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. 88419636 EAE (Stylized and/or with Design, see http://uspto.report/TM/88419636/mark.png) has been amended as follows:

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

Applicant's Mark is EAE (& design), Serial No. 88419636, for use in connection with, as amended, "Lifting jacks other than hand-operated; Elevating or lifting work platforms, including mobile elevating or lifting work platforms; Elevators, namely, lifts; Derricks; Hoists; Pneumatic transporters; Cranes; Mechanical and pneumatic hoisting apparatus," Class 7. Applicant's Mark has been refused based on a finding of likelihood of confusion with EAE, Serial No. 88326183 for "Electric cables, electric plugs, electricity conduits, electric control panels, electric switches, electric switches for timers, automatic electric switches, power switches, circuit breakers, fuses, electricity control panels, junction sleeves for electric cables, Metal cable trays for electric cables, Non-metal cable trays for electric cables,apparatus for transmitting, transforming, regulating, controlling of electricity, busbar distribution systems consisting of plain, thread and punched busbar and flexible busbar use as electrical conductors and sold together with supports, clamps, fasteners, and fittings therefor, electric accumulators, batteries, uninterruptible power sources, namely, uninterruptible electrical power supplies, Electrical conductivity monitor for monitoring, Electrical distribution boxes" in Class 9 and "Electric lighting fixtures, namely, recessed lighting fixtures, track lighting fixtures, pendant lighting fixtures, lighting tracks, lighting tubes, security lighting fixtures, indoor and outdoor lighting fixtures, ceiling lighting fixtures, area lighting fixtures, surface mounted lighting fixtures, wall lighting fixtures, decorative lighting fixtures, landscape lighting fixtures" in Class 11 (the Cited Mark). The Cited Mark has since registered and has been issued Reg. No. 5857007. Applicant respectfully disagrees and submits the following response to the Examining Attorney's refusal based on the following arguments. First, Applicant has deleted "generators of electricity" and "numerically controlled machines and machine tools used for machining parts" from its goods ID in Class 7. Applicant's express limitations of the goods IDs narrowly defines Applicant's goods such that there is no overlap between Applicant's goods and the registrant's goods. Thus, Applicant's primarily industrial lifting and hoisting goods are not related to the registrant's various lighting fixtures in Class 11 nor the registrant's various electrical goods in Class 9. Therefore, the goods are not related for likelihood of confusion purposes. Second, Applicant's Mark is different from the Cited Mark in appearance. Specifically, Applicant's Mark is different in appearance because Applicant's mark includes a square with a stylized "P" design, which does not appear in the Cited Mark. In contrast, the Cited Mark consists solely of the wording "EAE" displayed on a red background, which does not appear in Applicant's Mark. Thus, the marks are different in appearance. In view of the sum of the differences between the marks and the goods, Applicant respectfully submits that there is no likelihood of confusion. Accordingly, Applicant respectfully requests that the 2(d) refusal be withdrawn and that Applicant's Mark be published for opposition.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 007 for Lifting jacks other than hand-operated; Elevating or lifting work platforms, including mobile elevating or lifting work platforms; Elevators, namely, lifts; Generators of electricity; Derricks; Hoists; Numerically controlled machines and machine tools used for machining parts; Pneumatic transporters; Cranes; Mechanical and pneumatic hoisting apparatus
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Lifting jacks other than hand-operated; Elevating or lifting work platforms, including mobile elevating or lifting work platforms; Elevators, namely, lifts; Generators of electricity; Derricks; Hoists; Pneumatic transporters; Numerically controlled machines and machine tools used for machining parts; Cranes; Mechanical and pneumatic hoisting apparatusClass 007 for Lifting jacks other than hand-operated; Elevating or lifting work platforms, including mobile elevating or lifting work platforms; Elevators, namely, lifts; Derricks; Hoists; Pneumatic transporters; Cranes; Mechanical and pneumatic hoisting apparatus
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

The applicant's current attorney information: Alex Patel. Alex Patel of PATEL & ALMEIDA, P.C., is located at

      16830 VENTURA BLVD., SUITE 360
      ENCINO, California 91436
      US

The phone number is 818-380-1900.

The email address is notice@paiplaw.com

The applicants proposed attorney information: Alex Patel. Other appointed attorneys are Paulo A. de Almeida, Christopher Roden, and Andrew T. Rissler. Alex Patel of PATEL & ALMEIDA, P.C., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      16830 VENTURA BLVD., SUITE 360
      ENCINO, California 91436
      United States

The phone number is 818-380-1900.

The email address is notice@paiplaw.com

Alex Patel 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: ALEX PATEL. ALEX PATEL of PATEL & ALMEIDA, P.C., is located at

      16830 VENTURA BLVD., SUITE 360
      ENCINO, California 91436
      US

The phone number is 818-380-1900.

The email address is notice@paiplaw.com; paulo@paiplaw.com

The applicants proposed correspondence information: Alex Patel. Alex Patel of PATEL & ALMEIDA, P.C., is located at

      16830 VENTURA BLVD., SUITE 360
      ENCINO, California 91436
      United States

The phone number is 818-380-1900.

The email address is notice@paiplaw.com

ADDITIONAL STATEMENTS
Description of mark
The mark consists of the wording "EAE" in large stylized font. There is a square carrier atop this wording. Inside of the square is a stylized "P" having a curved line attached to the top of it. The "P" is underlined by a single, horizontal line.

SIGNATURE(S)
Response Signature
Signature: /Christopher Roden/     Date: 12/31/2019
Signatory's Name: Christopher Roden
Signatory's Position: Attorney

Signatory's Phone Number: 8183801900

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:    ALEX PATEL
   PATEL & ALMEIDA, P.C.
   
   16830 VENTURA BLVD., SUITE 360
   ENCINO, California 91436
Mailing Address:    Alex Patel
   PATEL & ALMEIDA, P.C.
   16830 VENTURA BLVD., SUITE 360
   ENCINO, California 91436
        
Serial Number: 88419636
Internet Transmission Date: Tue Dec 31 17:16:22 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XXX-201912311716225
80307-88419636-7008d4ad971c9ccad3d507f46
1d856ed96a2da8358d16096cc8144bcb09e929f3
b-N/A-N/A-20191231170840808524