| 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 | 88470934 |
| LAW OFFICE ASSIGNED | LAW OFFICE 107 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88470934/mark.png |
| LITERAL ELEMENT | WEBSTER |
| 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) | |
|
This paper is in response to the Office Action emailed on September 4, 2019.
Kindly amend the application by substituting the following identification of goods in Class 9 only for that contained in the application as originally filed: Hardness testers, namely, metal hardness testing machines; gauges for measuring metal hardness; metal test strips for calibrating hardness testers; and parts for repair of hardness testers in International Class 9;
Kindly amend the application by substituting the following identification of goods in Class 37 only for that contained in the application as originally filed. Providing repair services of metal hardens testing machines and gauges for measuring metal hardness, in International Class 37
Remarks
A. Likelihood of Confusion In the Office Action, the Examining Attorney refused to register Applicant's mark in class 37 on the basis of a likelihood of confusion with the mark in U.S. Registration No. 2760658 for WEBSTER for “metal component machine parts for conveyors, namely, engineered class chains, cast and steel elevator buckets, sprockets and traction wheels,” owned by Webster Industries, Inc., of Tiffin, Ohio. The Examining Attorney determined that Applicant's mark and its associated class 37 services are so similar to those of the prior registration that a likelihood of confusion exists as to the source or origin of the Applicant's services. Applicant respectfully requests that the Examining Attorney withdraw the refusal to register Applicant's mark for the following reasons. As an initial matter, Applicant has amended its identification of services in class 37 to “providing repair services of metal hardness testing machines and gauges for measuring metal hardness.” The prior description of “sale of OEM parts and tools; repair service of OEM parts and tools” on which the Examining Attorney based the refusal has been deleted. Regarding the identity of the marks relied upon by the Examining Attorney, it is noted that Applicant’s mark and registrant’s mark have both coexisted in the marketplace even though both marks are identical in sight and sound (WEBSTER) for their respective goods and/or services have coexisted in the commercial marketplace for over 87 years, since 1932, without confusion. The identity of the marks in this case is largely irrelevant, given their long coexistence with no confusion. Applicant’s repair services have no relationship to the goods in the cited registration. No one is likely to be confused between Applicant’s repair services of metal hardness testing machines and gauges for measuring metal hardness and registrant’s goods of engineered class chains, cast and steel elevator buckets, sprockets, and traction wheels for conveyors. There simply is no similarity whatsoever; one covers repairs of metal hardness testers and the other covers components for conveyors. Indeed, for this reason alone, Applicant respectfully requests that the Examining Attorney withdraw his Section 2(d) refusal to register Applicant’s mark in class 37.
B. Identification of Goods and Services In the Office Action, the Examining Attorney determined that the identification of goods in Class 9 was unacceptable as indefinite. Also, the Examining Attorney determined that the services in Class 37 must be reclassified to Class 35 and the services must be clearly identified. Applicant has amended the identification of goods in class 9 as required, and further amended the identification of services in Class 37 in a manner that does not require reclassification to class 35. Inasmuch as there are no outstanding issues, Applicant submits that the application is now in a condition for publication. Please address any additional questions about this matter to the undersigned attorney of record. |
|
| GOODS AND/OR SERVICES SECTION (009)(current) | |
| INTERNATIONAL CLASS | 009 |
| DESCRIPTION | |
| Hardness tester; hardness gauges; calibrated test strips for hardness testers | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 00/00/1932 |
| FIRST USE IN COMMERCE DATE | At least as early as 00/00/1932 |
| GOODS AND/OR SERVICES SECTION (009)(proposed) | |
| INTERNATIONAL CLASS | 009 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Hardness testers, namely, metal hardness testing machines; gauges for measuring metal hardness; metal test strips for calibrating hardness testers; and parts for repair of hardness testers | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 00/00/1932 |
| FIRST USE IN COMMERCE DATE | At least as early as 00/00/1932 |
| GOODS AND/OR SERVICES SECTION (037)(current) | |
| INTERNATIONAL CLASS | 037 |
| DESCRIPTION | |
| Sale of OEM parts and tools; repair service of OEM parts and tools | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 00/00/1932 |
| FIRST USE IN COMMERCE DATE | At least as early as 00/00/1932 |
| GOODS AND/OR SERVICES SECTION (037)(proposed) | |
| INTERNATIONAL CLASS | 037 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Providing repair services of metal hardness testing machines and gauges for measuring metal hardness | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 00/00/1932 |
| FIRST USE IN COMMERCE DATE | At least as early as 00/00/1932 |
| ATTORNEY SECTION (current) | |
| NAME | Joel E. Bair |
| ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
| YEAR OF ADMISSION | XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
| FIRM NAME | MCGARRY BAIR PC |
| STREET | 45 OTTAWA AVE. SW, SUITE 700 |
| CITY | GRAND RAPIDS |
| STATE | Michigan |
| POSTAL CODE | 49503 |
| COUNTRY | US |
| PHONE | 616-742-3500 |
| FAX | 616-742-1010 |
