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. 88824112 CATALYST(Standard Characters, see http://uspto.report/TM/88824112/mark.png) has been amended as follows:

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

Commissioner for Trademarks PO Box 1451 Alexandria, VA 22313-1451 Sir/Madam: In reply to the Office communication of April 14, 2020, for which the period for reply ends October 14, 2020, Applicant respectfully requests reconsideration and publication of the application in view of the following remarks. Amendment to Identification of Goods Amend the identification of goods as follows: Amplifiers for musical instruments; Loudspeakers; Electronic effects pedals for use with musical instruments; Electronic audio interfaces, modifiers, signal processors, interfaces, tone modules, controllers, effects processors for use with musical instruments. Section 2(d) Issue Applicant requests registration of the mark CATALYST for Amplifiers for musical instruments; Loudspeakers; Electronic effects pedals for use with musical instruments; Electronic audio signal processors, tone modules, effects processors for use with musical instruments. The Office has refused registration under 15 U.S.C. ? 1052(d) based upon an alleged likelihood of confusion with the mark shown in registration 4246683. The refusal is respectfully traversed. The Office notes that likelihood of confusion under Trademark Act ? 2(d) is resolved based upon the factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973). All the factors should be considered in every case and resolution of ? 2(d) does not depend solely upon similarity of the marks and similarity of the goods or services, because one must ?determine likelihood of confusion by focusing on the question whether the purchasing public would mistakenly assume that the applicant's goods originate from the same source as, or are associated with, the goods in the cited registrations ? on a case-by-case basis, [citation], aided by the application of the [du Pont] factors ?? In re Majestic Distilling Co. (Fed. Cir. Jan. 2, 2003). The du Pont factors should be applied to the present case as follows. 1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression. Taking the marks in their entireties, a black-letter legal principle also noted in du Pont, the marks are not the same, and the Office action?s assertion that CATALYST is legally similar to IGNITE KATALYST is strained. The significance of IGNITE cannot be downplayed or ignored. Indeed, in cases when the applicant?s mark is similar to only a part of a multi-word registered mark, the Office always seems to pick a dominant portion to reach the result of refusal. If Applicant?s mark had been EGNYTE CATALYST, the Office doubtless would have argued that the IGNITE portion was dominant?correctly, because it comes first. Here, the Office skips over IGNITE and focuses only on KATALYST, which is not what consumers would do. Consumer behavior, as reflected in du Pont, mandates considering the whole mark. Consumers familiar with IGNITE KATALYST would have no immediate reason to consider the marks associated with the same source, because KATALYST is corrupted and Applicant?s mark doesn?t include IGNITE. The Office?s references to ?Applicant?s deletion of ?IGNITE?? and ?Incorporating the entirety of one mark within another? have no support in fact. These assertions reflect a level of intent which, to prove, would require evidence from the Applicant, which the Office does not have. Applicant has not looked at the registrant?s mark and deleted something to form its mark. It simply adopted the mark CATALYST. The Office?s ?shortened form? argument might be tenable if Applicant?s mark was IGNITE alone, but it is not. Applicant respectfully submits that the order of words matters and affects prominence in the consumer?s mind. So does the semantics of each word. IGNITE, being a more active verb?one could say incendiary?is far more likely to be ingrained in consumer memory than the second, less exciting word KATALYST. For all these reasons, there can be no presumption that consumers will see CATALYST as a shortened form of IGNITE KATALYST, or that any other rule of ?incorporating the entirety? or ?deletion? resolves the case. These rules over-complicate the issue. The IGNITE feature must be considered under du Pont, and adds a distinct difference in sound, meaning and connotation to IGNITE KATALYST that is not present in CATALYST. The marks are different, and the Office should resolve the first du Pont factor in favor of Applicant. 2. The similarity or dissimilarity and nature of the goods . . . described in an application or registration or in connection with which a prior mark is in use. The Office?s contention that the goods are similar also is strained. Consider the parties? goods side by side: Applicant Registrant Amplifiers for musical instruments; Loudspeakers; Electronic effects pedals for use with musical instruments; Electronic audio signal processors, tone modules, effects processors for use with musical instruments. Apparatus and instruments, namely, electronic controllers and data processers for the automated control of live and prerecorded audiovisual content, servers, and supervision cameras; software for the automated control of live and prerecorded audiovisual content Applicants respectfully submit that none of the registrant?s goods are ?for use with musical instruments.? Amplifiers, loudspeakers, effects pedals, and other electronic products for use with musical instruments are not the same as controllers or processors for movie or TV content, servers, or supervision cameras. Applicant?s products are not framed in terms of controlling movie or TV content, servers, or supervision cameras. At minimum, there is no readily apparent immediate connection between the two types of goods. Public evidence confirms the conclusion that the goods are unrelated. Upon information and belief, registrant?s goods are described in detail online at: http://www.grassvalley.com/products/ignite_katalyst/. Upon information and belief, registrant?s ?automation control panel? is quite clearly a form of hardware control for professional TV and movie studio equipment such as switchers and audio mixers. In simplified terms, upon information and belief, the IGNITE KATALYST product helps TV studio directors achieve automated control of programs that use the same playback, fade, transition and other effects with regularity, such as nightly TV news broadcasts. Upon information and belief, rather than have the director or switcher operator always manually execute switching, fade, dissolve, or audio mix operations, they can be automated. The registrant, Grass Valley Group, is well-known in the motion picture and TV production industry as a high-end manufacturer of studio control equipment. The registrant?s goods are not ?for use with musical instruments.? For these reasons, the second du Pont factor should be resolved in favor of Applicant. 