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)

---

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. 87774327 HURRICANE (Stylized and/or with Design, see http://uspto.report/TM/87774327/mark.png) has been amended as follows:

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

Applicant respectfully requests reconsideration of the refusal to register HURRICANE (& design) for certain goods in international class 7. The examining attorney contends that Applicant's mark is likely to cause confusion with the HURRICANE (& design) Registration No. 3,375,913 for a limited portion of the recited goods, namely, "power operated tools...hoses for power tools." Applicant has amended its recitation of goods to restrict all rejected goods for use in the motorsport industry, thereby, narrowing the relevant consumers and trade channels. As a leader in the motorsport industry, Applicant is well known to motorsport customers for the goods it manufactures and sells. Its fame in this narrow field, along with the differences in the goods of this application and the '913 registration, as discussed below, weighs against a likelihood of confusion. The power tools for the motorsport industry, as recited in the present application, are not similar to the hand tools recited in the '913 registration. The former are high-powered and industry specific. They are used by a small set of knowledgeable, skilled mechanics. The latter are standard hand tools used by the general public which one might find at any hardware store. A customer in search of the tools of the present application would know the specific sources and channels in which the tools could be purchased, which would likely not cross over with those of the '913 registration. For those customers in search of the tools of the '913 registration, they also would likely not encounter those of the present application, which are sold through specific, narrow trade channels. Thus, consumers would not be confused as to the source of products sold under the two marks. Though classes are not determinative in a likelihood of confusion analysis, the fact that Applicant's goods are in international class 7 and those of the '913 registration are in international class 8 underscores the differences between the tools. Class 7 includes only power tools and class 8 includes only hand tools. There is enough of a distinction between the two types of tools that they are located in separate international classes. The differences must be relevant, and that distinction cannot be ignored. This can be seen by the 20 registrations in international class 7 that use HURRICANE as a portion of the mark. Though all of those registrations are related in some way to machinery and power tools, there is enough of a discrepancy between the types of machinery and/or power tools recited in each registration that 20 similar marks have been registered. Considering the amendment in the present application to restrict the power tools to those used in the motorsport industry, there should be space within the different tool fields to allow for registration of the subject mark. In fact, both marks are currently used within the European Union and have existed peacefully without any known confusion. There is no reason why they could not also peacefully exist in the U.S. Considering the differences between the goods and the knowledge and understanding of the consumers, the differences in the appearance of the marks further weighs against a likelihood of confusion. Though both marks use HURRICANE as the dominant portion of the mark, the mark of the '913 registration has replaced the "c" in the middle of the mark with a two-dimensional spiral pattern, and, alternatively, the mark of the present application includes five successive circular objects partly covering the "H", resembling a three-dimensional cyclone. Further, the term HURRICANE of the '913 registration is in italics and all of the letters but the "H" are in lowercase, while the term HURRICANE of the present application is not in italics and all of the letters are in uppercase. These differences add to the overall differences between the present application and the '913 registration, further weighing against a likelihood of confusion. In light of Applicant's amendment to the recited goods of the application, its fame in the industry and the sophistication of its customers, the recognized importance of the differences between types and fields of tools, and the differences in the appearance of the marks, passage of the mark to publication is warranted.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 007 for motors and engines except for land vehicles; machine coupling and transmission components except for land vehicles; power operated tools, namely, impact wrenches, ratchet wrenches, air drills, air grinders, orbital sanders, torque wrenches, air screwdrivers; parts for power operated tools, namely, air filters, lubricators, regulators, inflator tips, inflator valves, valve adapters, nozzles, nipples, couplers, connectors, junctions, pivots, and torsion bars; extension bars for power tools; non-electrical adapters for use in joining extensions and power tool bits, all being parts of machines; hoses for power tools
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ European Community - CTM application number 017722521 filed 01/23/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: motors and engines except for land vehicles; machine coupling and transmission components except for land vehicles; power operated tools, namely, impact wrenches, ratchet wrenches, air drills, air grinders, orbital sanders, torque wrenches, air screwdrivers; power operated tools, namely, impact wrenches, ratchet wrenches, air drills, air grinders, orbital sanders, torque wrenches, air screwdrivers for use in the motorsport industry; parts for power operated tools, namely, air filters, lubricators, regulators, inflator tips, inflator valves, valve adapters, nozzles, nipples, couplers, connectors, junctions, pivots, and torsion bars; parts for power operated tools, namely, air filters, lubricators, regulators, inflator tips, inflator valves, valve adapters, nozzles, nipples, couplers, connectors, junctions, pivots, and torsion bars for use in the motorsport industry; extension bars for power tools; non-electrical adapters for use in joining extensions and power tool bits, all being parts of machines; non-electrical adapters for use in joining extensions and power tool bits, all being parts of machines for use in the motorsport industry; hoses for power tools; hoses for power tools for use in the motorsport industryClass 007 for motors and engines except for land vehicles; machine coupling and transmission components except for land vehicles; power operated tools, namely, impact wrenches, ratchet wrenches, air drills, air grinders, orbital sanders, torque wrenches, air screwdrivers for use in the motorsport industry; parts for power operated tools, namely, air filters, lubricators, regulators, inflator tips, inflator valves, valve adapters, nozzles, nipples, couplers, connectors, junctions, pivots, and torsion bars for use in the motorsport industry; extension bars for power tools; non-electrical adapters for use in joining extensions and power tool bits, all being parts of machines for use in the motorsport industry; hoses for power tools for use in the motorsport industry
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ European Community - CTM application number 017722521 filed 01/23/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

SIGNATURE(S)
Response Signature
Signature: /LELjr/     Date: 10/19/2018
Signatory's Name: Lawrence E. Laubscher, Jr.
Signatory's Position: Attorney of record, Maryland bar

Signatory's Phone Number: 4102806608

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: 87774327
Internet Transmission Date: Fri Oct 19 14:31:34 EDT 2018
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20181019143134050
645-87774327-6108a3248547b2e9cdef19cadf5
bcf35966a41b6e6b417815692a12767ec6848-N/
A-N/A-20181019142348773998