also sell industrial air filtration machines. There is no evidence that those who sell air filter machines for manufacturing businesses also sell electric vaporizers. Even if they did, consumers of industrial machines are sophisticated about the sources of products they purchase, because such products are used in and around a facility that can be dangerous even with great care. The second reference (Automation Direct) is the mark STRATUS registered for "Thermal management devices, namely, air conditioners, heaters, heat exchangers and filter fans for industrial electronic control enclosures." The evidence shows home and office air purifier and humidifiers, as shown by reference to devices used in "rooms" of a particular size (small, medium and large). The evidence also includes filters that might be placed in the HVAC system in a home. No evidence shows sales of industrial air filtration machines by the same parties that also sell Registrant's goods. Thus, the evidence gives no basis for concluding that sellers of "thermal management devices, namely, air conditioners, heaters, heat exchangers and filter fans for industrial electronic control enclosures" also sell industrial air filter machines for particulate filtration. The argument above regarding a lack of confusion among sophisticated consumers who purchase industrial filter machines applies to the Automation Direct reference, because industrial consumers are extremely careful due to the costs and quality of industrial filtration equipment. The third reference (Tranzonic) is the mark STRATUS registered for "fan dispensing units for air deodorant; battery operated dispensing units for air fragrance and deodorizer sold with or without odor counteractant air fragrance and deodorizing cartridges; and air fragrance systems comprising fan dispensers, fragrance and deodorizing gels." Based on the evidence submitted by the Examining Attorney, it is alleged that goods specified by the registrant commonly come in the form of goods identified by Applicant. However, there is no evidence that sellers of industrial air filter machines also sell Registrant's goods. The evidence proffered shows sales for "home and office use," and refers to "rooms up to 200 sq. ft." and a "home environment." These are not industrial machines. The argument above regarding a lack of confusion among sophisticated consumers who purchase industrial filter machines applies to the Tranzonic reference, because industrial consumers are extremely careful due to the costs and quality of industrial filtration equipment. In conclusion, Applicant respectfully submits that there is no likelihood of confusion between Applicant's mark and any of the references. Although the reference marks include the same term, the goods are not related, and are not sold by common parties. Thus, no consumer of industrial filter machines would also encounter any of the Registrants' marks or goods. Even if consumers of industrial goods happened to encounter the same mark on different goods marketed to different customers, consumers of industrial machines are sufficiently sophisticated to avoid being confused regarding the source of the industrial filter machines contemplated. In view of the foregoing, consumers of industrial air filtration machines for particulate filtration are not likely to be confused as to the source of such disparate goods sold under different circumstances to different consumers, even when the same mark is used. Therefore, Applicant respectfully requests the refusal be withdrawn.

EVIDENCE
Evidence in the nature of Definitions of the terms "Industrial" and "Industry" from Merriam-Webster has been attached.
Original PDF file:
evi_6560190179-20180205150118083933_._definition_of_industrial_by_merriam-webster.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_6560190179-20180205150118083933_._definition_of_industry_by_merriam-webster.pdf
Converted PDF file(s) ( 1 page)
Evidence-1

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 011 for Air purification units, air cleaning units, industrial air filter machines
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and 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.

Proposed:
Tracked Text Description: Air purification units, air cleaning units, industrial air filter machines; Industrial air filter machines for particulate filtrationClass 011 for Industrial air filter machines for particulate filtration
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and 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.

SIGNATURE(S)
Response Signature
Signature: /Jason H. Foster/     Date: 02/05/2018
Signatory's Name: Jason H. Foster
Signatory's Position: Attorney of record, Ohio bar member

Signatory's Phone Number: 6145752100

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 87622851
Internet Transmission Date: Mon Feb 05 15:13:58 EST 2018
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2018020515135852
9709-87622851-5103870c25a821e51ab9ecc168
47d576b6c18bbbc3556b435237a36fa8c5ef927-
N/A-N/A-20180205150118083933