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. 88258419 WORKSAFE (Stylized and/or with Design, see http://uspto.report/TM/88258419/mark.png) has been amended as follows:

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

Applicant respectfully submits that its mark can coexist with the cited registration without creating a likelihood of confusion scenario. First of all, in absolute terms, it is not subject to argument that the term WORKSAFE conveys the idea of safety in the workplace, or safety in whatever activity one may carrying out. Accordingly, whatever good of service the term is used to distinguish, if it is related to safety in the workplace or to safety in whichever activity one is carrying out, then clearly the term is descriptive or at best, extremely weak. The cited registration is WORK SAFE for protective gloves. The cited registration falls exactly into the mentioned scenario. WORK SAFE for protective gloves is an extremely weak mark. Weak marks are afforded a much narrower spectrum of protection than inherently distinctive marks which are considered strong marks. Clearly this has been the criterium of this Office as there are several registered or pending admitted marks WORKSAFE owned by third parties, that cover goods or services related to work safety. Applicant relates them below: WORKSAFE, reg. no. 5423384, for Ear plugs for noise reduction; ear plugs for sound proofing; ear plugs with headphones incorporated therein with volume limiting technology; ear plugs with audio headphones incorporated therein with volume limiting technology; ear plugs with wired headphones incorporated therein with volume limiting technology; ear plugs with wireless headphones incorporated herein with volume limiting technology. WORKSAFE, reg. no. 5191831, for mechanical gauges for reading liquid levels on above ground storage and handling tanks THE WORKSAFE PEOPLE, reg. no. 4040684, for Underwriting workers compensation and employer liability insurance; administration of workers compensation and employer liability self-insurance services for others ARMADILLO WORKSAFE, reg. no. 5405640, for accessories for industrial machinery, namely, metal wheel casters, metal wheel caster bases, and toe guards for industrial applications that are specially adapted for metal wheel casters and metal wheel caster bases WORKSAFE and design, reg. no. 4747673 and WORKSAFE 101 and design, reg. no. 4747661, both for Educational services, namely conducting classes, seminars, and workshops to increase workplace safety awareness and decrease workplace accidents in order to reduce insurance premiums for employers in the building and construction-related industry WORKSAFE STUDENTS, reg. no. 2874081, for Educational services, namely, conducting programs, seminars, and classes in workplace safety WORKSAFE IOWA, reg. no. 1583042, for CONSULTING AND PROVIDING INFORMATION IN THE FIELD OF OCCUPATIONAL HEALTH AND SAFETY WORK-SAFE, application serial no. 87896584, for Electrical apparatus, namely, electrical equipment for testing the electrical conductivity of items used in high voltage utility applications; Electrical equipment for testing the electrical conductivity of gloves, sleeves, live line tools, blankets, vehicles, aerial buckets, aerial bucket liners, cables, line hoses, line jumpers, hoods, and high voltage insulation materials; Electrical equipment, namely, monitors and monitor modules for monitoring current during live working on high voltage utility lines. This is an approved intent to use based application. Its notice of allowance issued on May 21, 2019 Copies of all of the referenced registration certificates and notice of allowance are hereby attached and are made of the record of this case. Lists of other located registered and pending marks in the USPTO consisting of or containing WORKSAFE or WORK SAFE are also attached and entered into the record. Evidently, the term WORKSAFE and phrase WORK SAFE are diluted in the US. There are at least 44 registrations containing these terms. We have made specific reference to the ones that have been registered or approved in connection with work safety related goods and services. When a term has been diluted, different entities can register and use it, as has been the case with the terms WORKSAFE and WORK SAFE in the US in connection with work safety goods and services. Applicant?s mark does not present anything different. Applicant?s mark As these terms have been diluted, applicant?s mark WORKSAFE and design, for ?protective footwear for the prevention of accident or injury? should be allowed as well. There is no difference between the correlation of all these prior registrations among themselves as well as with the cited registration, than that of applicant?s mark with the cited registration. Applicant?s mark does not present anything different. It covers one and only one specific product. So does the cited registration. These are goods are that while related in the sense that they are used to work safely, they are not competing. As mentioned, there are quite a few other worksafe and work safe registrations covering goods and services related to work safety and all coexist among themselves as well as with the cited registration. Applicant?s mark presents nothing different. Not allowing applicant?s mark to go forward would constitute a clear inconsistency with this Office?s treatment of the terms WORKSAFE and WORK SAFE in many previous cases involving safety in the workplace related goods and services. Taking into account the above discussion, applicant respectfully submits that allowing it?s mark WORKSAFE and design to go forward to publication will not create a likelihood of confusion scenario with the cited registrations. Applicant therefore requests that the applied for mark be approved and allowed to proceed to publication. Respectfully submitted.

