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. 88571248 INNERSCAN PRO(Standard Characters, see http://uspto.report/TM/88571248/mark.png) has been amended as follows:

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

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE RESPONSE TO OFFICE ACTION Tanita Corporation, hereby responds to the Office Action, dated November 13, 2019, in which the U.S. Patent and Trademark Office (?USPTO?) refused registration of INNERSCAN PRO ("Applicant's Mark") on the Principal Register. The Examining Attorney presented two issues that Applicant must address: (1) Likelihood of Confusion under Section 2(d); and (2) information of the mark. In filing this response, Applicant simultaneously submits the information required by the Examining Attorney. Applicant?s arguments as to (1) are set forth below. Applicant respectfully states that Applicant and owner of cited registrations are related companies. Therefore, the refusal of the Applied-For-Mark under Section 2(d) is improper. Applicant submits that the INNERSCAN cited marks and the products identified with INNERSCAN PRO will be designed and manufactured by the same entities. (1) No Likelihood of Confusion Section 2(d) of the Trademark Act, 15 U.S.C. ?1052(d), requires that the examining attorney refuse registration when an applicant?s mark, as applied to the specified goods or services, so resembles a registered mark as to be likely to cause confusion. TMEP 1207.01. The issue in a likelihood of confusion analysis is whether the marks are likely to confuse consumers with respect to the source or origin of the goods or services. See, e.g., Paula Payne Prods. Co. v. Johnson?s Publ?g Co., 473 F.2d 901, 902, 177 USPQ 76, 77 (C.C.P.A. 1973) ("[T]he question is not whether people will confuse the marks, but rather whether the marks will confuse people into believing that the goods they identify emanate from the same source."); In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003) ("[T]he . . . mistaken belief that [a good] is manufactured or sponsored by the same entity [as another good] . . . is precisely the mistake that ?2(d) of the Lanham Act seeks to prevent."). In general, registration of confusingly similar marks to separate entities is barred by ?2(d) TMEP 1201.07 (a). However, if the products emanate from closely related companies, the standards of the risk of confusion and/or association analysis is dismissed. In re Wella A.G., 787 F.2d 1549, 1552, 229 USPQ 274, 276 (Fed. Cir. 1986); cf. In re Wacker Neuson SE, 97 USPQ2d 1408 (TTAB 2010) (finding that the record made clear that the parties were related and that the goods and services were provided by the applicant). In the present case, Applicant asserts that the risk of confusion argued by the Examining Attorney is improper because Applicant, Tanita Corporation, and Registrant of cited Registration No. 2,818,721 and Registration No. 3,025,172 for INNERSCAN by Kabushiki Kaisha TANITA are legally and commercially related companies. Further, Applicant states that the INNERSCAN and INNERSCAN PRO marks and the products will emanate from the same source. Thus, the deception about source or origin of the goods required by the Trademark Act, 15 U.S.C. ?1052(d) to infer likelihood of confusion does not exist. The affiliation between Applicant and Registrant for the cited registrations is a key factor that negates any likelihood of confusion in this case.   (2) Applicant and Registrant for Cited Registrations are related Companies Applicant states that it is the owner of the INNERSCAN marks in the U.S. Further, Applicant submits that there is a legal and commercial relationship between Tanita Corporation and Kabushiki Kaisha TANITA, as Tanita Corporation is the legal entity adopted to distribute the INNERSCAN products in the U.S. Applicant asserts that Tanita?s parent company is located in Tokyo, and that the company maintains six sister companies worldwide to distribute its products in International markets. Applicant submits screen shots from the company?s website showing the relation between Tanita Corporation and Tanita?s Parent Company. Please see Exhibit A. Applicant also states that ?Kabushiki Kaisha? is the equivalent to ?corporation? in Japan and that it has adopted Tanita Corporation to operate in the U.S. Applicant submits online articles which indicate the connotation of ?Kabushiki Kaisha? and ?corporation? in Japan. In light of the corporate and legal relationship between Kabushiki Kaisha TANITA and Tanita Corporation, it is clear that there is no likelihood of confusion in the public mind because the Tanita Companies constitute a single source. In re Wella A.G., 787 F.2d 1549, 1552, 229 USPQ 274, 276 (Fed. Cir. 1986). Applicant submits screen shots from the companies? websites which show that the Tanita Companies use, promote and manufacture weight and body composition scales and related apparatus worldwide. Please see Exhibit B. In light of the ownership and commercial relationship between the Tanita Corporation and Kabushiki Kaisha TANITA, Applicant asserts that there is unity of control, a single source and that no likelihood of confusion under Section 2(d) should be applied. TMEP 1201.07(b)(i). In re Wacker Neuson SE,97 USPQ2d 1408 (TTAB 2010) (finding that the record made clear that the parties were related and that the goods and services were provided by the applicant). Further, to support the relationship between the Tanita Companies, Applicant asserts that it has established global programs as well as a central parent company to manufacture, commercialize, and supply its products globally. Applicant submits screen shots from the company?s website which describe Tanita?s technology, search, and its operation. Please see Exhibit C. The above-mentioned documents support that there is a legal and commercial relationship between Tanita Corporation and Kabushiki Kaisha TANITA, and that the association that consumers may infer between the Applied-for-Mark and the cited registrations is valid because the products originate from a single source. As in Wella A.G., the close relationship between Tanita Corporation and Kabushiki Kaisha TANITA, will obviate any likelihood of confusion in terms of association or affiliation. Accordingly, Applicant respectfully request the Examining Attorney withdraw the Refusal, and approve the mark for publication. (3) Information about Applicant?s Goods Applicant asserts that it intends to use the wording ?PRO? as the abbreviation of ?professional? and that the products are of high quality and can be used by the general consumer (professionals and non-professionals). Conclusion It was determined that the global control of the manufacture, supply and commercialization of Tanita?s products supports that the goods originate from a single source. Applicant fully supports that there is not a likelihood of confusion as to the source or sponsorship of the goods because the mark originate from the same source. Therefore, Applicant respectfully requests that the Examining Attorney withdraw the Refusal, and approve the mark for publication

