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)

---

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. 88228215 PRIMO(Standard Characters, see http://uspto.report/TM/88228215/mark.png) has been amended as follows:

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

The examining attorney asserts that registration of the applied-for mark is refused, pursuant to Section 2(d), because of likely confusion with the subject mark of U.S. Registration No. 5516047, issued on July 17, 2018. This cited registered mark is ?FUNDO PRIMO,? used to indicate the source of various goods, including ?asphalt; pitch; bitumen.? The examiner asserts that refusal is limited to just these goods in the cited registration. Applicant asserts that in the case involving Section 2(d), In re E. I. du Pont de Nemours & Co., the U.S. Court of Customs and Patent Appeals discussed the factors relevant to a determination of likelihood of confusion. 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). In setting forth the factors, the court cautioned that, with respect to determining likelihood of confusion, "[t]here is no litmus rule which can provide a ready guide to all cases." Id. at 1361, 177 USPQ at 567. Although the weight given to the relevant du Pont factors may vary, the following two factors are key considerations in any likelihood of confusion determination: 1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression; and 2. The relatedness of the goods or services as described in the application and registration(s). See, e.g., Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976). A. RELATEDNESS OF RELEVANT GOODS, CHANNELS OF TRADE & CLASSES OF CONSUMERS For purposes of analysis, the examiner makes the following comparison of goods: Goods in this application: Roofing fabrics; Roofing felts; Roofing membranes; Roofing underlayment; Asphalt roofing felt; Bituminous roof coatings; Bituminous coatings for roofing; Non-metal roofing; PVC roofing membrane; Waterproofing membranes for roofing, floors and walls; Relevant goods in U.S. Registration No. 5516047: Asphalt; pitch; bitumen. The examiner asserts that where the listed goods in the application at issue or in the cited registration are broadly identified as to their nature and type, without restrictions as to the channels of trade and limitations as to the classes of purchasers, it is presumed that in scope the identification of goods encompasses all the goods of the nature and type, and that the identified goods are offered in all normal channels of trade, and to all potential purchasers, citing In re Elbaum, 211 U.S.P.Q. 639, 640 (TTAB 1981); see TMEP ? 1207.01(a)(iii). Further, the examiner asserts that the identified ?asphalt; pitch; bitumen? in the cited registration encompasses the more narrowly identified ?Asphalt roofing felt; Bituminous roof coatings; Bituminous coatings for roofing? in this application, and that ?Roofing fabrics; Roofing felts; Roofing membranes; Roofing underlayment; . . . Non-metal roofing; . . . Waterproofing membranes for roofing, floors and walls? in this application encompasses asphalt, pitch and bitumen in the cited registration. The examiner concludes that these goods are legally identical. Applicant submits that for purposes of its application, it seeks to restrict and more narrowly define the identification of its goods to "synthetic roofing underlayment," which contains no "asphalt, pitch or bitumen." Applicant asserts that in the industry, traditional felt underlayment, which is typically saturated with asphalt, was the automatic choice for contractors for decades and continues to be used today. Asphalt-saturated felts have been and are still common place in steep-slope roofing systems because they are low-cost, readily available materials. However, synthetic underlayment is a newer technology with many advantages over traditional felt underlayment. For example, synthetic underlayment is much lighter and three times stronger than traditional felt underlayment. Synthetic underlayment is made from polypropylene fabric, and importantly, contains no "asphalt, pitch or bitumen." Applicant concedes there are no limitations to the channels of trade and classes of purchasers in both the cited registration and the subject application. Nevertheless, with the applicant's narrowing of the goods identified with this application above, the respective goods are sufficiently unrelated and would not likely cause any confusion as to their source in the minds of the consuming public if offered under similar marks. Accordingly, the goods as described in this application and the cited registration are sufficiently unrelated and are not likely to cause confusion in the marketplace. B. COMPARISON OF THE MARKS As the examiner has correctly stated in the office action, applicant?s applied-for mark, PRIMO, and the cited registered mark, FUNDO PRIMO, are presented entirely in standard character form. The examiner further asserts that likelihood of confusion has frequently been found where one mark incorporates the entirety of another mark. Additions or deletions to marks may be sufficient to avoid a likelihood of confusion if: (1) the marks in their entireties convey significantly different commercial impressions; or (2) the matter common to the marks is not likely to be perceived by purchasers as distinguishing source because it is merely descriptive or diluted. See, e.g., Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1245, 73 USPQ2d 1350, 1356-57 (Fed. Cir. 2004) (reversing TTAB?s holding that contemporaneous use of THE RITZ KIDS for clothing items (including gloves) and RITZ for various kitchen textiles (including barbeque mitts) is likely to cause confusion, because, inter alia, THE RITZ KIDS creates a different commercial impression); In re S.D. Fabrics, Inc., 223 USPQ 54, 55-56 (TTAB 1984) (holding DESIGNERS/FABRIC (stylized) for retail fabric store services, and DAN RIVER DESIGNER FABRICS and design for textile fabrics, not likely to cause confusion, noting that, because of the descriptive nature of "DESIGNERS/FABRIC" and "DESIGNER FABRICS," the addition of "DAN RIVER" is sufficient to avoid a likelihood of confusion); see also TMEP ?1207.01(b)(viii). Applicant asserts that in reviewing the entire classification of relevant goods associated with the cited registration (U.S. Registration No. 5516047), it may be reasonably concluded that the matter common to the marks, PRIMO, is not likely to be perceived by the purchasers as distinguishing the source because it is merely descriptive or diluted. As determined by the examiner, both marks share the term ?PRIMO,? defined in the relevant context as ?first? and ?highly or most valuable,? Am. Heritage Dictionary of the English Language (5th ed. 2019), http://www.ahdictionary.com/, which in the context of the goods, is suggestive in relation to the respective goods. Applicant asserts that for the cited registration mark, FUNDO PRIMO, the term ?FUNDO? would be understood by the relevant purchaser to be the primary product mark of the owner of the cited registration. Although the marks are similar in appearance, sound and meaning, given the applicant's narrowed identification of goods to "synthetic roofing underlayment," the marks in this comparison are no longer considered legally identical goods. As such, it may not be reasonably asserted that the marks would create similar commercial impressions on the minds of purchasers. The dissimilarity of the marks as to appearance, sound, connotation and commercial impression is substantially sufficient to avoid confusion with the above-cited registered mark as to ?asphalt; pitch; bitumen? in its listing of goods. For the reasons stated above, the applicant respectfully requests that the examiner reconsider the refusal of this application.

