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. 88385140 MADMAX (Stylized and/or with Design, see http://uspto.report/TM/88385140/mark.png) has been amended as follows:

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


The Examining Attorney has refused registration under Trademark Act § 2(d), 15 U.S.C. § 1052(d) alleging that the Applicant's Mark MADMAX when used on or in connection with the applied-for goods so resembles the earlier registration of Vortech Engineering, Inc. for the mark MAD MAX, Reg. No. 2866362, covering goods described as “AUTOMOTIVE PARTS, NAMELY, CONTROLLERS FOR SUPERCHARGERS, SUPERCHARGERS, FUEL PUMPS AND FUEL PRESSURE REGULATORS; SUPERCHARGER KITS FOR AUTOMOBILE ENGINES COMPRISED OF SUPERCHARGER, MOUNTING BRACKETS, FUEL PRESSURE REGULATOR, FUEL MANAGEMENT SYSTEMS, TUBING, HOSES, AND INSTALLATION HARDWARE SOLD AS A UNIT”.   The Examining Attorney contends that because of the similarity of the marks and goods, registration should be refused.  Applicant respectfully disagrees with the Examining Attorney’s decision for the reasons discussed below.
 

A determination of likelihood of confusion between two marks is determined on a case by case basis. As the Examining Attorney is aware, when determining whether a likelihood of confusion exists between a currently registered mark and a mark submitted by an applicant seeking registration, an Examining Attorney must consider a number of factors including:  the similarity or dissimilarity of marks in their entirety (appearance, sound, commercial impression); the similarity or dissimilarity of goods or services; similarity or dissimilarity of trade channels; the conditions of sale (impulse vs. planned i.e., sophistication of purchasers); and the number of similar marks used on similar goods.  G.H. Mumm & Cie v. Desnoes & Geddes, Ltd., 16 USPQ 2d 1635, 1637-38 (Fed. Cir. 1990) (attributing the factors to In re E.I. DuPont de Nemours & Co., 177 USPQ 563, 567 (CCPA 1973)).  It is quite possible for no likelihood of confusion to exist even between marks which may share a term, but the record shows that they nevertheless cover services that prospective customers are not likely to assume share a common source.  
 


In comparing two trademarks for confusing similarity, the Examining Attorney must compare the marks for resemblances in sound, appearance and meaning or connotation. In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973). Similarity in one respect – sight, sound, or meaning – does not support a finding of likelihood of confusion, even where the goods or services are identical or closely related. TMEP §1207.01(b)(i).

It has long been established under the “anti-dissection rule” that “the commercial impression of a trademark is derived from it as a whole, not from its elements separated and considered in detail. For this reason it should be considered in its entirety.” Estate of P. D. Beckwith, Inc. v. Commissioner of Patents, 252 U.S. 538, 545–46, 64 L. Ed. 705, 40 S. Ct. 414 (1920). It violates the anti-dissection rule to focus on the "prominent" feature of a mark, ignoring other elements of the mark, in finding likelihood of confusion. Massey Junior College, Inc. v. Fashion Institute of Technology, 492 F.2d 1399, 181 U.S.P.Q. 272 (C.C.P.A. 1974). See Franklin Mint Corp. v. Mas-ter Mfg. Co., 667 F.2d 1005, 212 U.S.P.Q. 233 (C.C.P.A. 1981) (“It is axiomatic that a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion.”); Sun-Fun Products, Inc. v. Suntan Research & Development, Inc., 656 F.2d 186, 213 U.S.P.Q. 91 (5th Cir. 1981) (the test is “overall impression,” not a “dissection of individual features”).

Here the respective marks differ in sight, appearance and commercial impression. 

Where there is an addition of a distinctive element, as in a term or a design, or there is a significantly different display of the same terms, there is little likelihood of confusion. First Savings Bank, F.S.B. v. First Bank Systems, Inc., 40 U.S.P.Q.2d 1865 (10th Cir. 1996) (no confusion between FIRST BANK and FIRST BANK SYSTEM (and design)). Likelihood of confusion is minimized where a design is used as part of a mark. HarlemWizards, 952 F. Supp. at 1096 (citing McCarthy at §23:15[51]).

A visual examination of the marks supports a finding that they are different. Applicant’s mark contains the highly stylized literal elements whereas Registrant’s contains only normal literal elements. Neither mark contains a standard character claim, meaning the scope of protection for both marks is limited to how they each appear in their respective drawings. Any similarities between the marks occurs only within the context of a “significantly different display of the same terms,” and thus there is little likelihood of confusion. First Savings, 40 U.S.P.Q.2d 1865.

Applicant’s mark consists of the highly stylized wording “MADMAX” where the first letter “M” and the last letter “X” are comprised of a series of horizontal lines. Registrant only claims the letters “MAD MAX ” in what appears to be a bolded Arial typeface.

