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)

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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 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88131310 MICROLINE(Standard Characters, see http://uspto.report/TM/88131310/mark.png) has been amended as follows:

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

Applicant thanks the examining attorney for the thorough consideration given the present application.

2(d) likelihood of confusion:

Applicant's MICROLINE mark is refused registration for use with applicant's class 5 goods because of a likelihood of confusion with the following:

• Reg. No. 3859352 – MICROLINE for use with “surgical apparatus and instruments”;
  
  
• Reg. No. 4005305 – MICROLINE SURGICAL (design) for use with “surgical apparatus and instruments”; and
  
  
• Reg. No. 4537746 – MICROLYN for use with “dietary supplements.”
  

Applicant respectfully disagrees, but to advance prosecution of the application applicant has amended the application herein to delete the class 5 goods altogether from the identification of goods.

Applicant respectfully submits that the goods remaining in the application are sufficiently unrelated to those in the cited registrations to avoid a likelihood of confusion. The parties' goods, as amended, are not of a type that consumers reasonably may expect to emanate from a single source under the same mark. The parties' goods will travel through different channels of trade and their marks will not be encountered by consumers at the same time under circumstances where confusion reasonably may occur, thus the goods, as amended, are unrelated and there is no likelihood of confusion. See, e.g., Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1371, 101 USPQ2d 1713, 1723 (Fed. Cir. 2012) (affirming the Board’s dismissal of opposer’s likelihood-of-confusion claim, noting “there is nothing in the record to suggest that a purchaser of test preparation materials who also purchases a luxury handbag would consider the goods to emanate from the same source” though both were offered under the COACH mark); Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1244-45, 73 USPQ2d 1350, 1356 (Fed. Cir. 2004) (reversing TTAB’s holding that contemporaneous use of RITZ for cooking and wine selection classes and RITZ for kitchen textiles is likely to cause confusion, because the relatedness of the respective goods and services was not supported by substantial evidence); Local Trademarks, Inc. v. Handy Boys Inc., 16 USPQ2d 1156, 1158 (TTAB 1990) (finding liquid drain opener and advertising services in the plumbing field to be such different goods and services that confusion as to their source is unlikely even if they are offered under the same marks); Quartz Radiation Corp. v. Comm/Scope Co., 1 USPQ2d 1668, 1669 (TTAB 1986) (holding QR for coaxial cable and QR for various apparatus used in connection with photocopying, drafting, and blueprint machines not likely to cause confusion because of the differences between the parties’ respective goods in terms of their nature and purpose, how they are promoted, and who they are purchased by).

In view of the foregoing, applicant respectfully requests withdrawal of the section 2(d) refusal.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 005 for Pharmaceutical preparations; veterinary preparations; drugs for medical purposes; medicines for human purposes; dental materials; dietary supplements for humans; dietetic beverages adapted for medical purposes; dietetic foods adapted for medical purposes; dietary supplements for animals; semen for artificial insemination; bacterial preparations for medical and veterinary use; bacteriological preparations for medical and veterinary use; cultures of microorganisms for medical and veterinary use; cultures of microorganism for medical and veterinary use; preparations of microorganism for medical and veterinary use; Gauze for medical purposes; gauze for dressings; dressings, medical; bandages for dressings; babies' diaper-pants; napkins for incontinents; pants, absorbent, for incontinents; reagent paper for medical purposes; in vitro diagnostic preparations for medical use; kits of in vitro diagnostic preparations for medical use; cellulose powder used as carrier for antibody binding in kits of in vitro diagnostic preparations for medical use

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 024 for Woven fabrics; textile used as lining for clothing; knitted fabrics; elastic woven materials, namely, elastic fabrics for clothing; jersey fabrics; felt and non-woven textile fabrics; towels of textile; textile handkerchiefs; bath linen, except clothing; bed linen; bed sheets; pillow slips; bed blankets; cotton blankets; filtering materials of textile; unfitted seat coverings of textile; wall hangings of textile; fabric curtains; table cloths, not of paper; draperies, namely, thick drop curtains; unfitted furniture coverings of textile fabric
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.

Proposed:
Tracked Text Description: Woven fabrics; textile used as lining for clothing; knitted fabrics; elastic woven materials, namely, elastic fabrics for clothing; jersey fabrics; jersey fabrics for clothing; felt and non-woven textile fabrics; towels of textile; textile handkerchiefs; bath linen, except clothing; bed linen; bed sheets; pillow slips; pillow slips, namely, pillowcases; bed blankets; cotton blankets; cotton bed blankets; filtering materials of textile; filtering materials of textile, namely, mesh-woven fabrics; unfitted seat coverings of textile; wall hangings of textile; fabric curtains; table cloths, not of paper; draperies, namely, thick drop curtains; unfitted furniture coverings of textile fabricClass 024 for Woven fabrics; textile used as lining for clothing; knitted fabrics; elastic woven materials, namely, elastic fabrics for clothing; jersey fabrics for clothing; felt and non-woven textile fabrics; towels of textile; textile handkerchiefs; bath linen, except clothing; bed linen; bed sheets; pillow slips, namely, pillowcases; bed blankets; cotton bed blankets; filtering materials of textile, namely, mesh-woven fabrics; unfitted seat coverings of textile; wall hangings of textile; fabric curtains; table cloths, not of paper; draperies, namely, thick drop curtains; unfitted furniture coverings of textile fabric
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.

ADDITIONAL STATEMENTS
Significance of wording, letter(s), or numeral(s)
MICROLINE appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as used in connection with the goods/services/collective membership organization listed in the application, or any geographical significance.


Miscellaneous Statement
REMARKS: Applicant has submitted argument in response to the 2(d) likelihood of confusion refusal, amended the identification of goods, and confirmed that MICROLINE appearing in the mark has no significance or meaning in the relevant industry and it is not a term of art. There being no other issues raised in the Office Action, applicant believes that the present application is in condition to be approved for publication. An early Notice of Publication thereafter is respectfully requested. If the examining attorney has any questions concerning this application, the examining attorney is requested to contact Robert J. Kenney at (703) 205-8000 in the Washington, D.C. area.


SIGNATURE(S)
Response Signature
Signature: /Robert J. Kenney/     Date: 03/06/2019
Signatory's Name: Robert J. Kenney
Signatory's Position: Attorney of record, VA bar member

Signatory's Phone Number: 703-205-8000

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: 88131310
Internet Transmission Date: Wed Mar 06 15:47:08 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-201903061547085
98969-88131310-620a824d078d6a8a53d0e0c79
5219dbe31ad9963da5b13d6c6caafaaf519a6a0-
N/A-N/A-20190306152854464940