| trademarks@mcgarrybair.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 72405-1 |
| ATTORNEY SECTION (proposed) | |
| NAME | Joel E. Bair |
| ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
| YEAR OF ADMISSION | XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
| FIRM NAME | MCGARRY BAIR PC |
| STREET | 45 OTTAWA AVE. SW, SUITE 700 |
| CITY | GRAND RAPIDS |
| STATE | Michigan |
| POSTAL CODE | 49503 |
| COUNTRY | United States |
| PHONE | 616-742-3500 |
| FAX | 616-742-1010 |
| trademarks@mcgarrybair.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 72405-1 |
| OTHER APPOINTED ATTORNEY | McGarry Bair PC, a firm including Joel E. Bair, G. Thomas Williams, Mark A. Davis, Sara L. Haas, Patrick J. Burns, Bradley J. Dale, and John F. Colligan |
| CORRESPONDENCE SECTION (current) | |
| NAME | Joel E. Bair |
| FIRM NAME | MCGARRY BAIR PC |
| STREET | 45 OTTAWA AVE. SW, SUITE 700 |
| CITY | GRAND RAPIDS |
| STATE | Michigan |
| POSTAL CODE | 49503 |
| COUNTRY | US |
| PHONE | 616-742-3500 |
| FAX | 616-742-1010 |
| trademarks@mcgarrybair.com; jeb@mcgarrybair.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 72405-1 |
| CORRESPONDENCE SECTION (proposed) | |
| NAME | Joel E. Bair |
| FIRM NAME | MCGARRY BAIR PC |
| STREET | 45 OTTAWA AVE. SW, SUITE 700 |
| CITY | GRAND RAPIDS |
| STATE | Michigan |
| POSTAL CODE | 49503 |
| COUNTRY | United States |
| PHONE | 616-742-3500 |
| FAX | 616-742-1010 |
| trademarks@mcgarrybair.com; jeb@mcgarrybair.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 72405-1 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Joel E. Bair/ |
| SIGNATORY'S NAME | Joel E. Bair |
| SIGNATORY'S POSITION | Attorney of Record, Michigan Bar Member |
| SIGNATORY'S PHONE NUMBER | 616-742-3500 |
| DATE SIGNED | 09/26/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu Sep 26 16:09:45 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XX.XX.XXX.XX-20 190926160945155963-884709 34-61091c5c52f2735072b23b 5b9c51d386c8ea6bafc56f7a5 39fdcfbda4a335edb-N/A-N/A -20190926160811216551 |
| 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) |
This paper is in response to the Office Action emailed on September 4, 2019.
Kindly amend the application by substituting the following identification of goods in Class 9 only for that contained in the application as originally filed:
Hardness testers, namely, metal hardness testing machines; gauges for measuring metal hardness; metal test strips for calibrating hardness testers; and parts for repair of hardness testers in International Class 9;
Kindly amend the application by substituting the following identification of goods in Class 37 only for that contained in the application as originally filed.
Providing repair services of metal hardens testing machines and gauges for measuring metal hardness, in International Class 37
Remarks
A. Likelihood of Confusion
In the Office Action, the Examining Attorney refused to register Applicant's mark in class 37 on the basis of a likelihood of confusion with the mark in U.S. Registration No. 2760658 for WEBSTER for “metal component machine parts for conveyors, namely, engineered class chains, cast and steel elevator buckets, sprockets and traction wheels,” owned by Webster Industries, Inc., of Tiffin, Ohio.
The Examining Attorney determined that Applicant's mark and its associated class 37 services are so similar to those of the prior registration that a likelihood of confusion exists as to the source or origin of the Applicant's services. Applicant respectfully requests that the Examining Attorney withdraw the refusal to register Applicant's mark for the following reasons.
As an initial matter, Applicant has amended its identification of services in class 37 to “providing repair services of metal hardness testing machines and gauges for measuring metal hardness.” The prior description of “sale of OEM parts and tools; repair service of OEM parts and tools” on which the Examining Attorney based the refusal has been deleted.
Regarding the identity of the marks relied upon by the Examining Attorney, it is noted that Applicant’s mark and registrant’s mark have both coexisted in the marketplace even though both marks are identical in sight and sound (WEBSTER) for their respective goods and/or services have coexisted in the commercial marketplace for over 87 years, since 1932, without confusion. The identity of the marks in this case is largely irrelevant, given their long coexistence with no confusion.
Applicant’s repair services have no relationship to the goods in the cited registration. No one is likely to be confused between Applicant’s repair services of metal hardness testing machines and gauges for measuring metal hardness and registrant’s goods of engineered class chains, cast and steel elevator buckets, sprockets, and traction wheels for conveyors. There simply is no similarity whatsoever; one covers repairs of metal hardness testers and the other covers components for conveyors. Indeed, for this reason alone, Applicant respectfully requests that the Examining Attorney withdraw his Section 2(d) refusal to register Applicant’s mark in class 37.
B. Identification of Goods and Services
In the Office Action, the Examining Attorney determined that the identification of goods in Class 9 was unacceptable as indefinite. Also, the Examining Attorney determined that the services in Class 37 must be reclassified to Class 35 and the services must be clearly identified. Applicant has amended the identification of goods in class 9 as required, and further amended the identification of services in Class 37 in a manner that does not require reclassification to class 35.
Inasmuch as there are no outstanding issues, Applicant submits that the application is now in a condition for publication. Please address any additional questions about this matter to the undersigned attorney of record.