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. 88304573 HEICO(Standard Characters, see http://uspto.report/TM/88304573/mark.png) has been amended as follows:

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

This responds to the Office Action dated May 7, 2019. The Examining Attorney has refused registration pursuant to Section 2(d) as presenting a likelihood of confusion. For the reasons stated below, the mark is not likely to cause confusion. Applicant?s applied-for goods are "aircraft parts, namely avionics and rotables in the nature of structural parts for airplanes; airplane parts, namely wheels, brakes, and landing gear" in Class 12 and the cited registration is directed to the following: Reg. No. 3,956,992 ("the '992 Registration"): Performance-enhancing engine kits for motor vehicles comprising air filters, intercooler, injectors, turbo chargers, cam shafts, piston cranks, intake and exhaust valves, fuel economizers for motors and engines, exhaust systems for motors and engines comprised of pipes, collectors and mufflers, catalytic converters for vehicle exhausts and exhaust tips (Class 7) A determination of likelihood of confusion is based on an analysis of all probative facts in evidence that are relevant to factors bearing on the issue. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also, In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). The two key considerations are similarities between the marks and the similarities between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (?The fundamental inquiry mandated by ? 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks?). As recognized by the Examining Attorney, the word portions of the marks are identical. However, the identity of the marks alone is not sufficient to establish a likelihood of confusion without probative evidence that the goods are related. ?In every case turning on likelihood of confusion, it is the duty of the examiner, the board and this court to find, upon consideration of all the evidence, whether or not confusion appears likely.? Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 21 USPQ2d 1388, 1392 (Fed. Cir. 1992), quoting In re E. I. du Pont de Nemours & Co., 177 USPQ at 568. Here, the goods are not confusingly similar. Each of the goods listed in Applicant?s application are directed to certain parts for aircraft and each of the goods in the ?992 Registration are directed to certain parts manufactured for motor vehicles. Even if the parts listed were the same (and they are not) a part for an aircraft is not confusingly similar to a part for a land vehicle. Even where goods have both been directed to land vehicles, the Trademark Trial and Appeal Board has found that the marks are not confusingly similar. In re Thor Tech, Inc.,113 USPQ2d 1546 (TTAB 2015). In In re Thor Tech the Board reversed the Examining Attorneys? refusal of the mark TERRAIN for use in connection with ?recreation vehicles, namely, towable trailers? in class 12 based on a prior registration for the mark TERRAIN registered in class 12 for ?motor vehicles, namely, trucks? finding that the goods were not similar. Additionally, the aircraft industry is a regulated industry and therefore the goods described in Applicant?s application are subject to FAA regulations and approvals. Because of the highly regulated nature of the industry, purchasers will exercise a high degree of care in making a purchasing decision. In making decisions of this type, ?the reasonably prudent person standard is elevated to the standard of the ?discriminating purchaser.?? Weiss Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840, 1841 (Fed. Cir. 1990). In support of a likelihood of confusion, the Examining Attorney attached reprints of websites from three companies that purportedly show crossover between the motor vehicle and aircraft industries. The Examining Attorney also attached several third-party registrations purportedly showing that Applicant?s and Registrant?s goods travel in the same channels of trade. However, since the goods are not identical in purpose and functionality, it cannot be presumed that the channels of trade and classes of purchasers are the same. A finding of identical goods/services factors into the channels of trade analysis where if ?the services described in the application and opposer's registrations are in part legally identical, the Board presumed the services travel[ed] in the same channels of trade and [were] sold to the same class of purchasers.? Id (quoting In re Smith & Mehaffey, 31 U.S.P.Q.2d 1531, 1532 (T.T.A.B.1994) inside quotation marks omitted). This is not analogous to the present situation between Applicant and Registrant. The goods will not travel the same channels of trade nor are they sold to the same class of purchaser because the Registrant?s goods are targeting mechanics of land vehicles whereas Applicant?s goods are not. There is no appropriate channel of trade that would have goods associated with Applicant?s proposed mark as well as goods associated with either the ?992 Registration. Additionally Applicant?s first use of this mark for the applied-for goods dates back to 1999. Registrant filed its application on May 10, 2010 based on a foreign registration. Therefore, in this case, Applicant and Registrant have co-existed without any actual confusion for at least nine years. Further, Applicant owns other registrations for the HEICO mark for related services, including "engineering services, namely, engineering design of aircraft parts and components" in class 42; "airplane maintenance and repair? in class 37; and ?combustion chambers for jet engines? in class 7. See Exhibits A-C In fact, Applicant?s registration for HEICO in Class 7 for combustion jet engines was filed on August 15, 1985, almost twenty-five years prior to the cited registration's filing date. Exhibit C. Like the applied-for goods here, combustion jet engines are parts for aircraft and were not found to be confusingly similar to the cited '992 Registration's engines for vehicles. For the foregoing reasons, Applicant respectfully requests the Examining Attorney withdraw the refusal and permit the application to proceed to registration.

EVIDENCE
Evidence in the nature of Exhibit A: U.S. Registration No. 5844235 Exhibit B: U.S. Registration No. 5844233 Exhibit C: U.S. Registration No. 1412873 has been attached.
Original PDF file:
evi_75149213197-20191107163210013277_._Exhibit_A_88304582.pdf
Converted PDF file(s) ( 5 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Original PDF file:
evi_75149213197-20191107163210013277_._Exhibit_B_88304578.pdf
Converted PDF file(s) ( 5 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Original PDF file:
evi_75149213197-20191107163210013277_._Exhibit_C_73553460.pdf
Converted PDF file(s) ( 8 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8

SIGNATURE(S)
Response Signature
Signature: /Sherry L. Rollo/     Date: 11/07/2019
Signatory's Name: Sherry L. Rollo
Signatory's Position: Attorney of Record, Illinois Bar Member

Signatory's Phone Number: 3126373000

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.

        
Serial Number: 88304573
Internet Transmission Date: Thu Nov 07 16:40:04 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201911071640045
65139-88304573-7001a978fec832211855afdc2
585a45d15fbdf35709cb9ffd0674421d2794b7ec
-N/A-N/A-20191107163210013277