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. 87654425 ASTRA(Standard Characters, see http://uspto.report/TM/87654425/mark.png) has been amended as follows:

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

REMARKS

Serial No. 87/654,425

On February 6, 2018, the Trademark Office issued an initial refusal to register Applicant’s Trademark Application, citing U.S. Registration No. 3,727,293 for trademark ASTRA in International Class 009 (“Cited Registration) under Section 2(d).  Applicant respectfully submits that there is no likelihood of confusion between Applicant’s trademark and the Cited Registration for at least the following reasons.

I.                   Different Identification of Goods and Channels of Trade

The identification of goods associated with Applicant’s trademark differs significantly from the class of goods associated with the Cited Registration.   Also, to further ensure there is no confusion, Applicant hereby amends its description of goods in Class 009 to “mobile data receivers namely GNSS receivers, and Doppler systems; and satellites”.  Applicant’s application is very specific as recited herein.  The Cited Registration’s goods are described as Radio frequency identification (RFID) readers and antennas and associated hardware and operating system computer software for use in RFID applications.  RFID readers and antennas are not GNSS receivers, Doppler systems and satellites, but a passive device.  The consumers, channels of trade and classes of purchasers are also very different.   

Courts have recognized that even in cases where the compared trademarks are identical, a significant difference in the class of goods resulted in the TTAB finding no likelihood of confusion. Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1244-45, 73 USPQ2d 1350, 1356 (Fed. Cir. 2004) (reversing TTAB’s holding that contemporaneous use of RITZ for cooking and wine selection classes and RITZ for kitchen textiles is likely to cause confusion, because the relatedness of the respective goods and services was not supported by substantial evidence); Local Trademarks, Inc. v. Handy Boys Inc., 16 USPQ2d 1156, 1158 (TTAB 1990) (finding liquid drain opener and advertising services in the plumbing field to be such different goods and services that confusion as to their source is unlikely even if they are offered under the same trademarks).

The class of goods associated with Applicant’s markonly includes “mobile data receivers namely GNSS receivers, and Doppler systems; and satellites in International Class 009.  On the other hand, the Cited Registration is not associated with GNSS receivers, Doppler systems and satellites in any way, but rather only associated with Radio frequency identification (RFID) readers and antennas and associated hardware and operating system computer software for use in RFID applications.  Thus, the description of goods differs greatly. For various reasons, there is a significant difference between the goods associated with Applicant’s trademark, channels of trade and consumers.

Applicant’s goods would be marketed to companies and governments interested in space weather monitoring.   On the other hand, the Cited Registration is currently marketed to consumers interested in identification of products. These two classes of consumers would be marketed in very different ways. A company or government seeking space weather monitoring goods is not the same as a consumer interested in identification of products.  If the goods in question are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the trademarks are identical, confusion is not likely. See, e.g., Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1371, 101 USPQ2d 1713, 1723 (Fed. Cir. 2012) (affirming the Board’s dismissal of opposer’s likelihood-of-confusion claim, noting “there is nothing in the record to suggest that a purchaser of test preparation materials who also purchases a luxury handbag would consider the goods to emanate from the same source” though both were offered under the COACH mark).

II.                 The Number and Nature of Similar Marks in Use on Similar Goods or Services

 

The Examining Attorney has cited only one registration against the subject application. The Examiner has failed to take into consideration the crowded field of “ASTRA” and “ASTRA-themed” marks. As of today, there are 114 “live” hits of applications and registrations listed in TESS which consist of the word ASTRA.  Of the 114 hits, there are 17 “ASTRA” or “ASTRA-themed” applications and registrations in Class 009.

Example registrations are listed below. The fact that many ASTRA marks co-exist on the Principal Register is proof that Applicant’s mark is not likely to confuse the relevant consumer.

Patent and Trademark Office records reveal several “ASTRA” marks for closely related goods and services in class 009. A representative sample of these Registrations are shown below:

 

Mark/Reg./Ser.No.	Owner	Goods/Services	Status
ASTRA #1,970,011	Gasboy International Incorporated PA	Class 009	Reg. as of 04/23/1996
ASTRA #2,337,628	Wyatt Technology Corporation CA	Class 009	Reg. as of 01/11/2000
ASTRA IIIB #3,663,595	Celestaire of Kansas Inc. KS	Class 009	Reg. as of  08/04/2009
ASTRA #4,363,025	Candelis, Inc. CA	Classes 009 and 042	Reg. as of 07/09/2013
Orbbec Astra #4,863,285	Orbbec 3D Tech. Int’l. Inc. MI	Class 009	Reg. as of 12/01/2015
ASTRA LIGHT ENGINE # 4,380,687	Lumencor, Inc. OR	Class 009	Reg. as of 08/06/2013
ASTRAFORGE #4,421,610	Vobius Software LLC MI	Class 009	Reg. as of 10/22/2013

 

“A mark that is hemmed in on all sides by similar marks on similar goods or services cannot be very 'distinctive.' It is merely one of a crowd of similar marks. In such a crowd, customers will not likely be confused between any two of the crowd and may have learned to carefully pick out one from the other.” 2 McCarthy on Trademarks and Unfair Competition § 11:85 (4th ed.).  Here, Applicant notes that many ASTRA marks co-exist with each other and numerous registrations, not just the Cited Registration, for marks that include the word “ASTRA” for similar goods and services related to goods/services in Class 009 as outlined below.  This crowded field of “astra” and “astra-themed” marks for closely related goods and services means that Registrant’s rights in its mark are narrow, and that even small differences between the marks are sufficient to avoid the risk of confusion as to source. See, e.g., Miss World (UK) Ltd. v. Mrs. Am. Pageants, Inc., 856 F.2d 1445, 1449 (9th Cir. 1988).

