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. 88498643 DB (Stylized and/or with Design, see http://uspto.report/TM/88498643/mark.png) has been amended as follows:

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

With respect to the refusal under 2(d) in view of US Registration No. 4,230,426 on DB in block letter form, in view of the amendment to the identification of goods and as explained herein, it is respectfully submitted that this refusal has been overcome. In the logo of the subject application, the ?d? and ?b? are highly stylized, in lower case form, and are not readily or easily discernable to the customer or potential customer from the mark. Therefore, there is an insufficient prima facie basis to conclude that the commercial impression is not that of ?DB.? In any event, it is quite different from the registered mark. In any event, the subject application?s mark is quite different from the registered mark. (Note that under TMEP 807.01, ?the drawing page will control for purposes of determining what the mark is.?) With respect to the goods, Applicant?s amendments to the identification now specify sale to manufacturers in bulk, and that the goods are for installation using a screw gun. Installation using a screw gun excludes the goods of the registered mark. That is, ?installation using a screw gun? excludes fasteners for induction welding. Manufacturers are reasonably sophisticated purchasers. Fasteners for their products are not an impulse buy. Moreover, the difference between using a screw gun versus performing induction welding is quite significant. Therefore, it is unlikely that manufacturers would be confused. With respect to the potential refusals under 2(d) in view of US Application Nos. 88421056 and 88432150 on DB FASTENERS with logos (and for the ?150, with a tagline), in view of the amendment to the identification of goods and as explained herein, it is respectfully submitted that this refusal has been overcome. As noted above, in the logo of the subject application, the ?d? and ?b? are highly stylized, in lower case form, and are not readily or easily discernable to the customer or potential customer from the mark. Therefore, there is an insufficient prima facie basis to conclude that the commercial impression is not that of ?DB.? In any event, the subject application?s mark is quite different from the registered mark. With respect to the goods, Applicant?s amendments to the identification now specify sale to manufacturers in bulk, and that the goods are for installation using a screw gun. The identification of the two cited applications relate to ?wholesale distributorships.? Even though they are for ?manufacturing fasteners? or ?for use in further manufacturing,? manufacturers are reasonably sophisticated purchasers. Fasteners for their products are not an impulse buy. Given the highly stylized form of Applicant?s mark, and the logo form of the cited applications, it is unlikely that manufacturers would be confused. Because the drawing (as noted above) controls what the mark is, the description of the mark provided herewith does not define what the mark actually is. (Note also: TMEP 808.02 ?A description cannot be used to restrict the likely public perception of a mark. A mark?s meaning is based on the impression actually created by the mark in the minds of consumers?.?) In view of the above and the amendments to the goods, reconsideration and approval for publication are respectfully requested.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 006 for carbon steel, stainless steel, self drilling, self tapping fasteners
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 01/01/2012 and first used in commerce at least as early as 01/01/2012 , and is now in use in such commerce.

Proposed:
Tracked Text Description: carbon steel, stainless steel, self drilling, self tapping fasteners; metal self-drilling fasteners, namely, self-drilling screws sold to manufacturers in bulk for fastening metal and for installation using a screw gunClass 006 for metal self-drilling fasteners, namely, self-drilling screws sold to manufacturers in bulk for fastening metal and for installation using a screw gun
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 01/01/2012 and first used in commerce at least as early as 01/01/2012 , and is now in use in such commerce.
APPLICANT AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: DB Building Fasteners, Inc., a corporation of California, having an address of
      5555 E. Gibralter St
      Ontario, California 91764
      United States

      Brentd@selfdrillers.com (authorized)
Proposed: DB Building Fasteners, Inc., a corporation of California, having an address of
      5555 E. Gibralter St
      Ontario, California 91764
      United States
      

The applicant hereby appoints David L Hoffman. Other appointed attorneys are David L Hoffman. David L Hoffman of Hoffman Patent Group, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      Suite 204
      28494 Westinghouse Place
      Valencia, California 91355
      United States
to submit this Response to Office Action Form on behalf of the applicant.
The docket/reference number is 19-10086.

The phone number is 6617750300.

The email address is david@dlhpatent.com

David L Hoffman 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: DB BUILDING FASTENERS, INC.. DB BUILDING FASTENERS, INC. of DB BUILDING FASTENERS, INC., is located at

      5555 E. GIBRALTER ST
      ONTARIO, California 91764
      US

The email address is Brentd@selfdrillers.com; niuj12@outlook.com

The applicants proposed correspondence information: David L Hoffman. David L Hoffman of Hoffman Patent Group, is located at

      Suite 204
      28494 Westinghouse Place
      Valencia, California 91355
      United States
The docket/reference number is 19-10086.

The phone number is 6617750300.

The email address is david@dlhpatent.com; ruth@dlhpatent.com

ADDITIONAL STATEMENTS
Description of mark
The mark consists of a dark blue angle member located at a center bottom, a dark blue highly stylized first triangular shape having rounded corners and an opening and which is located above a left side of the angle member, and a light blue highly stylized second triangular shape having rounded corners that has an opening and is located above a right side of the angle member, the angle member and the first and second triangular shapes being symmetrical about a vertical axis.

SIGNATURE(S)
Response Signature
Signature: /David L Hoffman/     Date: 10/17/2019
Signatory's Name: David L Hoffman
Signatory's Position: Attorney of record, CA bar member

Signatory's Phone Number: 6617750300

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:    DB BUILDING FASTENERS, INC.
   DB BUILDING FASTENERS, INC.
   
   5555 E. GIBRALTER ST
   ONTARIO, California 91764
Mailing Address:    David L Hoffman
   Hoffman Patent Group
   Suite 204
   28494 Westinghouse Place
   Valencia, California 91355
        
Serial Number: 88498643
Internet Transmission Date: Thu Oct 17 18:41:17 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.X.XXX-20191017184117704
765-88498643-610bec748b2cab9d8c6a966c2bf
78c73a1744bf0a91f7f5a4cad8aaa60eea0e1d0-
N/A-N/A-20191017182819049325