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. 88405539 HEICO(Standard Characters, see http://uspto.report/TM/88405539/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 July 17, 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, as amended, are listed as aircraft parts, namely, avionics in the nature of avionic sensor systems, namely aircraft speed sensors; avionic sensor systems, namely aircraft altitude indicators; avionic sensor systems, namely navigation systems; electrical warning light systems for use in the aerospace, defense, communications, and computer industries; electrical components in the nature of protective relays for use in the aerospace, defense, communications, and computer industries. The cited registrations are directed to the following: Reg. No. 3,956,992 (?the ?992 Registration?) : Efficiency enhancement chip processors, for use with vehicle engine parts (Class 9) and 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) Registration No. 2,351,115 (?the ?115 Registration): motor vehicle structural parts, namely, exhaust pipes, mufflers, tailpipes, air filters for mufflers, chassis, brakes, gear boxes, rear axle gear boxes, wheel rims, steering wheels, auxiliary fuel tanks, motor vehicle aero dynamic parts in the form of spoilers and car body extension parts (Class 12) Registration No. 4,562,017 (?the ?017 Registration?): screw locking elements of metal; lock washers of metal; nuts of metal (Class 6) Registration No. 2,690,313 (?the ?313 Registration): electric wire terminals, connectors, fasteners, contacts, wire harnesses and other similar stamped or molded parts, components and assemblies for electrical cord sets; and electrical wiring conduits, conduit fittings and strain relief (Class 9) Registration No. 0,782,750 (?the ?750 Registration): strain relief bushings for electrical conductors and cables, electrical heater plug contacts, cube tap contacts, and other similar stamped or molded parts for electrical cord sets (Class 9) Refusal Is Inconsistent With Prior Registrations Applicant is the owner of the following U.S. Trademark Registration Nos. Registration No. 5,844,235 for HEICO for use in connection with engineering services, namely engineering design of aircraft parts and components (Class 42) Registration No. 5,844,233 for HEICO for use in connection with airplane maintenance and repair (Class 37) Registration No. 1,412,873 for HEICO for use in connection with combustion chambers for jet engines (Class 7) In view of these registrations, it would be grossly inconsistent for the U.S. Trademark Office to refuse this application for a highly similar mark. The Examining Attorney should act consistently with the registrations. TMEP ?702.03(a)(iii). There is No Likelihood of Confusion Between Applicant?s Mark and The Cited Registrations 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 Applicant?s Mark and the ?115 and ?992 Registrations 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 ?115 and ?992 Registrations 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. The goods listed in the ?017; ?313; and ?750 registrations are also distinct from those in Applicant?s application. Specifically, the ?017 Registration recites screw locking elements, lock washers, and nuts. These are specific elements making up a locking mechanism. None of these elements are recited or encompassed by Applicant?s applied-for goods. The commonly owned ?313 and ?750 registrations recite goods related to electric wire and electrical conductors and cables. None of these elements are recited or encompassed by Applicant?s applied-for goods. 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). Further, none of the marks for the ?017; ?313; and ?750 registrations are identical or likely to be confused with Applicant?s HEICO mark. The ?017 Registration is for the mark HEICO-LOCK. While, the ?017 Registration includes the term HEICO, when determining whether marks are so similar there will be a likelihood of confusion as to the source of the associated goods, an Examining Attorney is required to consider the marks in their entireties and not dissect the marks into component parts. Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 917 (C.C.P.A. 1976); Estate of P.D. Beckwith, Inc. v. Commissioner of Patents, 252 U.S. 538, 545-46 (1920) (?The commercial impression of a trademark is derived from it as a whole, not from its elements separated and considered in detail.?). A determination that one mark is likely to be confused with another depends on all the facts of a particular case. Dynamics Research Corp. v. Langenau Mfg. Co., 217 U.S.P.Q. 649, 651 (Fed. Cir. 1983). ?The proper test is not a side-by-side comparison of the marks, but instead ?whether the marks are sufficiently similar in terms of their commercial impression? such that persons who encounter the marks would be likely to assume a connection between the parties.? Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted). Therefore, ?likely to cause confusion? is more than the likelihood that a consumer may recall the mark upon seeing a similar mark used by another. To establish a likelihood of confusion it is necessary to show that there is a reasonable basis for the public to be confused. University of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., Inc., 217 U.S.P.Q. 505, 507 (Fed. Cir. 1981). Here, the inclusion of the term LOCK in the cited registration sufficiently differentiates the two marks and there is no likelihood of confusion. See In re 3-D Belt Company, LP, 2008 WL 4876559 (TTAB 2008) (reversing refusal to register a mark when the applicant?s mark contains the same dominant term as the cited registration but finding that ?the additional words, letters and designs, and their placement relative to ear other in the respective marks, we consider the marks to be more dissimilar than similar.?). The HEYCO marks in the ?313 and ?750 Registrations are even less similar in appearance and for at least the reasons recited above for the ?017 Registration are not likely to be confused with Applicants? mark. 