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. 88208343 HEYDAY(Standard Characters, see http://uspto.report/TM/88208343/mark.png) has been amended as follows:

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

This is in response to the Office Action mailed October 29, 2019. Registration of Applicant’s mark, HEYDAY was refused under §2(d) of the Trademark Act because Applicant’s mark allegedly so resembles the marks in U.S. Registration No. 5852869 for HEYDAY, U.S. Registration No. 4948604 for HAY DAY, and U.S. Registration No. 4970933 for HAY DAY Additionally, three pending applications, all for HEYDAY, were tentatively cited against Applicant’s mark. These applications are all owned by Target Brands, Inc., the owner of the above HEYDAY registration.

Applicant respectfully submits that in view of the case law and arguments set forth below, no likelihood of confusion exists between its mark and either of the registered marks. Therefore, Applicant respectfully requests reconsideration and withdrawal of the refusal to register the subject mark.

Likelihood of Confusion

There are a variety of factors used to determine a likelihood of confusion. See In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973) (determining likelihood of confusion by thirteen factors: similarity of the marks, similarity and nature of the goods or services, similarity of established trade channels, whether purchases are impulse or sophisticated, fame of the prior mark, amount and nature of similar marks on similar goods, actual confusion, length of time of concurrent use without evidence of actual confusion, variety of goods on which mark is used, market interface between Applicant and owner of prior mark, extent that Applicant has a right to exclude others from use of its mark, extent of potential confusion, and any other probative fact). There is, however, no reason why a

single DuPont factor should not outweigh all the rest. Kellogg Co. v. Pack ‘Em Enters., Inc. , 951 F.2d 330, 333, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991). Likelihood of confusion must be probable, not simply possible. Rodeo Collection Ltd. v. West Seventh, 2 USPQ2d 1204, 1207 (9th Cir. 1987). Applicant respectfully requests reconsideration of the refusal of registration because Applicant respectfully asserts there are clear differences between the goods of each of the parties, and thus the channels of trade of the respective products. Additionally, consumers of Applicant’s and Registrants’ goods, are sophisticated enough not to be confused as to the source of the different products of the parties. Finally, in view of the fact that the cited HEYDAY and HAY DAY marks already co-exist, Applicant respectfully submits its mark should likewise be given the same consideration for registration.

A. Applicant’s Goods and the Goods of the Cited Registrations are in Different Channels of Trade

In the present Office Action, it is stated that Applicant’s identification of goods is indefinite. Therefore, Applicant is amending its identification of goods to the following:

Integrated circuits; integrated circuit boards; semiconductor devices; power modules for mounting on printed circuit boards; power controllers for mounting on printed circuit boards; power switches for mounting on printed circuit boards.

Applicant (HeyDay Integrated Circuits) is a manufacturing company, specializing in gate drivers, which amplify the signal from the controller to the transistor in electronic products. Attached to this response are pages from Applicant’s website – www.heyday-ic.com – which illustrate the specialized products offered by Applicant. Applicant’s market and its consumers are electronic circuit manufacturers, who integrate Applicant’s components into circuit boards for use in electronic products. In contrast, the cited HEYDAY registration and pending applications, which are owned by Target Brands, Inc., list products which are directly marketed to the consumer (See the attached article). In fact, there is a possibility that Applicant’s products may be incorporated into some of the final products listed the cited registration and pending application; however, Applicant’s products are not offered to or sold directly to the consumer.

Additionally, with regard to the cited HAY DAY registrations, these also appear to be all direct-to-consumer products. In fact, HAY DAY appears to be a video game (see attached snapshots of webpages for the Registrant Supercell). Of all of the items listed in the HAY DAY registrations, the only potentially similar item cited in the Office Action is “electrical power supplies.” However, again, Applicant respectfully submits the products offered under the HAY DAY mark are marketed directly to the consumer. In contrast, Applicant’s products are not marketed to the consumer, and in addition, Applicant’s products and thus its consumers are clearly distinct from those of the HAY DAY registrations. Applicant further submits its mark appears completely different from the cited registrations, and therefore, this difference combined with the distinctly different goods of the parties, consumers would not be confused as to the source of the goods of the parties. Again, Applicant is not a direct-to-the-consumer company, as its products are directed to manufacturers of electronic products potentially offered by both Registrants.

B. Purchasers Of The Respective Goods Are Sophisticated

When purchasers are sophisticated or knowledgeable in a particular field, the buyer can be expected to exercise greater care in his or her purchases, and the likelihood of confusion between similar marks is diminished. See Daddy's Junky Music Stores, Inc. v. Big Daddy's family Music Center, 109 F.3d 275, 285 (6th Cir. 1997). Similarly, the TMEP explains, “circumstances suggesting care in purchasing may tend to minimize likelihood of confusion.” §1208.01(d)(vii). Furthermore, the Examining Attorney must stand in the shoes of the ordinary purchaser, buying under the normal marketing conditions and giving the attention such purchasers usually give in buying that class of goods. General Mills v. Kellogg, 824 F.2d 622, 627 (8th Cir. 1987). Even for relatively inexpensive item, the standard is still that of a reasonably prudent ordinary purchaser. See McLean v. Fleming, 96 U.S. 245 (1878) (reasonably prudent buyer defined as “ordinary purchases buying with ordinary caution.”).

