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. 88500652 MAXXPRO(Standard Characters, see http://uspto.report/TM/88500652/mark.png) has been amended as follows:

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

US Application No 88500652 Mark: MAXXPRO Amended Goods in class 013 Automatic firearm ammunition belts; Belts adapted for ammunition; Cartridge belt filling machines; Cartridge cases; Cartridge fillers; Cartridge pouches; Cleaning brushes for firearms; Gun belts; Gunstock recoil pads; Gunstocks; Hand gun accessories, namely, belt clips for securing a gun without the use of a holster; Holsters; Hunting firearms; Shoulder straps for weapons; Sighting mirrors for guns; Sighting mirrors for rifles; Sights, other than telescopic sights, for firearms; Sprays for personal defense purposes; Tripods and stands for firearms; Noise suppressors for guns; Pistol holsters Section 2(d) Refusal. Examiner has cited U.S. Registration Nos. 2825167 and 2834488 for PROMAX as a word mark and with a design, in association with, in relevant part, ?Containers for storage and transport of items used by outdoorspeople, namely, firearm cases? in class 013. A. The Marks Must be Considered in their Entireties. In comparing Applicant's and Registrants' marks, the marks must be compared in their entireties. A mark should not be dissected or split up into its component parts and each part then compared with corresponding parts of the conflicting mark to determine the likelihood of confusion. It is the impression that the mark as a whole creates on the average reasonably prudent buyer and not the parts thereof, that is important. See e.g., Massey Junior College, Inc. v. Fashion Institute of Technology, 492 F.2d 1399, 1402, 181 U.S.P.Q. 272, 273 (C.C.P.A. 1974) ("It is axiomatic that a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion."); Dreyfus Fund, Inc. v. Royal Bank of Canada, 525 F. Supp. 1108, 213 U.S.P.Q. 872 (S.D.N.Y. 1981) (quoting treatise); In re National Data Corp., 753 F.2d 1056, 224 U.S.P.Q. 749, 751 (Fed. Cir. 1985) ("[L]ikelihood of confusion cannot be predicated on dissection of a mark, that is, on only part of a mark."); General Mills, Inc. v. Kellogg Co., 824 F.2d 622, 3 U.S.P.Q.2d 1442, 1445 (8th Cir. 1987) ("[I]n analyzing the similarities of sight, sound and meaning between two marks, a court must look to the overall impression created by the marks and not merely compare individual features."); Duluth News-Tribune v. Mesabi Publ.Co., 84 F.3d 1093, 38 U.S.P.Q.2d 1937 (8th Cir. 1996) ("Rather than consider the similarities between the component parts of the marks, we must evaluate the impression that each mark in its entirety is likely to have on a purchaser exercising the attention usually given by purchasers of such products."). A significantly different display of the same term or an addition of a distinctive element (i.e. term or design) can avoid a likelihood of confusion. First Savings Ban, F.S.B. v. First Bank Systems, Inc., 40 U.S.P.Q.2d 1865 (10th Cir. 1996) (no confusion between FIRST BANK and FIRST BANK SYSTEM (and design)). B. The Marks at Issue Create Unique Commercial Impressions. Applicant?s mark MAXXPRO starts with MAX, rather the the PRO of the Registrants? mark. Not only is the appearance of the starting syllables, between MAXX and PRO, different, but the sound is different. It is well known that the first syllable of a trademark is the most important from the point of view of consumer impression. When considered in their entireties, the marks are different from each other. Applicant?s MAXXPRO also has a unique spelling MAXX, noticeable for the consumer and taking the mark away from merely MAX, connoting a maximum, to MAXX. Based on the differences in the marks, and the commonality of both PRO and MAX in the firearms field, as discussed below, the marks are distinctive from one another in the firearms field, in both sound and appearance. C. The Goods are Different. Registrant?s goods are similar in the area of firearms cases. It is submitted that goods such as cartridge cases, gunstocks, gun cleaning equipment, and firearms themselves are clearly different from the Registrant?s goods ID, and do not have a likelihood of confusion. Applicant has removed ?:Bags specially adapted to hold rifles; Gun cases; Rifle cases; Weapon cases for firearms;? from the goods ID to remove a likelihood of confusion with Registrant?s marks. Therefore there is no overlap between the goods of Registrant and goods of the Applicant. D. The Channels of Trade are Different. Firearm cases are provided in different channels of trade than firearms, cartridges, firearm parts and gun cleaning equipment. As can be seen from the attached screenshot from Cabela?s, a large shooting and firearms retailer, gun cases are under the heading ?Gun Storage?, a separate heading from Ammunition (where cartridges may be found), Gun Maintenance (like cleaning kits), Holsters & Belts, and Firearms themselves. From this differentiation, we can see that consumers segment their needs in the firearms area - when they are looking for firearms or holsters, they do not also want to see gun cases because the products are not substitutes or closely related.They would not appear on the shelf next to one another. D. The Number of Similar marks in the Register. There are a vast number of marks with PRO or MAX in the firearms field (see enclosed search results). These are common laudatory words, suggestive of ?professional? in the case of PRO and ?maximum? in the case of MAX. These parts in the mark are not overly distinctive, and Applicant suggests that the commonality of these terms results in a smaller ambit of protection for these terms. Applicant believes that the Du Pont factors weigh in Applicant's favor and requests the Examiner reconsider and withdraw the Section 2(d) refusal.