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 ?115 and ?992 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 ?115 or ?992 Registrations. Further, with respect to the goods referenced in the ?017; ?313; and ?750 Registrations, the Examiner stated that Applicant?s goods recited broad descriptions of ?components for use in the aerospace, defense, communications, and computer industries? which would encompass goods recited in the ?017; ?313; and ?750 Registrations. Applicant respectfully does not agree that its description would encompass the goods recited in the cited registrations in a manner that would be likely to cause confusion for the reasons already stated. Further, Applicant?s amended description further avoids any likelihood of confusion. Additionally Applicant?s first use of this mark for the applied-for goods dates back to at least as early as 2001. The ?115 Registration was filed on May 10, 2010 based on a foreign registration and the ?992 Registration was filed on May 17, 2010 based on a foreign registration. Therefore, in this case, Applicant and Registrant of the ?115 and ?992 Registrations have co-existed without any actual confusion for at least nine years. Similarly, the ?017 Registration was filed on November 21, 2013 based on the Madrid Protocol and therefore this Registrant and Applicant have co-existed for at least seven years without any actual confusion. The ?313 and ?750 Registrations claim a date of first use in 2001 and 1946 respectively. Therefore Applicant and that Registrant have co-existed for at least nine years without any actual confusion. Further, as stated above, 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 registrations. The Examiner also cited a prior-filed pending application U.S. Serial No. 79/255059 for HEICO-TEC for use in connection with metal clamps; metal fasteners incorporating multi-jackbolt tensioners; clamping studs, clamps, cramp heads, lock cylinders, lateral clamps, centring clamps and pull-down clamps, all the aforesaid goods of metal and included in this class (Class 6) and Mechanical clamping systems; mechanical fasteners with multi-jackbolt tensioners; clamping bolts, clamps, cramp heads, lock cylinders, lateral clamps, centring clamps, mechanical pull- down clamping elements, all the aforesaid goods being parts of machines (Class 7). For the reasons already addressed above, HEICO-TEC is not likely to be confused with Applicant?s mark. Specifically, the recited goods are not similar to the goods recited in Applicant?s application. The cited application requires that each good recited in class 6 be ?goods of metal and included in this class.? None of Applicant?s goods are included in class 6. The cited application also requires that each good recited in Class 7 be ?goods being parts of machines?. None of Applicant?s goods meet that description either. Further, similar to HEICO-LOCK, HEICO-TEC is not likely to be confused with Applicant?s HEICO mark. See In re 3-D Belt Company, LP, 2008 WL 4876559 (TTAB 2008) (reversing refusal to register a mark when the applicant?s mark contains the same dominant term as the cited registration but finding that ?the additional words, letters and designs, and their placement relative to ear other in the respective marks, we consider the marks to be more dissimilar than similar.?). Indeed, the inclusion of the hypen LOCK and hyphen TEC on the cited marks makes the cited marks more similar to each other than they are to Applicant?s mark and therefore favors a finding of no likelihood of confusion. See e.g. In re Raven Lining Systems, Inc., 2002 WL 1760777 (TTAB 2002). In In re Raven Lining Systems, the Board reversed the examining attorney?s refusal to register the mark AQUATAPOXY. In making its decision, the Board considered the likelihood of confusion between AQUATAPOXY and the cited registrations, AQUA POXY and AQUA EPOXY. When evaluating the sight-sound-meaning elements, the Board stated ?we have to agree with applicant that on any of the elements of the sight-sound-meaning trilogy, the two cited marks are much more like each other than applicant?s mark is similar to the cited marks.? Id. 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: Registration No. 5,844,235 for HEICO for use in connection with engineering services, namely engineering design of aircraft parts and components (Class 42) Exhibit B: Registration No. 5,844,233 for HEICO for use in connection with airplane maintenance and repair (Class 37) Exhibit C: Registration No. 1,412,873 for HEICO for use in connection with combustion chambers for jet engines (Class 7) PDF of Arguments has been attached.
Original PDF file:
evi_75149213197-20200117131312830893_._Exhibit_A_5844235.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_75149213197-20200117131312830893_._Exhibit_B_5844233.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_75149213197-20200117131312830893_._Exhibit_C_1412873.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Original PDF file:
evi_75149213197-20200117131312830893_._FINAL_OA_Response_HEICO_Class_9_88405539.pdf
Converted PDF file(s) ( 5 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Aircraft parts, namely, avionics in the nature of avionic sensor systems, namely, aircraft speed sensors; avionic sensor systems, namely, aircraft altitude indicators; avionic sensor systems, namely, navigation systems; electrical and electro-optical systems and components for use in the aerospace, defense, communications, and computer industries
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 08/10/2001 and first used in commerce at least as early as 08/10/2001 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Aircraft parts, namely, avionics in the nature of avionic sensor systems, namely, aircraft speed sensors; Aircraft parts, namely, avionics in the nature of avionic sensor systems, namely aircraft speed sensors; avionic sensor systems, namely, aircraft altitude indicators; avionic sensor systems, namely aircraft altitude indicators; avionic sensor systems, namely, navigation systems; avionic sensor systems, namely navigation systems; electrical and electro-optical systems and components for use in the aerospace, defense, communications, and computer industries; electrical warning light systems for use in the aerospace, defense, communications, and computer industries; electrical components in the nature of protective relays for use in the aerospace, defense, communications, and computer industries.Class 009 for Aircraft parts, namely, avionics in the nature of avionic sensor systems, namely aircraft speed sensors; avionic sensor systems, namely aircraft altitude indicators; avionic sensor systems, namely navigation systems; electrical warning light systems for use in the aerospace, defense, communications, and computer industries; electrical components in the nature of protective relays for use in the aerospace, defense, communications, and computer industries.
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 08/10/2001 and first used in commerce at least as early as 08/10/2001 , and is now in use in such commerce.
SIGNATURE(S)
Response Signature
Signature: /Sherry L.Rollo/     Date: 01/17/2020
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: 88405539
Internet Transmission Date: Fri Jan 17 13:25:53 EST 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-202001171325533
17055-88405539-700fa69d4b2eb532f4d54bfa1
37f1f489a780a8dce1fdf1c0f1ff97ec5219ebc5
70-N/A-N/A-20200117131312830893