EVIDENCE
Evidence in the nature of 1. Copies of screen shots from company's website; copies on online articles 2. Copies of screen shots from company's website 3. Copies of screen shots from company's website has been attached.
Original PDF file:
evi_148641642-20200108155541468421_._INNERSCAN_PRO-_Exhibit_A.pdf
Converted PDF file(s) ( 20 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15
Evidence-16
Evidence-17
Evidence-18
Evidence-19
Evidence-20
Original PDF file:
evi_148641642-20200108155541468421_._INNERSCAN_PRO-_Exhibit_B.pdf
Converted PDF file(s) ( 15 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15
Original PDF file:
evi_148641642-20200108155541468421_._INNERSCAN_PRO-_Exhibit_C.pdf
Converted PDF file(s) ( 24 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15
Evidence-16
Evidence-17
Evidence-18
Evidence-19
Evidence-20
Evidence-21
Evidence-22
Evidence-23
Evidence-24

ADDITIONAL STATEMENTS
Claim of Active Prior Registration(s)
The applicant claims ownership of active prior U.S. Registration Number(s) 2818721 and 3025172.


SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Bassam N Ibrahim/ /s/      Date: 01/09/2020
Signatory's Name: Bassam N. Ibrahim
Signatory's Position: Attorney of Record, VA Bar Member
Signatory's Phone Number: 7038366620


Response Signature
Signature: /Bassam N Ibrahim/ /s/     Date: 01/09/2020
Signatory's Name: Bassam N Ibrahim
Signatory's Position: Attorney

Signatory's Phone Number: 7038386584

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.

        
Serial Number: 88571248
Internet Transmission Date: Thu Jan 09 11:10:33 EST 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XX-20200109111033809
938-88571248-700da7dee2ccdf2958ecac44c87
3dd1c959cc2591b6e2a2bb1d9787b692a2a763-N
/A-N/A-20200108155541468421