EVIDENCE
Evidence in the nature of various registration certificates and a notice of allowance of marks containing WORKSAFE and WORK SAFE that cover work safety related goods and services and list of additional registrations in the USPTO consisting of or containing WORKSAFE and WORK SAFE has been attached.
Original PDF file:
evi_13960176108-20190930120018791887_._worksafe_registered_and_approved_marks09302019.pdf
Converted PDF file(s) ( 15 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15

The applicant's current attorney information: Vivian Ortiz-Ponce. Vivian Ortiz-Ponce of MARCAS ESTADOS UNIDOS, is located at

      P.O. BOX 9024163
      SAN JUAN, Puerto Rico 00902-4163
      US

The phone number is 787-722-4450.

The fax number is 787-725-3144.

The email address is mail@marcas-estadosunidos.com

The applicants proposed attorney information: Vivian Ortiz-Ponce. Other appointed attorneys are Arturo Perez-Guerrero. Vivian Ortiz-Ponce of MARCAS ESTADOS UNIDOS, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      P.O. BOX 9024163
      SAN JUAN, 00902-4163
      Puerto Rico

The phone number is 787-722-4450.

The fax number is 787-725-3144.

The email address is mail@marcas-estadosunidos.com

Vivian Ortiz-Ponce 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: VIVIAN ORTIZ-PONCE. VIVIAN ORTIZ-PONCE of MARCAS ESTADOS UNIDOS, is located at

      P.O. BOX 9024163
      SAN JUAN, Puerto Rico 00902-4163
      US

The phone number is 787-722-4450.

The fax number is 787-725-3144.

The email address is mail@marcas-estadosunidos.com; serviciosmarcarios@yahoo.com

The applicants proposed correspondence information: Vivian Ortiz-Ponce. Vivian Ortiz-Ponce of MARCAS ESTADOS UNIDOS, is located at

      P.O. BOX 9024163
      SAN JUAN, 00902-4163
      Puerto Rico

The phone number is 787-722-4450.

The fax number is 787-725-3144.

The email address is mail@marcas-estadosunidos.com; serviciosmarcarios@yahoo.com; arturo@perezguerrero.com

SIGNATURE(S)
Response Signature
Signature: /Vivian Ortiz-Ponce/     Date: 09/30/2019
Signatory's Name: Vivian Ortiz-Ponce
Signatory's Position: applicant's attorney, Puerto Rico bar member

Signatory's Phone Number: 7877223446

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:    VIVIAN ORTIZ-PONCE
   MARCAS ESTADOS UNIDOS
   
   P.O. BOX 9024163
   SAN JUAN, Puerto Rico 00902-4163
Mailing Address:    Vivian Ortiz-Ponce
   MARCAS ESTADOS UNIDOS
   P.O. BOX 9024163
   SAN JUAN, 00902-4163
        
Serial Number: 88258419
Internet Transmission Date: Mon Sep 30 12:04:32 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-201909301204324
03494-88258419-61090ffa532916f358e1c5b1b
a081c663a8d1bfb677781d8dd8a81e854015cf52
-N/A-N/A-20190930120018791887