Applicant offers sophisticated electronic components designed to meet the needs of manufacturers of electronic products. Applicant’s customers are undoubtedly sophisticated consumers, who would not be confused into believing Applicant’s products would be sourced by the two Registrants, Target or Supercell. Therefore, Applicant respectfully submits that clients would not be confused as to the source of the products of Applicant and either of the Registrants. Therefore, Applicant respectfully requests its mark be passed for publication.

EVIDENCE
Evidence has been attached: pages from Applicant's website, and from cited Registrants' websites
Original PDF file:
evi_9928253135-2020022710 0047933011_._HEYDAY_websi te.pdf
Converted PDF file(s) ( 3 pages) Evidence-1Evidence-2Evidence-3
Original PDF file:
evi_9928253135-2020022710 0047933011_._Supercell_HA Y_DAY.pdf
Converted PDF file(s) ( 2 pages) Evidence-1Evidence-2
Original PDF file:
evi_9928253135-2020022710 0047933011_._Target_s_Bri nging_Style_to_Tech_Acces sories__Power_Up_Heyday.pdf
Converted PDF file(s) ( 6 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for integrated circuits; integrated circuit boards; semiconductor devices; power modules; power controllers; power switches; power regulating apparatus, namely, voltage regulators for electric power; switching power supply apparatus, namely, switch-mode power supply
Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ European Union Trademark - EUTM application number 017907408 filed 05/29/2018]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: integrated circuits; integrated circuit boards; semiconductor devices; power modules; power supply modules for mounting on printed circuit boards; power controllers; power controllers for mounting on printed circuit boards; power switches; power switches for mounting on printed circuit boards; power regulating apparatus, namely, voltage regulators for electric power; switching power supply apparatus, namely, switch-mode power supplyClass 009 for integrated circuits; integrated circuit boards; semiconductor devices; power supply modules for mounting on printed circuit boards; power controllers for mounting on printed circuit boards; power switches for mounting on printed circuit boards
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ European Union Trademark - EUTM application number 017907408 filed 05/29/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 017907408 registered 09/06/2019 with a renewal date of 05/29/2028 and an expiration date of 05/29/2028 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU0-9928253135-100047933 _._HEYDAY-EU-REG-CERT.pdf
Converted PDF file(s) ( 3 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Heyday Integrated Circuits SAS having an address of
      4 Traverse Dupont, InnovaGrasse
      Grasse, 06130
      France
      815-595-4783
Proposed: Heyday Integrated Circuits SAS, having an address of
      4 Traverse Dupont, InnovaGrasse
      Grasse, 06130
      France
      Email Address: XXXX
      815-595-4783
Correspondence Information (current):
      Monique A. Morneault
      PRIMARY EMAIL FOR CORRESPONDENCE: Monique@scherrerpatentlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): stephen@scherrerpatentlaw.com

The docket/reference number is 1-HMC-058-T.
Correspondence Information (proposed):
      Monique A. Morneault
      PRIMARY EMAIL FOR CORRESPONDENCE: Monique@scherrerpatentlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): stephen@scherrerpatentlaw.com

The docket/reference number is 1-HMC-058-T.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

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: /Monique A. Morneault/      Date: 02/27/2020
Signatory's Name: Monique A. Morneault
Signatory's Position: Attorney of record, Illinois Bar member
Signatory's Phone Number: 815-595-4783


Response Signature
Signature: /Monique A. Morneault/     Date: 02/27/2020
Signatory's Name: Monique A. Morneault
Signatory's Position: Attorney of record, Illinois bar member

Signatory's Phone Number: 815-595-4783

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:    Monique A. Morneault
   SCHERRER PATENT & TRADEMARK LAW, P.C.
   
   17 E. CRYSTAL LAKE AVE.
   CRYSTAL LAKE, Illinois 60014
Mailing Address:    Monique A. Morneault
   SCHERRER PATENT & TRADEMARK LAW, P.C.
   17 E. CRYSTAL LAKE AVE.
   CRYSTAL LAKE, Illinois 60014
        
Serial Number: 88208343
Internet Transmission Date: Thu Feb 27 10:37:31 ET 2020
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2020022710373172
1029-88208343-7109cd0db378c45ea854397fcf
4989b36ca4cf0de1d9162822e161c677b16619dc
-N/A-N/A-20200227100047933011