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. 88206826 BOYD (Stylized and/or with Design, see http://uspto.report/TM/88206826/mark.png) has been amended as follows:

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

I.              Remarks 

The Examining Attorney has issued an Office Action provisionally refusing registration of Serial No. 88206826 for the proposed BOYD trademark in composite design form.  The provisional refusal is based upon the following grounds:

·        Likelihood of confusion with U.S. Registration No. 4745403 under Section 2(d) of the Trademark Act due to similarities of descriptions of goods in Class 20; and

·        Insufficient evidence of use of Applicant’s mark in commerce to support registration in Classes 20 and 28.

 

The Examining Attorney has also requested that Applicant provide (i) a revised description of its mark; and (ii) revised descriptions of its identification of goods for Classes 11 and 28.   

 

II.            Amendments

a.    Description of Goods

Applicant hereby amends its description of goods as follows:

·       Applicant requests that its description of goods for Class 11 be revised to read “Drying apparatus for drying medical and dental tools prior to sterilization; self-contained water filtration and delivery system for use in dental offices comprised of a water purification and filtration apparatus, PSI indicators, hoses and spray nozzles”

·         Applicant requests that its description of goods for Class 20 be revised to read “Non-metal cabinetry for use in dental and medical offices; booster seats for use by children in dental or medical examination chairs”

·       Applicant requests that the description of goods for Class 28 be deleted from the application

The above amendments comply with TMEP 1402.06(a) because they (i) specify the nature of the goods in Classes 11 and 20; and (ii) delete the identification of goods for Class 28.  Applicant respectfully requests that the Examining Attorney accept the above amendments and revise the application record accordingly.

b.    Mark Description

Applicant hereby amends its mark description as proposed by the Examining Attorney:

·       The mark consists of a sickle shape curved line with a dot under the lower end of the line and the stylized word “BOYD” above the right half of the line that is angled diagonally; all of the elements appear against a shaded square that has a border.

III.           Arguments

Applicant respectfully submits that withdrawal of the provisional refusal is justified as detailed below. 

a.    Section 2(d) Refusal

Class 20 of the instant application U.S. Serial No. 88/206,826 (the "'826 Application") was rejected as being confusing similar to U.S. Registration No. 4,745,403 (the "'403 Registration").  The '403 Registration was registered on the Supplemental Register in Class 20 for "office furniture, office seating furniture." The '826 Application is pending in Class 20 for "office furniture; furniture for use in dental and medical offices; booster seats."

In response to that rejection, Applicant has amended its description of goods to "non-metal cabinetry for use in dental and medical offices; booster seats for use by children in dental or medical examination chairs." Applicant believes that this amendment sufficiently overcomes the likelihood of confusion rejection and in support therefor states as follows:

The Examiner argues that the similarity of the marks as well as a similarity of the goods are sufficient to warrant a rejection of the ‘826 Application.  The Examiner’s arguments, however, do not take in to account that the ‘403 Registration was issued on the Supplemental Register and is afforded a much narrower scope of protection. (See, In re Cerner Corp., 2001 TTAB Lexis 87.) 

du Pont Factors:

As the Examining Attorney has noted, evaluation of a potential likelihood of confusion requires a comparison of the similarities of the marks and the similarity of the goods or services being offered, applying the factors identified by the C.C.P.A. in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973) (the “du Pont Factors”).  Among the du Pont Factors are the similarity or dissimilarity of the goods or services described in the application and those in the cited registration and the sophistication of the buyers and nature of the conditions under which purchases are made from the registrant and the applicant.  Id.  Applicant respectfully argues that, applying these and the other du Pont Factors to the application as amended, there is no likelihood of confusion between Applicant’s mark and those in the cited registrations.

Nature of the Buyers and Transaction:

In evaluating the likelihood of confusion, the du Pont court recognized that sophisticated purchasers who take time in evaluating and making purchases are less likely to be confused than unsophisticated purchasers making impulse decisions.  Id.  In the present case, the purchasers of Applicant’s goods are dentists or other medical professionals intending to outfit a dental or medical office with “clinical cabinetry” rather than traditional furniture.  The purchasers of the goods of the owner of the cited registration are persons, such as homeowners or homebuyers, looking to furnish a home.  None of these transactions are typically impulse purchases.  On the contrary, they are typically high-value purchases, made by sophisticated individuals, after substantial contemplation.  Such consumers tend to engage in substantial independent due diligence prior to making their purchase. Applicant respectfully argues that this is precisely the type of situation that the du Pont court was contemplating when it recited this factor: sophisticated consumers who undertake carefully considered, complex, and time-consuming transactions are far less likely to be subject to the type of confusion that would plague a less sophisticated buyer making a quick, low-value, impulse purchase.  Applicant, therefore, respectfully argues that the sophisticated nature of the buyers of both Registrant’s and Applicant’s services, and the fact that both services entail potentially expensive or complex transactions, both serve to further eliminate any likelihood that the buyers would be subject to confusion as to the source of the services.

The same arguments made above with respect to the differences in services, also apply to the differences in the commercial impression of the marks. Applicant respectfully argues that the differences between the word mark of the ‘403 Registration and the design elements of the present application are more than sufficient to dispel any likelihood of confusion among such sophisticated purchasers.

Accordingly, when compared side-by-side, Applicant holds, although it may be argued that BOYD is the dominant feature of both marks, the design element in the instant application substantially differs in appearance and commercial impression, and that, accordingly, any potential likelihood of confusion with respect to the similarity of the marks is eliminated when the marks are considered in their entireties.

b.    Specimen Refusal (Class 20)

Applicant hereby submits its substitute specimens and states in support that the substitute specimens were in use in commerce at least as early as the filing date of the application.

c.     Specimen Refusal (Class 28)

As detailed in Section II(a) above, Applicant is requesting that Class 28 be deleted from the application.

