TEAS Petition to Revive Abandon Applic

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 2194 (Rev 03/2012)

OMB No. 0651-0054 (Exp 12/31/2020)

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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 2194 (Rev 03/2012)

OMB No. 0651-0054 (Exp 12/31/2020)

Petition To Revive Abandoned Application - Failure To Respond Timely To Office Action

To the Commissioner for Trademarks:

Application serial no. 88080528 CASTLE CARE(Standard Characters, see http://uspto.report/TM/88080528/mark.png) has been amended as follows: PETITION Petition Statement
Applicant has firsthand knowledge that the failure to respond to the Office Action by the specified deadline was unintentional, and requests the USPTO to revive the abandoned application.RESPONSE TO OFFICE ACTION

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

The examiner has refused registration based on a prior registration of a stylized version of CASTLE.  Although both marks share the word CASTLE, that word has different connotations in each of the two marks.    The cited registration is owned by a company called Comstock-Castle, which, according to the company website, is named after the two founders of the company.  With both COMSTOCK and CASTLE being surnames of a founder of that company, and that surname significance being promoted in the company literature, purchasers of products sold under the cited CASTLE mark will perceive the mark as having the connotation of a surname.    In contrast, the applicant’s corporate name is PRINCE CASTLE.  This combination of words has a connotation of royalty, not of surnames.  Consequently, the applicant’s CASTLE CARE mark will also have a connotation of royalty, rather than a connotation of a surname.    The difference in connotation is sufficient here because the applicant’s services are sold to sophisticated purchasers: owners and operators of restaurants.  See, e.g., In re N.A.D., Inc., 754 F.2d 996, 999-1000, 224 USPQ 969, 971 (Fed. Cir. 1985) (concluding that, because only sophisticated purchasers exercising great care would purchase the relevant goods, NARCO and NARKOMED were unlikely to be confused.)   The applicant began using its PRINCE CASTLE mark in the 1950’s, and first federally registered it in 1957 (reg. 647187, now expired).  Both Prince Castle and Comstock- Castle are based in Illinois, and have been operating under their respective corporate names since at least the 1950’s.  Prince Castle is not aware of any instances of actual confusion, or of any objection from Comstock-Castle to the use of the PRINCE CASTLE name over the generations, or to the use of the CASTLE CARE mark today.   Because so many years have passed since the co-existence began, there is likely no one buying products like these today that was in a similar position before the co-existence began.  Unless some institutional buyer has been working in the industry for more than sixty years, he or she has never experienced a situation where the two companies were not peacefully co-existing.        To paraphrase the appellate court’s decision in In re E. I. du Pont de Nemours & Co., 177 USPQ 563, 568 (CCPA 1973), the USPTO should not imagine confusion where the parties who are in the best position to experience it and suffer its consequences have not seen it.

EVIDENCE
Evidence in the nature of The homepage of the owner of the cited registration, showing the surname significance of CASTLE in that mark. has been attached.
Original PDF file:
evi_5020216131-20190610145431936916_._comstockcastle.pdf
Converted PDF file(s) ( 7 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 037 for Technical support services, namely, technical advice related to the repair of food service equipment; Maintenance of machines and apparatus for processing foods; Leasing of food service equipment
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 04/16/2018 and first used in commerce at least as early as 04/16/2018 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Technical support services, namely, technical advice related to the repair of food service equipment; Maintenance of machines and apparatus for processing foods; Leasing of food service equipmentClass 037 for Technical support services, namely, technical advice related to the repair of food service equipment; Maintenance of machines and apparatus for processing foods
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 04/16/2018 and first used in commerce at least as early as 04/16/2018 , and is now in use in such commerce.
ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use CARE apart from the mark as shown.


FEE(S)
Fee(s) in the amount of $100 is being submitted.

SIGNATURE(S)

Signature: /rmlabarge/      Date: 06/11/2019
Signatory's Name: Richard M. LaBarge
Signatory's Position: Attorney of record, Illinois bar member
Signatory's Phone Number: 312 474-6646


Response Signature
Signature: /rmlabarge/     Date: 06/11/2019
Signatory's Name: Richard M. LaBarge
Signatory's Position: Attorney of record, Illinois bar member

Signatory's Phone Number: 312 474-6646

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 applicant 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.

        
RAM Sale Number: 88080528
RAM Accounting Date: 06/12/2019
        
Serial Number: 88080528
Internet Transmission Date: Tue Jun 11 15:52:53 EDT 2019
TEAS Stamp: USPTO/POA-XX.XXX.XX.XXX-2019061115525346
5608-88080528-620aba639b6e8fc29d6f7c0b74
941dc5434dbd46d25d227a163b67d2f877a5b9ca
-CC-2546-20190610145431936916