Response to Office Action

ADVANTAGE

ContiTech USA, Inc.

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)

Response to Office Action

The table below presents the data as entered.

Input Field	Entered
SERIAL NUMBER	87680030
LAW OFFICE ASSIGNED	LAW OFFICE 125
MARK SECTION
MARK	http://uspto.report/TM/87680030/mark.png
LITERAL ELEMENT	ADVANTAGE
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)
REMARKS This communication is in response to Office Action mailed on February 27, 2018, with respect to the above-identified application. Please reconsider the application in view of the remarks set forth below. Likelihood of Confusion (Section 2(d) Refusal) In the above-identified Office Action, the Examining Attorney has refused registration of the mark under § 2(d) of the Trademark Act, namely in view of Registration Nos. 1548284 and 4794446. The identification of goods of the present application have been amended to clarify that applicant's goods are highly specialized products for the aerospace industry, and in particular for aircraft fueling and petroleum transfer. Accordingly, this also clarifies that only sophisticated purchasers exercising great care would purchase the relevant goods. For example, there are Federal regulations for fuel hoses in the aerospace industry, see 14 CFR Part 25 - Airworthiness Standards: Transport Category Airplanes, as well as industry standards such as ISO 1825:2017 and 2928:2003. It is respectfully submitted that due to the specialized nature of these goods and their application, consumers must also exhibit specialized, careful purchasing. With regard to Reg. Nos. 1548284 and 4794446, the goods of these registrations are quite different and are unlikely to be encountered by or confused by consumers of fuel hoses for the aerospace industry. These cited registrations specify plastic drainage pipes for use along roadways, and garden hoses, respectively, which are non-competitive goods with different applications. Consumers of various hoses or pipes purchase these goods for specific end uses, and hence the goods are organized and sold by their application and end-use. That is, consumers of specialized fuel and petroleum hoses, which carry special requirements and are purchased with care, are unlikely to encounter or be confused by drainage pipes or garden hoses. Likewise, consumers of garden hoses and drainage pipes are unlikely to encounter or be confused by fuel and petroleum hoses. See, e.g., In re Thor Tech, Inc., U.S.P.Q.2d 1546 (T.T.A.B. 2015), where the TTAB stated "[w]hile trucks and recreational towable trailers may occasionally be sold by the same retailers, we cannot overlook the facts that the products are, at least on this record, noncompetitive, differ completely in utility, have nothing in common with respect to their essential characteristics or sales appeal." Due to the specialized nature of the goods, and the careful and sophisticated purchasing thereof, it is respectfully submitted that confusion in the marketplace is unlikely. With regard to Reg. No. 1548284, the differences in the marks will also allow consumers to avoid confusion. Notably, the registration is for the mark ADVANEDGE which has a different sound and different commercial impression - the hard sound of a letter "T" is not present, and the word EDGE is specially formed at the end of the term. The "EDGE" is a feature of the product, namely a slim-line 'pipe' that allows for installation in a narrow trench, which gives a very different commercial impression. With regard to Reg. No. 4794446, the mark here is also quite different with the additional elements "CB PERFORMANCE". This too gives a different sound and commercial impression. These additional features of the cited registrations provide a further basis for consumers to distinguish the marks. That is, if consumers can distinguish the pipes and hoses of ADVANEGE and CB PERFORMANCE ADVANTAGE, they can also distinguish the applied-for trademark. Here, given the specialized nature of Applicant's goods and the care taken during purchasing, consumers are unlikely to be confused with ADVANEGE drainage pipes or CB PERFORMANCE ADVANTAGE garden hoses. The applicant’s goods as presently recited are significantly different so as to prevent any likelihood of confusion. Conclusion In view of all of the foregoing, Applicant respectfully requests that the rejection be reconsidered and withdrawn, and that this mark be passed to publication. If the Examining Attorney believes that personal communication will expedite prosecution of this application, the Trademark Attorney is invited to telephone the undersigned at (734) 302-6011. Attorney for Applicant is available to discuss any questions or issues raised by this Response and to assist the Trademark Attorney in any other way.
GOODS AND/OR SERVICES SECTION (current)
INTERNATIONAL CLASS	017
DESCRIPTION
Flexible hoses, not of metal; Flexible pipes, not of metal; Non-metallic hoses and flexible pipes; Non-metal flexible tubing
FILING BASIS	Section 1(a)
FIRST USE ANYWHERE DATE	At least as early as 06/01/1996
FIRST USE IN COMMERCE DATE	At least as early as 06/01/1996
GOODS AND/OR SERVICES SECTION (proposed)
INTERNATIONAL CLASS	017
TRACKED TEXT DESCRIPTION
Flexible hoses, not of metal; Flexible pipes, not of metal; Non-metallic hoses and flexible pipes; Non-metal flexible tubing; all of the aforementioned goods for aircraft fueling and petroleum transfer.
FINAL DESCRIPTION
Flexible hoses, not of metal; Flexible pipes, not of metal; Non-metallic hoses and flexible pipes; Non-metal flexible tubing; all of the aforementioned goods for aircraft fueling and petroleum transfer.
FILING BASIS	Section 1(a)
FIRST USE ANYWHERE DATE	At least as early as 06/01/1996
FIRST USE IN COMMERCE DATE	At least as early as 06/01/1996
SIGNATURE SECTION
RESPONSE SIGNATURE	/Michael N Spink/
SIGNATORY'S NAME	Michael N. Spink
SIGNATORY'S POSITION	Attorney of Record, Michigan and Illinois bar member
SIGNATORY'S PHONE NUMBER	734-302-6011
DATE SIGNED	08/27/2018
AUTHORIZED SIGNATORY	YES
FILING INFORMATION SECTION
SUBMIT DATE	Mon Aug 27 12:48:20 EDT 2018
TEAS STAMP	USPTO/ROA-XX.XXX.XX.XXX-2 0180827124820995731-87680 030-61091fec7e7399fbb27bb c89be2fec6a26233a5645b1ee 41b02327d7c6818d11cc-N/A- N/A-20180827111726426312

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. 87680030 ADVANTAGE(Standard Characters, see http://uspto.report/TM/87680030/mark.png) has been amended as follows:

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

REMARKS

This communication is in response to Office Action mailed on February 27, 2018, with respect to the above-identified application. Please reconsider the application in view of the remarks set forth below.