The existence of multiple third-party registrations creates a “crowded field,” in which “each member of the crowd is relatively ‘weak’ in its ability to prevent use by others in the crowd.” Id. “Evidence of widespread third-party use, in a particular field, of marks containing a certain shared term is competent to suggest that purchasers have been conditioned to look to other elements of the marks as a means of distinguishing the source of the goods or services in the field.” In re Broadway Chicken, Inc., 38 U.S.P.Q.2d 1559, 1565-6 (T.T.A.B. 1996) (in view of third-party uses and registrations of “Broadway” for restaurant services, confusion was not likely between BROADWAY CHICKEN and BROADWAY PIZZA and BROADWAY BAR AND PIZZA); accord In re Bed & Breakfast Registry, 791 F.2d 157, 158 (Fed. Cir. 1986) (given large number of marks using common feature for similar services, BED & BREAKFAST REGISTRY not likely to cause confusion with BED & BREAKFAST INTERNATIONAL); see also King Candy Co. v. Eunice King's Kitchen, Inc., 182 U.S.P.Q.2d 108, 109-110 (C.C.P.A. 1974) (where marks “are of such non-arbitrary nature or so widely used . . . the public easily distinguishes slight differences in the marks,” making confusion unlikely).

Printouts of the United States Patent and Trademark Office records for these registrations are attached hereto as Exhibit A and made of record.  As explained above, this crowded field is evidence of the narrowness of Registrant’s rights in the Cited Registration, and of the enhanced likelihood that consumers will notice even small differences between the marks and therefore not be confused as to source.

III.             Other Probative Evidence Supports the Conclusion that Confusion between Applicant’s Mark and the Cited Registration is Unlikely.

 

“[C]ourts regularly include intent as one of the factors to be assessed in evaluating likelihood of confusion.” Restatement (Third) of Unfair Competition § 22, Reporter’s Note to comment b, at 248 (1995). Here, Applicant has no intent to trade upon the reputation of any other person or company when adopting its mark, including the reputation of the owner of the Cited Registration. This factor also supports registration of Applicant’s Mark. “A showing of mere possibility of confusion is not enough; a substantial likelihood that the public will be confused must be shown.” Omaha Nat’l Bank v. Citibank (S.D.), N.A., 633 F. Supp. 231, 234, 229 U.S.P.Q. 51, 52 (D. Neb. 1986) (emphasis added). Applicant submits that such a likelihood does not exist in the present case.

IV.             Conclusion

 

Based upon all the foregoing, Applicant respectfully requests that the Office withdraw the refusal to register Serial No. 87/654,425 for ASTRA and approve the application for Publication for opposition purposes.

 

Respectfully submitted,

Atmospheric & Space Technology Research Associates, LLC

 

/Scott J. Hawranek/ Attorney for Applicant

 

EVIDENCE
Evidence in the nature of Attached is a PDF version of the Argument for the convenience of the Examining Attorney. Also attached is a PDF version of Exhibit A has been attached.
Original PDF file:
evi_9693195225-20180806154247808673_._2018-08-6_-_Response_to_Office_Action_dated_2017-02-06.pdf
Converted PDF file(s) ( 5 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Original PDF file:
evi_9693195225-20180806154247808673_._Exhibit_A.pdf
Converted PDF file(s) ( 15 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Receivers of electronic signals; mobile data receivers; and satellites
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 04/00/2008 and first used in commerce at least as early as 04/00/2008 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Receivers of electronic signals; mobile data receivers namely GNSS receivers, and Doppler systems; mobile data receivers; and satellitesClass 009 for mobile data receivers namely GNSS receivers, and Doppler systems; and satellites
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 04/00/2008 and first used in commerce at least as early as 04/00/2008 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 009 . The specimen(s) submitted consists of screenshot of a website showing the goods using the applied-for mark; and a data sheet for the goods with the applied-for mark .
"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].
Original PDF file:
SPU0-9693195225-20180806154247808673_._009_-_ASTRA_datasheet-Cases-v1-0.pdf
Converted PDF file(s) ( 2 pages)
Specimen File1
Specimen File2
Original PDF file:
SPU0-9693195225-20180806154247808673_._-_ASTRA_-_Atmospheric___Space_Technology_Research_Associates.pdf
Converted PDF file(s) ( 6 pages)
Specimen File1
Specimen File2
Specimen File3
Specimen File4
Specimen File5
Specimen File6

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: /Scott J. Hawranek/      Date: 08/06/2018
Signatory's Name: Scott J. Hawranek
Signatory's Position: Attorney of Record, Colorado Bar Member
Signatory's Phone Number: 719-344-9907


Response Signature
Signature: /Scott J. Hawranek/     Date: 08/06/2018
Signatory's Name: Scott J. Hawranek
Signatory's Position: Attorney of Record, Colorado Bar Member

Signatory's Phone Number: 719-344-9907

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: 87654425
Internet Transmission Date: Mon Aug 06 17:53:17 EDT 2018
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2018080617531713
6086-87654425-61010ceada868e2e75644db399
b99a5b231ea3b5117ef8663bfe18e6486eae3a6-
N/A-N/A-20180806175222939911