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 | 88117401 |
LAW OFFICE ASSIGNED | LAW OFFICE 120 |
MARK SECTION | |
MARK | http://uspto.report/TM/88117401/mark.png |
LITERAL ELEMENT | GMV |
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) | |
Applicant respectfully disagrees with the examiner. The examiner cites four marks: GMV Innovating Solutions, GMV, Solar GMV, and Ultra Heating GMV. As to GMV, Solar GMV and Ultra Heating GMV, all are related to air conditioners according to the examiner. Applicant agrees. This causes the du Pont factor cited by the examiner, relatedness of the compared goods, to fail. Namely, the instant goods are “hydraulic hoses made primarily of rubbery material namely, nitrile or polychloroprene”. The goods bearing the specimen support this description. Hydraulic hoses of the sort at issue here are not used in air conditioners. The goods are not related. Instead, applicant’s hydraulic hoses are used in industrial equipment. For example, the examiner is referred to applicant’s catalogue pages http://www.gates.com/us/en/fluid-power/hydraulic-hose-couplings/textile-braid-hose-couplings-and-assemblies/gmv-global-megavac-return-line-and-suction-hose/p/p100401. This page indicates GMV hose is “recommended for petroleum and water-base hydraulic fluids in suction lines or in low pressure return lines”. For example, the goods can be used in systems for oil refineries or manufacturing facilities. No mention is made of air conditioners, or that applicant’s goods can be used or are used in air conditioners. Respectfully, the examiner provides no evidence of relatedness of applicant’s goods to registrant’s or air conditioners. No cites are made to any of the registrant’s products by catalogue, part number, or otherwise that would tend to indicate the applicant’s hose is used in registrant’s air conditioners or that any overlap or relatedness exists between the goods and air conditioners generally. Regarding GMV Innovating Solutions, the extremely broad goods description is suspect in terms of commercial use since it spans from elevators, to incubators for eggs, to airships to name only a few of the hundreds listed. This appears to be an extraordinarily diverse company. However, the examiner focuses on motors not for land vehicles. Again, turning to the goods description in the application and on the applicant’s website, no connection or reference is made to motors not for land vehicles. The examiner provides no persuasive evidence of a connection or relatedness, neither from applicant’s description nor from any use of the mark by registrant on goods in commerce related to motors not for land vehicles. Regarding the du Pont factors, lacking goods in commerce there can be no relatedness by customer or channels of trade. The examiner’s conclusory statements are not sufficient to support the 2(d) refusal based on likelihood of confusion. Respectfully, Applicant is not required to prove a negative, the burden is on the examiner to provide evidence sufficient to prove relatedness in support of the 2(d) refusal. Failing this, the refusal should be withdrawn. It is notable that the three cited registrations clearly directed to air conditioners co-exist with each other, and yet the combination is cited to refuse the pending application even though no evidence is provided to demonstrate relatedness of the applicant’s hydraulic hose goods to air conditioners. Applicant requests the refusal be withdrawn and the application passed to publication. |
|
GOODS AND/OR SERVICES SECTION (current) | |
INTERNATIONAL CLASS | 017 |
DESCRIPTION | Hydraulic hoses made of rubbery material |
FILING BASIS | Section 1(a) |
FIRST USE ANYWHERE DATE | At least as early as 12/30/2009 |
FIRST USE IN COMMERCE DATE | At least as early as 12/30/2009 |
GOODS AND/OR SERVICES SECTION (proposed) | |
INTERNATIONAL CLASS | 017 |
TRACKED TEXT DESCRIPTION | |
FINAL DESCRIPTION | |
Hydraulic hoses made of rubbery material, namely, nitrile and chloroprene | |
FILING BASIS | Section 1(b) |
DELETED FILING BASIS | 1(a); |
CORRESPONDENCE SECTION | |
ORIGINAL ADDRESS | JEFFREY A. THURNAU GATES CORPORATION 1144 15TH STREET DENVER Colorado US 80202 |
NEW CORRESPONDENCE SECTION | |
NAME | JEFFREY A. THURNAU |
FIRM NAME | GATES CORPORATION |
DOCKET/REFERENCE NUMBER | 8594 |
INTERNAL ADDRESS | Suite 1400 |
