| 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 | 87854222 |
| LAW OFFICE ASSIGNED | LAW OFFICE 111 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/87854222/mark.png |
| LITERAL ELEMENT | LYNX |
| 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) | |
|
TRADEMARK IN THE UNITED STATES PATENT AND TRADEMARK OFFICE Applicant: Global Polishing Solutions LLC Serial No: 87/854,222 Filed: March 28, 2018 Mark: LYNX Atty Dkt. No.: 27636.290011 Office Action Date: July 16, 2018 Exam. Atty: Zachery Bello Law Office: 111 AMENDMENT AND RESPONSE Dear Sir: This is in response to the Examiner’s Office Action electronically mailed on July 16, 2018. This amendment and response is intended to be a complete response thereto.
Identification of Goods and Services Per the Examiner’s suggestion, Applicant respectfully requests to delete the previous identification of goods and or services and now amend the identification of goods to read as follows: Pads for floor polishing machines in International Class 7. RESPONSE In Re Search Results The Examining Attorney has refused registration because of an alleged likelihood of confusion with the mark in U.S. Registration Number 2,727,994 for under the Trademark Act Section 2(d), 15 U.S.C. Section 1052(d). The refusal was based on the prior Registrant for: Concrete and asphalt cleaning preparations; vat stripper cleaning preparations; steam cleaner preparations, namely, liquid concentrates for liquid steam pressure cleaning and stripper and solvents for removing grease, oil and dirt from hard surfaces; automotive cleaning preparations, namely, coated wheel cleaners, grill cleaners, whitewall tire cleaners, protectant coatings for rubber tires, bumpers, seals and mats, vinyl, leather and plastic; car and truck wash detergents and waxes; laundry soaps; oven, grill and fryer cleaning preparations; engine cleaning preparations; milk processor cleaning preparations; laundry bleach; degreaser cleaning preparations for non-manufacturing processes, namely, walls and floors, countertops and automobile engines; aluminum cleaning preparations; brick cleaning preparations; and paint strippers all for industrial or institutional use; toilet bowl cleaning preparations for industrial use; stripping, cleaning and finishing preparations for floors; all purpose cleaning preparations; hand and body soap, carpet cleaning preparations; glass cleaning preparations; and furniture polish in International Class 3.
And also for: polyurethane concrete and flooring sealants and coatings in international Class 17. Applicant respectfully disagrees. Applicant would argue that the case at hand clearly demonstrates that there is no likelihood of confusion between the Applicant and the prior Registrant due to the very different nature of each actual goods and service provided, the weakness in the terms of the marks, the sophistication of consumers, and cost of services. First, it is well settled that if the common elements of a term are weak, any likelihood of confusion is reduced. See Jahn USA Publishing v. Meredith Corp. 26 USPQ 2d 1583 (2d Cir. 1993). The weakness in the term LYNX in particular can be demonstrated by the fact that there is a plethora of other registered marks with the exact same terms. Records indicate at least 42 registrations in International Class 3 and 64 registrations in International Class 7. This clearly indicates that the term "LYNX" is relatively weak. Second, any analysis of likelihood of confusion necessarily involves a comparison of the goods and services in question. In order for likelihood of confusion to exist, there must be some relationship or circumstances surrounding the services that would lead consumers to believe they came from a common source. No such relationship or circumstances exist here. The prior Registrant does not make or sell equipment, but cleaning products that may be used on concrete. Applicant sells specifically pads used for polishing and not cleaning. The relevant target consumer for Applicant is not the same as would be for the prior Registrant and vice versa. Third, if the goods (or services) are expensive, the reasonable prudent buyer does not buy causally, but only after careful consideration. Thus, confusion is less likely than where goods (or services) are cheap and bought casually. Kiekhaefer Corp. v. Willys-verland Motors, Inc. 236 F.2d 432, 134 (C.C.P.A. 1956). The Applicant and prior Registrant do not sell retail, but wholesale to a very specific sophisticated users. Someone that would potentially buy Applicants goods or Registrants would know the difference between a pad used for polishing concrete and cleaning products. Applicant respectfully submits that the refusal based on the likelihood of confusion with the prior Registrant should be reversed for the above reasons. Applicant submits there is no likelihood of confusion.
In Re Identification of Goods and Services Applicant has amended the identification of services in view of the Examining Attorney's comments and suggested wording in regards to International Class 7. Applicant would state that the amendment does further clarify and limit the identification. Applicant does not believe the amendment adds to the identification pursuant to 37 C.F.R. Section 2.71(a).