3. The similarity or dissimilarity of established, likely-to-continue trade channels. The Office had adduced no evidence to show that the parties? trade channels are the same. The channels are likely to be different. Applicant can state as a matter of fact that its products are sold at wholesale to musical instruments stores and other retailers of consumer and professional musical instruments, amplifiers, speakers, effects and accessories. Examples include GUITAR CENTER retail stores and SWEETWATER online stores. In contrast, registrant?s goods appear to be directed to the professional audiovisual, movie and TV studio or production facilities markets and are likely to be sold by specialty retailers of those goods, or direct. The web page quoted above states that to order IGNITE KATALYST products, ?Please contact your authorized Grass Valley representative.? The registrant apparently operates a network of authorized sales representatives that its customers must use, but Applicant?s products are not sold through these representatives. Consequently, the parties? trade channels are different, and the third du Pont factor should be resolved in favor of Applicant. 4. The conditions under which and buyers to whom sales are made, i.e. "impulse" vs. careful, sophisticated purchasing. Based on the evidence submitted for factors 2 and 3 above, the parties? sales conditions are plainly quite different. Upon information and belief, Grass Valley products are known to be expensive, professional products, and the need to contact an authorized sales representative means that the sales cycle is necessarily long? at least a few days or hours?and requires completely different conditions such as e-mail or phone contact with a rep, followed by a purchase order, invoice and so forth. Upon information and belief, registrant?s product must be purchased carefully because it serves a crucial function?control of television production. Upon information and belief, buyers are likely to be TV station Master Control engineers or Directors of Engineering. This is a sophisticated, careful class, as necessary to purchase a product of this importance. In contrast, with Applicant?s products, the buyer could enter a GUITAR CENTER store and leave with a CATALYST amplifier within minutes via a credit card transaction. Online orders can be completed at the SWEETWATER website in minutes with no requirement for contact with an authorized representative. Players of musical instruments are likely to be less sophisticated than Grass Valley customers (yet still discerning and careful); while the purchase may be quicker, buyers still will exercise care to select the right amplifier or music effects processor because the quality of sound or tone is important to players. Based on the foregoing, the parties? sales conditions are distinct, and this du Pont factor should be resolved in favor of Applicant. 5. The fame of the prior mark. The standard for fame under federal law is high and compelling evidence is required to prove fame. Applicant is unaware of any basis to contend that IGNITE KATALYST is legally famous, and the Office has adduced no evidence of fame. Therefore, this du Pont factor should be resolved in favor of Applicant. 6. The number and nature of similar marks in use on similar goods. Searches in TESS indicate about 85 active records for applications for KATALYST or CATALYST as an element of a mark and reciting goods in International Class 009. Applicant has not determined the specific number of registrations or applications for CATALYST marks ?for use with musical instruments.? However, the rough number noted above for cases in IC 009 suggests that consumers are capable of distinguishing many CATALYST or KATALYST marks for different categories of electronics products. The parties? marks are not alone on the register for their respective goods, or among a handful of marks. Therefore, this du Pont factor should be resolved in favor of Applicant. 7. The nature and extent of any actual confusion. Applicant is unaware of any actual confusion. Therefore, this du Pont factor should be resolved in favor of Applicant. 8. The length of time during and the conditions under which there has been concurrent use without evidence of actual confusion. This application is an ITU case and Applicant has not yet filed an amendment to allege use. Therefore, this du Pont factor is neutral. 9. The variety of goods on which a mark is or is not used. Applicant is unaware of any evidence to show that the registrant is using IGNITE KATALYST on a large variety of goods that would justify a broader interpretation of its registration. Therefore, this du Pont factor should be resolved in favor of Applicant. 10. The market interface between the applicant and the owner of a prior mark. Applicant is unaware of any agreement or other market interface between the parties. Therefore, this du Pont factor is neutral. 11. The extent to which applicant has a right to exclude others from use of its mark on its goods. Applicant is unaware of any prior judgment, order, statute, level of fame, or other support for this factor for the registrant. Therefore, this du Pont factor is neutral. 12. The extent of potential confusion. Applicant is unaware of any reason why potential confusion would be widespread or damaging. Therefore, this du Pont factor is neutral. Based on the foregoing, all the du Pont factors appear to favor Applicant or have no effect on the resolution of a likelihood of confusion under ? 2(d). Even if the goods are considered somewhat similar and even if the marks have one term in common, a dominant number of other considerations point away from a likelihood of confusion. In particular, the customer classes, trade channels, and the nature of the goods and their uses all appear to be different. Applicant respectfully submits that the totality of evidence of record supports withdrawal of the ? 2(d) refusal and passing the case to publication. Reconsideration is respectfully requested. Prior Pending Application The Office action cites application 79209084. Applicant is not required to respond to a pending application and defers a complete response until such time as the application is actually cited as the basis of a refusal. Applicant notes that as of September 10, 2020, application 79209084 was under final refusal and approaching the end of the statutory reply period; therefore, whether the application is pending or abandoned should be checked before it is cited in a refusal. Furthermore, Applicant suggests that the Office should carefully consider whether the ?hi-fi? goods recited in application 79209084 are legally similar to Applicant?s goods, based upon available information about the specialty nature of the owner?s goods, such as http://www.whathifi.com/news/linn-updates- akurate-range-katalyst-dac-technology. There may be other evidence available online to indicate that the goods are distinct from the present applicant?s goods. / / / / / / / / /   Verification of Evidence The foregoing response includes, in part, statements of fact of the undersigned intended as introduction into evidence to traverse the ? 2(d) refusal. The undersigned, having been warned under 18 U.S.C. ? 1001 that willful false statements and the like are punishable by fine or imprisonment or both and may jeopardize the validity of the application and any registration issuing thereon, hereby declares that all statements of fact are true and all statements made upon information and belief are believed to be true. Signed at Palo Alto, California this 11th day of September 2020. YAMAHA GUITAR GROUP, INC. By /ChristopherJPalermo/ Christopher J. Palermo Attorney of record, California bar member 154151, Active status Baker Botts, L.L.P. 1001 Page Mill Road Building One Suite 200 Palo Alto, CA 94304 E-mail NYTMDPT@BakerBotts.com Alternate e-mail christopher.palermo@bakerbotts.com Telephone +1.650.739.7549 Alternate phone +1.650.353-0638