STREET | 1144 15TH STREET |
CITY | DENVER |
STATE | Colorado |
ZIP/POSTAL CODE | 80202 |
COUNTRY | United States |
PHONE | 303-744-4743 |
FAX | 303 744-5060 |
jt4006@gates.com;eh1806@gates.com | |
AUTHORIZED EMAIL COMMUNICATION | Yes |
SIGNATURE SECTION | |
DECLARATION SIGNATURE | /jeffrey thurnau/ |
SIGNATORY'S NAME | Jeffrey Thurnau |
SIGNATORY'S POSITION | Attorney of record, Colorado bar member |
SIGNATORY'S PHONE NUMBER | 303-744-4743 |
DATE SIGNED | 05/09/2019 |
RESPONSE SIGNATURE | /jeffrey thurnau/ |
SIGNATORY'S NAME | Jeffrey Thurnau |
SIGNATORY'S POSITION | Attorney of record, Colorado bar member |
SIGNATORY'S PHONE NUMBER | 303-744-4743 |
DATE SIGNED | 05/09/2019 |
AUTHORIZED SIGNATORY | YES |
FILING INFORMATION SECTION | |
SUBMIT DATE | Thu May 09 15:07:53 EDT 2019 |
TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XXX- 20190509150753168250-8811 7401-620b0933353e237f3653 35376f0beea3273516f2484de d567561c9c824aa1e5306c-N/ A-N/A-2019050914121103246 7 |
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) |
Applicant respectfully disagrees with the examiner. The examiner cites four marks: GMV Innovating Solutions, GMV, Solar GMV, and Ultra Heating GMV.
As to GMV, Solar GMV and Ultra Heating GMV, all are related to air conditioners according to the examiner. Applicant agrees. This causes the du Pont factor cited by the examiner, relatedness of the compared goods, to fail. Namely, the instant goods are “hydraulic hoses made primarily of rubbery material namely, nitrile or polychloroprene”. The goods bearing the specimen support this description. Hydraulic hoses of the sort at issue here are not used in air conditioners. The goods are not related. Instead, applicant’s hydraulic hoses are used in industrial equipment. For example, the examiner is referred to applicant’s catalogue pages http://www.gates.com/us/en/fluid-power/hydraulic-hose-couplings/textile-braid-hose-couplings-and-assemblies/gmv-global-megavac-return-line-and-suction-hose/p/p100401. This page indicates GMV hose is “recommended for petroleum and water-base hydraulic fluids in suction lines or in low pressure return lines”. For example, the goods can be used in systems for oil refineries or manufacturing facilities. No mention is made of air conditioners, or that applicant’s goods can be used or are used in air conditioners. Respectfully, the examiner provides no evidence of relatedness of applicant’s goods to registrant’s or air conditioners. No cites are made to any of the registrant’s products by catalogue, part number, or otherwise that would tend to indicate the applicant’s hose is used in registrant’s air conditioners or that any overlap or relatedness exists between the goods and air conditioners generally.
Regarding GMV Innovating Solutions, the extremely broad goods description is suspect in terms of commercial use since it spans from elevators, to incubators for eggs, to airships to name only a few of the hundreds listed. This appears to be an extraordinarily diverse company. However, the examiner focuses on motors not for land vehicles. Again, turning to the goods description in the application and on the applicant’s website, no connection or reference is made to motors not for land vehicles. The examiner provides no persuasive evidence of a connection or relatedness, neither from applicant’s description nor from any use of the mark by registrant on goods in commerce related to motors not for land vehicles. Regarding the du Pont factors, lacking goods in commerce there can be no relatedness by customer or channels of trade.
The examiner’s conclusory statements are not sufficient to support the 2(d) refusal based on likelihood of confusion. Respectfully, Applicant is not required to prove a negative, the burden is on the examiner to provide evidence sufficient to prove relatedness in support of the 2(d) refusal. Failing this, the refusal should be withdrawn.
It is notable that the three cited registrations clearly directed to air conditioners co-exist with each other, and yet the combination is cited to refuse the pending application even though no evidence is provided to demonstrate relatedness of the applicant’s hydraulic hose goods to air conditioners.
Applicant requests the refusal be withdrawn and the application passed to publication.
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.