| 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) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88460589 |
| LAW OFFICE ASSIGNED | LAW OFFICE 110 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88460589/mark.png |
| LITERAL ELEMENT | PANTHER |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
|
The goods that the Examining Attorney found to be in class 7, namely “outboard motor brackets; hydraulic jack plates for outboard motors; and outboard motor stabilizer clips,” and the goods that the Examining Attorney found to be in class 22, namely “anchor ropes,” have been deleted. The dates of first use as set forth in the application are still applicable. The revisions to the identification of goods in class 12 follow the recommendations of the Examining attorney except that “recreational watercraft” has been changed to “recreational outboard motorboats.” This change is to emphasize the distinction between the applicant’s goods and the goods in the cited registrations (particularly the “amphibious vehicles” in Registration No. 4,237,923), and does not broaden the identification of goods. The six registrations relied upon in the section 2(d) refusal are owned by five different entities. This indicates that the word “panther” can be utilized by multiple entities without creating a likelihood of confusion as long as the goods of the respective entities are unrelated, i.e., sufficiently different in their nature and purpose that purchasers will not be confused, e.g., mistakenly believe that they emanate from a common source. For example, brake air valves, brake drums, brake shoes and steering and suspension systems for vehicles, as in Registration No. 5057706, are not closely related to crankshafts for internal combustion engines as in Registration No. 2484723. Similarly, amphibious vehicles, as in Registration No. 4327923, are unrelated to snowmobiles as in Registrations 0890813 and 1167171. It should also be noted that Registration 2484723 on PANTHER for crankshafts for internal combustion engines coexists with Registration 3765992 on PANTHER for power transmission belts not for land vehicles. In addition, although the Examining attorney, referring to registrations 2484723 and 3765992, has noted that a person replacing a PANTHER branded belt or crankshaft for an outboard motor would likely be confused when mounting the motor with PANTHER branded brackets clips and jack plates, the latter goods are being deleted from the Applicant’s application. The goods remaining in the Applicant’s application, namely power steering units, hoses and other power steering components for recreational outboard motorboats, skeg parts, oarlocks, oarlock sockets and socket bushings for oarlocks; transom savers, paddles, and boat cleats, are all related either to recreational outboard motorboats, to structural parts for boats, to transportation of outboard motorboats, to paddles for canoes and small watercraft, or to parts for rowboats, all being goods sufficiently remote from the goods in the cited registrations that purchasers are unlikely to be confused by reason of the use of “PANTHER” as a mark, or as a component of a mark, on all of those goods. In short the differences between the Applicant’s goods and the goods in the cited registration are more significant than the differences between some of the goods in the cited registrations that are owned by different entities. The cited pending application, No.. 79/196,796 similarly pertains to goods that are remote from outboard motor steering, skeg parts, oarlocks, etc. The Applicant respectfully requests reconsideration of the refusal especially in view of the limitation of its goods to outboard steering, skeg parts oarlocks, etc., all goods remote from those in the cited registrations and pending application.
|
|
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 012 |
| DESCRIPTION | |
| power steering systems for recreational watercraft and components therefor; hose kits for power steering systems; skeg replacement parts; outboard motor brackets; oarlocks, oarlock sockets and socket bushings; outboard motor supports, namely, transom savers; hydraulic jack plates for outboard motors; paddles for canoes and small watercraft; outboard motor stabilizer clips; boat cleats; and anchor ropes | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 12/15/2000 |
| FIRST USE IN COMMERCE DATE | At least as early as 12/15/2000 |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 012 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| power steering units for recreational outboard motorboats and components therefor; hoses for power steering systems for recreational outboard motorboats; skeg replacement parts being structural parts for boats; oarlocks, oarlock sockets and socket bushings for oarlocks; structural parts of trailers in the nature of transom savers that brace the weight of an outboard motor against the frame of a trailer, protecting the motor and the boat from the torque caused by the weight of the motor bouncing during travel; paddles for canoes and small watercraft; boat cleats | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 12/15/2000 |
| FIRST USE IN COMMERCE DATE | At least as early as 12/15/2000 |
| ATTORNEY SECTION (current) | |
| NAME | George A. Smith, Jr. |
| ATTORNEY BAR MEMBERSHIP NUMBER | NOT SPECIFIED |
| YEAR OF ADMISSION | NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | NOT SPECIFIED |
| FIRM NAME | HOWSON & HOWSON LLP |
| INTERNAL ADDRESS | BLDG. 620, SUITE 210 |
| STREET | 350 SENTRY PARKWAY |
| CITY | BLUE BELL |
| STATE | Pennsylvania |
| POSTAL CODE | 19422 |
| COUNTRY | US |
| PHONE | 215-540-9200 |
| FAX | 215 540 5818 |