Likelihood of Confusion (Section 2(d) Refusal)

In the above-identified Office Action, the Examining Attorney has refused registration of the mark under § 2(d) of the Trademark Act, namely in view of Registration Nos. 1548284 and 4794446.

The identification of goods of the present application have been amended to clarify that applicant's goods are highly specialized products for the aerospace industry, and in particular for aircraft fueling and petroleum transfer. Accordingly, this also clarifies that only sophisticated purchasers exercising great care would purchase the relevant goods. For example, there are Federal regulations for fuel hoses in the aerospace industry, see 14 CFR Part 25 - Airworthiness Standards: Transport Category Airplanes, as well as industry standards such as ISO 1825:2017 and 2928:2003. It is respectfully submitted that due to the specialized nature of these goods and their application, consumers must also exhibit specialized, careful purchasing.

With regard to Reg. Nos. 1548284 and 4794446, the goods of these registrations are quite different and are unlikely to be encountered by or confused by consumers of fuel hoses for the aerospace industry. These cited registrations specify plastic drainage pipes for use along roadways, and garden hoses, respectively, which are non-competitive goods with different applications. Consumers of various hoses or pipes purchase these goods for specific end uses, and hence the goods are organized and sold by their application and end-use.

That is, consumers of specialized fuel and petroleum hoses, which carry special requirements and are purchased with care, are unlikely to encounter or be confused by drainage pipes or garden hoses. Likewise, consumers of garden hoses and drainage pipes are unlikely to encounter or be confused by fuel and petroleum hoses. See, e.g., In re Thor Tech, Inc., U.S.P.Q.2d 1546 (T.T.A.B. 2015), where the TTAB stated "[w]hile trucks and recreational towable trailers may occasionally be sold by the same retailers, we cannot overlook the facts that the products are, at least on this record, noncompetitive, differ completely in utility, have nothing in common with respect to their essential characteristics or sales appeal."

Due to the specialized nature of the goods, and the careful and sophisticated purchasing thereof, it is respectfully submitted that confusion in the marketplace is unlikely.

With regard to Reg. No. 1548284, the differences in the marks will also allow consumers to avoid confusion. Notably, the registration is for the mark ADVANEDGE which has a different sound and different commercial impression - the hard sound of a letter "T" is not present, and the word EDGE is specially formed at the end of the term. The "EDGE" is a feature of the product, namely a slim-line 'pipe' that allows for installation in a narrow trench, which gives a very different commercial impression.

With regard to Reg. No. 4794446, the mark here is also quite different with the additional elements "CB PERFORMANCE". This too gives a different sound and commercial impression.

These additional features of the cited registrations provide a further basis for consumers to distinguish the marks. That is, if consumers can distinguish the pipes and hoses of ADVANEGE and CB PERFORMANCE ADVANTAGE, they can also distinguish the applied-for trademark.

Here, given the specialized nature of Applicant's goods and the care taken during purchasing, consumers are unlikely to be confused with ADVANEGE drainage pipes or CB PERFORMANCE ADVANTAGE garden hoses. The applicant’s goods as presently recited are significantly different so as to prevent any likelihood of confusion.

Conclusion

In view of all of the foregoing, Applicant respectfully requests that the rejection be reconsidered and withdrawn, and that this mark be passed to publication. If the Examining Attorney believes that personal communication will expedite prosecution of this application, the Trademark Attorney is invited to telephone the undersigned at (734) 302-6011. Attorney for Applicant is available to discuss any questions or issues raised by this Response and to assist the Trademark Attorney in any other way.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 017 for Flexible hoses, not of metal; Flexible pipes, not of metal; Non-metallic hoses and flexible pipes; Non-metal flexible tubing
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 06/01/1996 and first used in commerce at least as early as 06/01/1996 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Flexible hoses, not of metal; Flexible pipes, not of metal; Non-metallic hoses and flexible pipes; Non-metal flexible tubing; all of the aforementioned goods for aircraft fueling and petroleum transfer.Class 017 for Flexible hoses, not of metal; Flexible pipes, not of metal; Non-metallic hoses and flexible pipes; Non-metal flexible tubing; all of the aforementioned goods for aircraft fueling and petroleum transfer.
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 06/01/1996 and first used in commerce at least as early as 06/01/1996 , and is now in use in such commerce.
SIGNATURE(S)
Response Signature
Signature: /Michael N Spink/ Date: 08/27/2018
Signatory's Name: Michael N. Spink
Signatory's Position: Attorney of Record, Michigan and Illinois bar member

Signatory's Phone Number: 734-302-6011

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: 87680030
Internet Transmission Date: Mon Aug 27 12:48:20 EDT 2018
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2018082712482099
5731-87680030-61091fec7e7399fbb27bbc89be
2fec6a26233a5645b1ee41b02327d7c6818d11cc
-N/A-N/A-20180827111726426312