EVIDENCE
Evidence in the nature of Formatted response, Internet evidence, TESS evidence has been attached.
JPG file(s):
Evidence-1
Evidence-2
Original PDF file:
evi_174671749-20191007100456665412_._6MM_PRO_SHOP.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_174671749-20191007100456665412_._PRO_CENTER.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_174671749-20191007100456665412_._MAXXPRO_Office_Action_Response.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_174671749-20191007100456665412_._PROMAG.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_174671749-20191007100456665412_._PRO.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Original PDF file:
evi_174671749-20191007100456665412_._PRO_TECH_OUTDOORS.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_174671749-20191007100456665412_._PROMATCH.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_174671749-20191007100456665412_._PRO_MAG.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_174671749-20191007100456665412_._PRO_REACH.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_174671749-20191007100456665412_._PRO-SHOT.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_174671749-20191007100456665412_._PRO-SHOT2.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_174671749-20191007100456665412_._PROFIRE.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_174671749-20191007100456665412_._PRO_GARD.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_174671749-20191007100456665412_._XMARK_PRO.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_174671749-20191007100456665412_._PRO_P.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_174671749-20191007100456665412_._PRO_3.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_174671749-20191007100456665412_._LAW_PRO.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_174671749-20191007100456665412_._PRO_SERIES.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2

The applicant hereby appoints Nyall Engfield. Other appointed attorneys are Nyall Engfield. Nyall Engfield of Calstrat Counsel, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      2100 Palomar Airport Rd Ste 214-29
      2100 Palomar Airport Rd Ste 214-29
      Carlsbad, California 92011-4402
      United States
to submit this Response to Office Action Form on behalf of the applicant.
The docket/reference number is MAXX-001.

The phone number is 7602341231.

The email address is orders@trademarkraft.com

Nyall Engfield 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: HUAMING CHEN. HUAMING CHEN of XIAMEN HENG RONG YI MAO YI YOU XIAN GONG SI, is located at

      UNIT 6 ROOM 622, BUILDING 2
      NO. 28 YINTING ROAD, JIMEI DISTRICT
      XIAMEN, 361021
      CN

The phone number is +86-18120787397.

The email address is info@maxxcollections.com

The applicants proposed correspondence information: Nyall Engfield. Nyall Engfield of Calstrat Counsel, is located at

      2100 Palomar Airport Rd Ste 214-29
      2100 Palomar Airport Rd Ste 214-29
      Carlsbad, California 92011-4402
      United States
The docket/reference number is MAXX-001.

The phone number is 7602341231.

The email address is orders@trademarkraft.com

SIGNATURE(S)
Response Signature
Signature: /s/     Date: 10/07/2019
Signatory's Name: Nyall Engfield
Signatory's Position: Attorney of Record, CA Bar

Signatory's Phone Number: 7602341231

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:    HUAMING CHEN
   XIAMEN HENG RONG YI MAO YI YOU XIAN GONG SI
   UNIT 6 ROOM 622, BUILDING 2
   NO. 28 YINTING ROAD, JIMEI DISTRICT
   XIAMEN, 361021
Mailing Address:    Nyall Engfield
   Calstrat Counsel
   2100 Palomar Airport Rd Ste 214-29
   2100 Palomar Airport Rd Ste 214-29
   Carlsbad, California 92011-4402
        
Serial Number: 88500652
Internet Transmission Date: Mon Oct 07 10:11:59 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.X-20191007101159464
694-88500652-610159257b6d52e3af939b65680
5ddc5d9e3e77847f350d0794ae732a46c6a2eb-N
/A-N/A-20191007100456665412