In simply comparing the two instances, it is clear that the marks are vastly different. In one instance, all letters are integrated into a visually striking broken design, the first letter “M” and the last letter “X” are comprised of a series of highlt stylized horizontal lines, the two letters are so blurred and unclear. In the other instance, the entirety of the mark consists only of the clearly presented letters. Further, because of the highly stylized elements in Applicant’s mark, consumers are more likely to focus on the distinctively designed first and last letters and the more clearly visible literal portion of the mark, ADMA. Indeed, consumers are more likely to recognize and refer to the mark by these two parts, which is not at all similar to Registrant’s mark.
Thus, taking the marks in their entireties within the context of the significantly different visual elements discussed above, there is little likelihood of confusion.




Goods and services fall into three categories: (1) competitive, (2) non-competitive but related, and (3) non-competitive and non-related. Homeowners Group, Inc. v. Home Mktg. Specialists Inc., 931 F.2d 1100, 18 USPQ2d 1587,1593 (6th Cir. 1991). Services in the last category are unlikely to be confused. Murray v. Cable National Broadcasting Co., 86 F.3d 858,861 39 USPQ2d 1214 (9th Cir. 1996). Moreover, "the presence of goods in the same store does not necessarily lead to the conclusion that confusion would arise under such conditions." 7-Eleven, Inc. v. HEB Grocery Company, LP, 83 U.S.P.Q.2d 1257 at *22 (TTAB 2007)(citations omitted).
 
Here the Examining Attorney alleges that the goods of the respective marks are “related”, noting that the goods identified by both marks are all automotive parts, the trademarks will be confusingly similar since it can appear that the proposed mark identifies a line of goods in registrant’s already existing line of such products, already identified by the term MAD MAX. Applicant contends that while the goods identified by both marks are all automotive parts, the Examining Attorney must not ignore the real world conditions upon which these products are offered.  Applicant offers tires goods in IC 012, which are non-related, non-competitive, and highly unlikely to be confused with Registrant’s goods. With respect to these tires goods, Examiner offers evidence that the same entity or the same mark sells these tires, superchargers, fuel pumps and fuel pressure regulators, as well as turn signals, and Examiner thereby argues that consumers will be confused regarding Applicant and Registrant’s goods. While a few brands may indeed offer these goods, consumers are not likely to be confused by this overlap because these types of goods are, on the whole, very uncommonly associated with each other. If the evidence suggests that there is not a substantial overlap between the compared goods or services with respected to source, but rather that the degree of overlap between the sources of the compared goods or services is de minimis, a finding of relatedness of the goods or services is not warranted. See In re Coors Brewing Co., 343 F.3d 1340, 1345, 68 USPQ3d 1059, 1063 (Fed. Cir. 2003); see also In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011).

There is no substantial overlap between these classes of goods. Applicant attaches evidence from the USPTO X-Search database showing that dual-use registrations for goods in both IC 012 and 007 account for only 7,037 of all 51,716 registrations for goods in IC 012, an over-lap of around thirteen percent. (Exhibit A, Exhibit B). Only a very small percentage of registrants using a mark for goods in IC 012 also use the mark for goods in IC 007. Indeed, the small number of such dual-use registrations compared to the overwhelming number of total registrations suggests that it is very uncommon for goods in both classes to share the same trademark. Thus, the degree of overlap between the sources of goods in IC 012 and 007 is de minimis and goods associated with Applicant’s mark and the Registered Mark are not sufficiently related to support a finding of likelihood of confusion.

Given the dissimilar nature of the goods of both parties, confusion is, thus, unlikely.


For the reason listed above, Applicant respectfully submits that the trademark examining attorney should remove the Section 2(d), 15 U.S.C. § 1052(d) refusal from the trademark MADMAX (Serial no. 88385140) for “Automobile tires; Bicycle tyres; Casings for pneumatic tires; Inner tubes; Pneumatic inner tubes for vehicle wheels; Pneumatic tyres; Treads for retreading tyres; Tubeless tyres for bicycles; Turn signal levers for vehicles; Tyres for vehicle wheels; Direction signals for vehicles” in IC 012. 


EVIDENCE
Evidence-1
Evidence-2

ADDITIONAL STATEMENTS
Description of mark
The mark consists of the stylized wording "MADMAX" where the first letter "M" and the last letter "X" are comprised of a series of horizontal lines.

SIGNATURE(S)
Response Signature
Signature: /Zhang Weitao/     Date: 09/05/2019
Signatory's Name: Zhang Weitao
Signatory's Position: Duly authorized officer

The signatory has confirmed that he/she is not represented by an authorized attorney, and that he/she is either: (1) the owner/holder ; or (2) a person or persons with legal authority to bind the owner/holder; and if he/she had previously been represented by an attorney in this matter, either he/she revoked their power of attorney by filing a signed revocation with the USPTO or the USPTO has granted this attorney's withdrawal request.

        
Serial Number: 88385140
Internet Transmission Date: Thu Sep 05 04:19:27 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.X.X-2019090504192796445
5-88385140-61072dcd59b240a9eb6e8341865f7
4e11f6636a80f7cb68723fd0dccfe9bc62f7-N/A
-N/A-20190905040422958848