EVIDENCE
Evidence has been attached: Formatted soft copy of complete response to Office action
Original PDF file:
evi_6620148146-2020091112 2639321705_._52954820_1.pdf
Converted PDF file(s) ( 8 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Amplifiers for musical instruments; Loudspeakers; Electronic effects pedals for use with musical instruments; Electronic audio interfaces, modifiers, signal processors, interfaces, tone modules, controllers, effects processors for use with musical instruments
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and 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.


Proposed:

Tracked Text Description: Amplifiers for musical instruments; Loudspeakers; Electronic effects pedals for use with musical instruments; Electronic audio interfaces, modifiers, signal processors, interfaces, tone modules, controllers, effects processors for use with musical instruments; Electronic audio signal processors, tone modules, effects processors for use with musical instrumentsClass 009 for Amplifiers for musical instruments; Loudspeakers; Electronic effects pedals for use with musical instruments; Electronic audio signal processors, tone modules, effects processors for use with musical instruments
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and 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.
Correspondence Information (current):
      Christopher J. Palermo
      PRIMARY EMAIL FOR CORRESPONDENCE: nytmdpt@bakerbotts.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): christopher.palermo@bakerbotts.com

The docket/reference number is 088809.0179.
Correspondence Information (proposed):
      Christopher J. Palermo
      PRIMARY EMAIL FOR CORRESPONDENCE: nytmdpt@bakerbotts.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): christopher.palermo@bakerbotts.com

The docket/reference number is 088809.0179.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /ChristopherJPalermo/     Date: 09/11/2020
Signatory's Name: Christopher J. Palermo
Signatory's Position: Attorney of record, California bar member 154151

Signatory's Phone Number: 6503530638

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:    Christopher J. Palermo
   Baker Botts L.L.P.
   Building One, Suite 200
   1001 Page Mill Road
   PALO ALTO, California 94304-1007
Mailing Address:    Christopher J. Palermo
   Baker Botts L.L.P.
   Building One, Suite 200
   1001 Page Mill Road
   PALO ALTO, California 94304-1007
        
Serial Number: 88824112
Internet Transmission Date: Fri Sep 11 12:31:06 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2020091112310644
9365-88824112-750c9314e37692940ab9a2f439
f4c8870e66f95b6ca387154fa3cac86f445b49c-
N/A-N/A-20200911122639321705