| docketing@howsoniplaw.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | MTPUSPNTHR |
| ATTORNEY SECTION (proposed) | |
| NAME | George A. Smith, Jr. |
| ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
| YEAR OF ADMISSION | XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
| FIRM NAME | HOWSON & HOWSON LLP |
| INTERNAL ADDRESS | Suite 160, 5 Sentry East |
| STREET | 325 Sentry Parkway |
| CITY | Blue Bell |
| STATE | Pennsylvania |
| POSTAL CODE | 19422 |
| COUNTRY | United States |
| PHONE | 215-540-9200 |
| FAX | 215 540 5818 |
| docketing@howsoniplaw.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | MTPUSPNTHR |
| OTHER APPOINTED ATTORNEY | Mary E. Bak, Cathy A. Kodroff, William Bak, Colleen Schaller, Kathleen Rigaut, Francis Coffey and Richard Kane |
| CORRESPONDENCE SECTION (current) | |
| NAME | GEORGE A. SMITH, JR. |
| FIRM NAME | HOWSON & HOWSON LLP |
| INTERNAL ADDRESS | BLDG. 620, SUITE 210 |
| STREET | 350 SENTRY PARKWAY |
| CITY | BLUE BELL |
| STATE | Pennsylvania |
| POSTAL CODE | 19422 |
| COUNTRY | US |
| PHONE | 215-540-9200 |
| FAX | 215 540 5818 |
| docketing@howsoniplaw.com; gasmith@howsoniplaw.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | MTPUSPNTHR |
| CORRESPONDENCE SECTION (proposed) | |
| NAME | George A. Smith, Jr. |
| FIRM NAME | HOWSON & HOWSON LLP |
| INTERNAL ADDRESS | Suite 160, 5 Sentry East |
| STREET | 325 Sentry Parkway |
| CITY | Blue Bell |
| STATE | Pennsylvania |
| POSTAL CODE | 19422 |
| COUNTRY | United States |
| PHONE | 215-540-9200 |
| FAX | 215 540 5818 |
| docketing@howsoniplaw.com; gasmith@howsoniplaw.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | MTPUSPNTHR |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /George A. Smith, Jr. / |
| SIGNATORY'S NAME | George A. Smith, Jr. |
| SIGNATORY'S POSITION | Attorney of record, PA bar member |
| SIGNATORY'S PHONE NUMBER | 215 540 9200 |
| DATE SIGNED | 02/04/2020 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Feb 04 16:40:43 EST 2020 |
| TEAS STAMP | USPTO/ROA-XXX.X.XXX.XXX-2 0200204164043099053-88460 589-700db212db6cf9a157524 2c8ccd568ec8f7eb2bac578a4 0981de5627aecdb53f2b5-N/A -N/A-20200204163009328145 |
| 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) |
The goods that the Examining Attorney found to be in class 7, namely “outboard motor brackets; hydraulic jack plates for outboard motors; and outboard motor stabilizer clips,” and the goods that the Examining Attorney found to be in class 22, namely “anchor ropes,” have been deleted. The dates of first use as set forth in the application are still applicable.
The revisions to the identification of goods in class 12 follow the recommendations of the Examining attorney except that “recreational watercraft” has been changed to “recreational outboard motorboats.” This change is to emphasize the distinction between the applicant’s goods and the goods in the cited registrations (particularly the “amphibious vehicles” in Registration No. 4,237,923), and does not broaden the identification of goods.
The six registrations relied upon in the section 2(d) refusal are owned by five different entities. This indicates that the word “panther” can be utilized by multiple entities without creating a likelihood of confusion as long as the goods of the respective entities are unrelated, i.e., sufficiently different in their nature and purpose that purchasers will not be confused, e.g., mistakenly believe that they emanate from a common source. For example, brake air valves, brake drums, brake shoes and steering and suspension systems for vehicles, as in Registration No. 5057706, are not closely related to crankshafts for internal combustion engines as in Registration No. 2484723. Similarly, amphibious vehicles, as in Registration No. 4327923, are unrelated to snowmobiles as in Registrations 0890813 and 1167171. It should also be noted that Registration 2484723 on PANTHER for crankshafts for internal combustion engines coexists with Registration 3765992 on PANTHER for power transmission belts not for land vehicles.
In addition, although the Examining attorney, referring to registrations 2484723 and 3765992, has noted that a person replacing a PANTHER branded belt or crankshaft for an outboard motor would likely be confused when mounting the motor with PANTHER branded brackets clips and jack plates, the latter goods are being deleted from the Applicant’s application.
The goods remaining in the Applicant’s application, namely power steering units, hoses and other power steering components for recreational outboard motorboats, skeg parts, oarlocks, oarlock sockets and socket bushings for oarlocks; transom savers, paddles, and boat cleats, are all related either to recreational outboard motorboats, to structural parts for boats, to transportation of outboard motorboats, to paddles for canoes and small watercraft, or to parts for rowboats, all being goods sufficiently remote from the goods in the cited registrations that purchasers are unlikely to be confused by reason of the use of “PANTHER” as a mark, or as a component of a mark, on all of those goods. In short the differences between the Applicant’s goods and the goods in the cited registration are more significant than the differences between some of the goods in the cited registrations that are owned by different entities.
The cited pending application, No.. 79/196,796 similarly pertains to goods that are remote from outboard motor steering, skeg parts, oarlocks, etc.
The Applicant respectfully requests reconsideration of the refusal especially in view of the limitation of its goods to outboard steering, skeg parts oarlocks, etc., all goods remote from those in the cited registrations and pending application.