The applicant's current attorney information: Adam D. Decker. Adam D. Decker, is located at

      10200 BROADWAY
      CROWN POINT, Indiana 46307
      US

The phone number is 219-663-7400.

The email address is deckerlaw@sbcglobal.net

The applicants proposed attorney information: Adam D. Decker. Adam D. Decker, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      10200 BROADWAY
      CROWN POINT, Indiana 46307
      United States

The phone number is 219-663-7400.

The email address is deckerlaw@sbcglobal.net

Adam D. Decker 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: ADAM D. DECKER. ADAM D. DECKER, is located at

      10200 BROADWAY
      CROWN POINT, Indiana 46307
      US

The phone number is 219-663-7400.

The email address is deckerlaw@sbcglobal.net

The applicants proposed correspondence information: Adam D. Decker. Adam D. Decker, is located at

      10200 BROADWAY
      CROWN POINT, Indiana 46307
      United States

The phone number is 219-663-7400.

The email address is deckerlaw@sbcglobal.net

SIGNATURE(S)
Response Signature
Signature: /Adam Decker/     Date: 09/12/2019
Signatory's Name: Adam Decker
Signatory's Position: Attorney of record, Indiana Bar member

Signatory's Phone Number: 2196637400

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:    ADAM D. DECKER
   
   
   10200 BROADWAY
   CROWN POINT, Indiana 46307
Mailing Address:    Adam D. Decker
   10200 BROADWAY
   CROWN POINT, Indiana 46307
        
Serial Number: 88228215
Internet Transmission Date: Thu Sep 12 13:33:11 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2019091213331181
6377-88228215-610e360b13862d48a8b271fb18
38c6c976384cdf8ac6307182c3e1e4d757b9e12e
-N/A-N/A-20190912132700988707