IV.          Conclusion

Having addressed the issues raised in the Office Action, Applicant requests that the subject application be permitted to proceed to publication.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant hereby deletes the following class of goods/services from the application.
Class 028 for Computer gaming consoles

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 010 for Medical and dental examination and treatment chairs and benches; patient medical treatment tables; medical trays for dental instruments; dental operating and exam lamps
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 12/00/1971 and first used in commerce at least as early as 12/00/1971 , and is now in use in such commerce.

Proposed: Class 010 for Medical and dental examination and treatment chairs and benches; patient medical treatment tables; medical trays for dental instruments; dental operating and exam lamps
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 12/00/1971 and first used in commerce at least as early as 12/00/1971 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 010 .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 011 for Drying apparatus for drying medical and dental tools prior to sterilization; self-contained water delivery system for use in dental offices
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 12/00/1997 and first used in commerce at least as early as 12/00/1997 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Drying apparatus for drying medical and dental tools prior to sterilization; self-contained water delivery system for use in dental offices; self-contained water delivery system for use in dental offices comprised of a water purification and filtration apparatus, PSI indicators, hoses and spray nozzlesClass 011 for Drying apparatus for drying medical and dental tools prior to sterilization; self-contained water delivery system for use in dental offices comprised of a water purification and filtration apparatus, PSI indicators, hoses and spray nozzles
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 12/00/1997 and first used in commerce at least as early as 12/00/1997 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 020 for Office furniture; furniture for use in dental and medical offices; booster seats
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 12/00/1997 and first used in commerce at least as early as 12/00/1997 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Office furniture; Non-metal cabinetry for use in dental and medical offices; furniture for use in dental and medical offices; booster seats for use by children in dental or medical examination chairs.; booster seatsClass 020 for Non-metal cabinetry for use in dental and medical offices; booster seats for use by children in dental or medical examination chairs.
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 12/00/1997 and first used in commerce at least as early as 12/00/1997 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 020 . The specimen(s) submitted consists of screenshot from website showing applicant?s ?Sterilization Center? clinical cabinetry; photograph of label which can be found inside the door of the cabinet and which references ?STERI CENTER?; and photograph of standard shipping carton for clinical cabinetry .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen]. Specimen File1
Specimen File2
Specimen File3

The applicant's current attorney information: William G. Giltinan. William G. Giltinan of CARLTON FIELDS JORDEN BURT, PA, is located at

      ATTN: IP DEPT
      PO BOX 3239
      TAMPA, Florida 33601-3239
      US
The docket/reference number is 11590/33730.

The phone number is 813-223-7000.

The fax number is 813-229-4133.

The email address is trademarks@carltonfields.com

The applicants proposed attorney information: William G. Giltinan. Other appointed attorneys are Eleanor M Yost, J. Coy Stull, Jill S. Riola, Gail Podolsky, Clark W. Lackert and Jonathan Goodwill. William G. Giltinan of CARLTON FIELDS, PA, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      ATTN: IP DEPT
      PO BOX 3239
      TAMPA, Florida 33601-3239
      United States
The docket/reference number is 11590/33730.

The phone number is 813-223-7000.

The fax number is 813-229-4133.

The email address is trademarks@carltonfields.com

William G. Giltinan submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: WILLIAM G. GILTINAN. WILLIAM G. GILTINAN of CARLTON FIELDS JORDEN BURT, PA, is located at

      ATTN: IP DEPT
      PO BOX 3239
      TAMPA, Florida 33601-3239
      US
The docket/reference number is 11590/33730.

The phone number is 813-223-7000.

The fax number is 813-229-4133.

The email address is trademarks@carltonfields.com

The applicants proposed correspondence information: William G. Giltinan. William G. Giltinan of CARLTON FIELDS, PA, is located at

      ATTN: IP DEPT
      PO BOX 3239
      TAMPA, Florida 33601-3239
      United States
The docket/reference number is 11590/33730.

The phone number is 813-223-7000.

The fax number is 813-229-4133.

The email address is trademarks@carltonfields.com

ADDITIONAL STATEMENTS
Description of mark
The mark consists of a sickle shape curved line with a dot under the lower end of the line and the stylized word "BOYD" above the right half of the line that is angled diagonally; all of the elements appear against a shaded square that has a border.

SIGNATURE(S)
Declaration Signature

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.

Signature: /WIlliam G. Giltinan/      Date: 08/28/2019
Signatory's Name: William G. Giltinan
Signatory's Position: Attorney of Record, Florida Bar Member

Response Signature
Signature: /William G. Giltinan/     Date: 08/28/2019
Signatory's Name: William G. Giltinan
Signatory's Position: Attorney of Record, Florida Bar Member

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); 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.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    WILLIAM G. GILTINAN
   CARLTON FIELDS JORDEN BURT, PA
   ATTN: IP DEPT
   PO BOX 3239
   TAMPA, Florida 33601-3239
Mailing Address:    William G. Giltinan
   CARLTON FIELDS, PA
   ATTN: IP DEPT
   PO BOX 3239
   TAMPA, Florida 33601-3239
        
Serial Number: 88206826
Internet Transmission Date: Wed Aug 28 12:17:20 EDT 2019
TEAS Stamp: USPTO/ROA-X.XX.XXX.XX-201908281217209972
62-88206826-61019456d1882b61251172fbaf14
4d93cba5b8f6ac91823261befb7b7a37b475e-N/
A-N/A-20190828111431668532