NOTE TO THE FILE
Sent to TICRS as Serial Number: 88200945SERIAL NUMBER: 88149768
DATE: 12/13/2018
NAME: thussain
NOTE:
From: Konkel, Laura M (22254) [mailto:lmkonkel@michaelbest.com]
Sent: Wednesday, December 12, 2018 4:34 PM
To: Hussain, Tasneem <Tasneem.Hussain@USPTO.GOV>
Cc: MKEIPDocket <MKEIPDocket@michaelbest.com>
Subject: RE: SERIAL NUMBER 88149768 ONE PWR - three issues
Thank you,
Laura
Laura M. Konkel
Partner
T 608.283.2254 | michaelbest.com
Michael Best & Friedrich LLP
From: Hussain, Tasneem [mailto:Tasneem.Hussain@USPTO.GOV]
Sent: Wednesday, December 12, 2018 1:30 PM
To: Konkel, Laura M (22254)
Cc: MKEIPDocket
Subject: SERIAL NUMBER 88149768 ONE PWR - three issues
Good afternoon,
I am the examining attorney assigned to the application cited above. The following must be resolved before the application can proceed to registration.
Trademark Act Section 2(d) Refusal and ID
Just as in APPLICATION NO. 87285959, registration of the applied-for mark will be refused because of a likelihood of confusion with the registered marks POWER ONE in U.S. Registration Nos. 1154641 and 2867297 because the marks are confusingly similar and applicant's “batteries” encompass registrant’s more narrowly identified “primary batteries” and “rechargeable batteries.” As applicant already has “batteries” in the copending application, applicant may either (a) delete “batteries” from this application or (b) respond to the Section 2(d) refusal with arguments and/or a consent agreement and amendment of the ID as it did in the copending application.
Disclaimer
Just as in APPLICATION NO. 87285959, applicant must disclaim the wording POWER because it is descriptive of applicant’s power operated or power supplying goods. TMEP §1213. The following is the standard format used by the Office:
No claim is made to the exclusive right to use “POWER” in International Classes 007, 009, and 011 apart from the mark as shown.
TMEP §1213.08(a)(i).
Identification of Goods
The wording “sound systems” in Class 009, “lights” in Class 011, and “brushes” in Class 021 require further clarification as to the goods justified in each class. See TMEP §§1402.01, 1402.03. Applicant may substitute the following wording, if accurate:
CLASS 007: Power-operated blowers; power-operated sweepers; power-operated window cleaning machines
CLASS 009: Radios; audio speakers; sound systems comprising remote controls, amplifiers, loudspeakers and components therefor; batteries
CLASS 011: Portable utility lights; portable battery-operated lights that can be placed on surfaces where other lights sources are unavailable; power-operated fans
CLASS 021: Floor brushes; cleaning brushes for household use; washing brushes; squeegees
For assistance with identifying and classifying goods in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tmidm.gov.uspto.report/id-master-list-public.html. See TMEP §1402.04.
CONCLUSION: If an authorized attorney of record agrees to the above, I can prepare an Examiner’s Amendment and/or Priority Action. If I do not hear from anyone by the close of business on FRIDAY 5:00pm (EST), I will have to proceed with a formal Office Action but you may still respond thereafter to agree to the above.
Thank you,
/Ms. Tasneem Hussain/
Trademark Examining Attorney