CONCLUSION For all the foregoing reasons, it is believed that the application is now in condition for allowance and such action is earnestly solicited. Applicant would welcome a phone call to resolve any issues or questions. Respectfully submitted,
/martingozinga/ Martin G. Ozinga, Reg. No. 44,992, OBA #13890 Phillips Murrah, P.C. Corporate Tower, 13th Floor 101 N. Robinson Ave. Oklahoma City, OK 73102 405-235-4100 ph 405-235-4133 fax ip@phillipsmurrah.com
Attorney for Applicant |
|
| GOODS AND/OR SERVICES SECTION (class deleted) | |
| GOODS AND/OR SERVICES SECTION (class added) Original Class (003) | |
| INTERNATIONAL CLASS | 007 |
| DESCRIPTION | PADS FOR FLOOR POLISHING MACHINES |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 06/30/2017 |
| FIRST USE IN COMMERCE DATE | At least as early as 06/30/2017 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /martingozinga/ |
| SIGNATORY'S NAME | Martin G. Ozinga |
| SIGNATORY'S POSITION | Attorney of Record, Oklahoma Bar #13890 |
| SIGNATORY'S PHONE NUMBER | 405-235-4100 |
| DATE SIGNED | 01/10/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu Jan 10 16:06:07 EST 2019 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XXX.XXX -20190110160607147129-878 54222-620c65aa2bc43ff4565 e7927bbec3f3ef98e15b3d97c 2b68806291d14c416f5f-N/A- N/A-20190110155728479890 |
| 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) |
TRADEMARK
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
Applicant: Global Polishing Solutions LLC
Serial No: 87/854,222
Filed: March 28, 2018
Mark: LYNX
Atty Dkt. No.: 27636.290011
Office Action Date: July 16, 2018
Exam. Atty: Zachery Bello
Law Office: 111
AMENDMENT AND RESPONSE
Dear Sir:
This is in response to the Examiner’s Office Action electronically mailed on July 16, 2018. This amendment and response is intended to be a complete response thereto.
Identification of Goods and Services
Per the Examiner’s suggestion, Applicant respectfully requests to delete the previous identification of goods and or services and now amend the identification of goods to read as follows:
Pads for floor polishing machines in International Class 7.
RESPONSE
In Re Search Results
The Examining Attorney has refused registration because of an alleged likelihood of confusion with the mark in U.S. Registration Number 2,727,994 for under the Trademark Act Section 2(d), 15 U.S.C. Section 1052(d). The refusal was based on the prior Registrant for:
Concrete and asphalt cleaning preparations; vat stripper cleaning preparations; steam cleaner preparations, namely, liquid concentrates for liquid steam pressure cleaning and stripper and solvents for removing grease, oil and dirt from hard surfaces; automotive cleaning preparations, namely, coated wheel cleaners, grill cleaners, whitewall tire cleaners, protectant coatings for rubber tires, bumpers, seals and mats, vinyl, leather and plastic; car and truck wash detergents and waxes; laundry soaps; oven, grill and fryer cleaning preparations; engine cleaning preparations; milk processor cleaning preparations; laundry bleach; degreaser cleaning preparations for non-manufacturing processes, namely, walls and floors, countertops and automobile engines; aluminum cleaning preparations; brick cleaning preparations; and paint strippers all for industrial or institutional use; toilet bowl cleaning preparations for industrial use; stripping, cleaning and finishing preparations for floors; all purpose cleaning preparations; hand and body soap, carpet cleaning preparations; glass cleaning preparations; and furniture polish in International Class 3.
And also for:
polyurethane concrete and flooring sealants and coatings in international Class 17.
Applicant respectfully disagrees. Applicant would argue that the case at hand clearly demonstrates that there is no likelihood of confusion between the Applicant and the prior Registrant due to the very different nature of each actual goods and service provided, the weakness in the terms of the marks, the sophistication of consumers, and cost of services.
First, it is well settled that if the common elements of a term are weak, any likelihood of confusion is reduced. See Jahn USA Publishing v. Meredith Corp. 26 USPQ 2d 1583 (2d Cir. 1993). The weakness in the term LYNX in particular can be demonstrated by the fact that there is a plethora of other registered marks with the exact same terms. Records indicate at least 42 registrations in International Class 3 and 64 registrations in International Class 7. This clearly indicates that the term "LYNX" is relatively weak.
Second, any analysis of likelihood of confusion necessarily involves a comparison of the goods and services in question. In order for likelihood of confusion to exist, there must be some relationship or circumstances surrounding the services that would lead consumers to believe they came from a common source. No such relationship or circumstances exist here.
The prior Registrant does not make or sell equipment, but cleaning products that may be used on concrete. Applicant sells specifically pads used for polishing and not cleaning. The relevant target consumer for Applicant is not the same as would be for the prior Registrant and vice versa.
Third, if the goods (or services) are expensive, the reasonable prudent buyer does not buy causally, but only after careful consideration. Thus, confusion is less likely than where goods (or services) are cheap and bought casually. Kiekhaefer Corp. v. Willys-verland Motors, Inc. 236 F.2d 432, 134 (C.C.P.A. 1956). The Applicant and prior Registrant do not sell retail, but wholesale to a very specific sophisticated users. Someone that would potentially buy Applicants goods or Registrants would know the difference between a pad used for polishing concrete and cleaning products.
Applicant respectfully submits that the refusal based on the likelihood of confusion with the prior Registrant should be reversed for the above reasons. Applicant submits there is no likelihood of confusion.
In Re Identification of Goods and Services
Applicant has amended the identification of services in view of the Examining Attorney's comments and suggested wording in regards to International Class 7. Applicant would state that the amendment does further clarify and limit the identification. Applicant does not believe the amendment adds to the identification pursuant to 37 C.F.R. Section 2.71(a).
CONCLUSION
For all the foregoing reasons, it is believed that the application is now in condition for allowance and such action is earnestly solicited. Applicant would welcome a phone call to resolve any issues or questions.
Respectfully submitted,
/martingozinga/
Martin G. Ozinga, Reg. No. 44,992, OBA #13890
Phillips Murrah, P.C.
Corporate Tower, 13th Floor
101 N. Robinson Ave.
Oklahoma City, OK 73102
405-235-4100 ph 405-235-4133 fax
ip@phillipsmurrah.com
Attorney for Applicant