Response to Office Action

PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

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PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88877746 REVOLT(Standard Characters, see http://uspto.report/TM/88877746/mark.png) has been amended as follows:

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

U.S. Trademark Reg. App. Serial Number 88/877,746

Mark: REVOLT

Remarks with respect to Office Action:

Registration was initially refused based upon a likelihood of confusion with respect to U.S. Reg. No. 5,574,951 for a mark "consisting of the word "REVOLT" within a quadrilateral-shaped carrier that resembles the shape of a battery, with the letter "V" in the shape of an EKG line." The Examiner argued that "incorporating the entirety of one mark within another does not obviate the similarity between the compared marks," citing Wella Corp. v. Cal. Concept Corp.., 558 F. 2d 1019, 1022 (C.C.P.A. 1977). However, the more paramount legal analysis starts with the requirement that "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," Massey Junior College, Inc. v. Fashion Institute of Technology, 492 F. 2d 1399, 1402 (C.C.P.A. 1974). In doing so, the similarities and differences in sight, sound, and meaning between the two marks, considering the overall commercial impressions created by the marks, rather than merely individual features, must be taken into account. General Mills, Inc. v. Kellogg Co., 824 F. 2d 622 (8^th Cir. 1987).

In the present case, the ‘951 mark immediately conveys the visual and meaning impression of dry cell-type batteries, as well as that electrical current is involved (separating the "re" from the "volt" portion of the work by the distinctive V), particularly for putting "life" into something (à la the EKG format). In short, battery charging comes to mind. In contrast, the present application conveys merely the dictionary meanings of the word REVOLT: rising in rebellion, doing something different than the conventional; putting an end to something which is unduly limiting, for example. Thus, the marks create diverse commercial impressions and should not be considered similar.

The Examiner asserted that "the attached Internet evidence from AutoZone.com . . . establishes that the same entity commonly provides the relevant or similar goods. . ." That evidence does not do so. None of the references show the Applicant’s goods or goods similar thereto. This error may have arisen from the Examiner’s misunderstanding of the Applicant’s goods. For example, in the Office Action the Examiner suggested that the description of goods be amended so as to state that the electric power generation systems . . . [were] . . for use in service OF vehicles" (emphasis added). However, the Applicant’s goods are for use BY vehicles and IN vehicles but not for service OF vehicles. The Applicant’s goods are not batteries and do not include batteries. Indeed, the compressors typically being run by the Applicant’s products cannot be powered by conventional batteries in any practical sense, due to the substantially greater power demands of those devices. The description of goods has been amended so as to clarify this distinction. Thus, the goods to which the respective marks are applied should not be considered sufficiently related.

Therefore, the two key considerations relied upon by the Examiner do not support the rejection, and that rejection should be withdrawn, and this case passed to publication.

It is the Applicant's understanding that the goods listed by this amendment are only those appropriate in International Class 9. Accordingly, the requirement for multi-class registration is respectfully traversed.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Electrical power generation systems for use in service vehicles, to run compressors and electrical power driven equipment mounted or stored within the vehicle
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: Electrical power generation systems for use in service vehicles, to run compressors and electrical power driven equipment mounted or stored within the vehicle; Electrical power generation systems, comprised of a vehicle mountable electric power source having one or more alternators in series which provide electricity to a power distribution panel, for use in service vehicles, to run compressors and electrical power driven equipment mounted or stored within the vehicleClass 009 for Electrical power generation systems, comprised of a vehicle mountable electric power source having one or more alternators in series which provide electricity to a power distribution panel, for use in service vehicles, to run compressors and electrical power driven equipment mounted or stored within the vehicle
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.

Webpage URL: None Provided
Webpage Date of Access: None Provided

Correspondence Information (current):
      RYAN M. FOUNTAIN
      PRIMARY EMAIL FOR CORRESPONDENCE: RyanFountain@aol.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED
Correspondence Information (proposed):
      Ryan M. Fountain
      PRIMARY EMAIL FOR CORRESPONDENCE: RyanFountain@aol.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

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: /Ryan M. Fountain/     Date: 01/19/2021
Signatory's Name: Ryan M. Fountain
Signatory's Position: Attorney of record, Indiana Bar member

Signatory's Phone Number: 574-258-9296 Signature method: Signed directly within the form

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:    RYAN M. FOUNTAIN
   
   420 LINCOLN WAY WEST
   420 LINCOLN WAY WEST
   MISHAWAKA, Indiana 46544
Mailing Address:    Ryan M. Fountain
   420 LINCOLN WAY WEST
   420 LINCOLN WAY WEST
   MISHAWAKA, Indiana 46544
        
Serial Number: 88877746
Internet Transmission Date: Tue Jan 19 20:25:27 ET 2021
TEAS Stamp: USPTO/ROA-XXXX:XXX:XXXX:XXXX:XXXX:XXXX:X
XXX:XXXX-20210119202527391705-88877746-7
60714944b78645fb4de8e7b424842b7958231113
dccd26a87dac291d76999f9d-N/A-N/A-2021011
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