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. 90079765 VEHICLE MASTERS PERFORMANCE CENTER(Standard Characters, see http://uspto.report/TM/90079765/mark.png) has been amended as follows:

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

The following is entered into evidence on behalf of Ser. No. 90036581 VEHICLE MASTERS The following is entered into evidence on behalf of Ser. No. 90079765 VEHICLE MASTERS PERFORMANCE CENTER Both have identical issues; this document will be filed with each. /Christopher Renneker/ Examining Attorney Law Office 121 571-272-8045 christopher.renneker@uspto.gov SECTION 2(d) REFUSAL ? LIKELIHOOD OF CONFUSION Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 1487817 and 2614011. Trademark Act Section 2(d), 15 U.S.C. ?1052(d); see TMEP ??1207.01 et seq. See the attached registrations. Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the services of the parties. See 15 U.S.C. ?1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the ?du Pont factors?). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Any evidence of record related to those factors need be considered; however, ?not all of the DuPont factors are relevant or of similar weight in every case.? In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)). RESPONSE: I?m going to show you what is confusing and seems to be acceptable. All of the following are trademarked and have the situation you impose on me, front and center. I have some very recognizable brands and the description of their names alongside the similarities in goods and service? I present exhibit 1 You could say that cola is like beer and it?s not a name it?s a thing or vise versa, but then I?d say Master is like teacher, technician, journeyman, professor, sensei Dr., Doctor, medic and all other things that make it general, just like the dollar group I have. All trademarked, all identical in every way. All active links, but you need not, you understand everything these companies are without looking, and you are probably not confused when you do it. Pepsi Coke Canfields http://www.dollartree.com/dt-home-2021 http://www.dollargeneral.com/ http://www.familydollar.com/ http://99only.com/ By the logic that?s presented with the argument about similarities, you would have to give brake work to Midas or Sears Roebuck and Co. One of these branded, trademarked entities would have been doing this type of work 30 or 40 years prior to brake masters getting their ?exclusive? use of a very generic word. All of my google research on Vehicle Masters bring my to an Australian company that sells cars. Nothing else in the world populated on google for vehicle masters with the exception of my independently owned and operated single unit small business. My exterior with proposed signage vs. Brake Masters is very different. You can?t confuse black with cream. I?m in Illinois and they have locations all in the south west. By the time you read this, you will see my website live. You can see that I?ll a specialty shop. I would be classed as custom. You can see that Brake Masters in very much like Midas, Firestone, Goodyear, Pep Boys and a host of other that are all doing brake work and they are all registered trademarks that have to be listing all the same services that conflict with me, but not them. Link My shop exterior http://www.brakemasters.com/ http://www.servicemaster.com/ Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int?l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (?The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.?); TMEP ?1207.01. A vehicle is a thing. That make it a noun. A Master is a person or refers to a person that is at the top of their game in craftsmanship. Master Chef. A person that wins the competition is the Master ? person ? thing ? noun. Vehicle Master ? refers to a person that has mastered all sorts of vehicles. Master Technician. It?s a thing in my industry that walks and talks. Also known as a person ? ASE master tech. Steve?s Vehicle Masters? is this better? Steve, master of vehicles. No different, just more words. While general, they are pertinent to the industry. All things are general. Food stores, lumber yards, garden centers, furniture stores. How does this concern even exist. Conflicts are every wear by the same equation. And Service Master hits much closer to home with confusion, you have no idea what they service. But they have the name and so does ServPro and if I look, I?ll find more. This is not Molly Maid. Service Master could do anything, including auto repair. Pretty general, very confusing. At least I?m making it clear, I work on vehicles, not swing sets or door nobs. All of the above should have covered the following from the letter. I will remark in the next area I need to. Comparison of the Marks Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP ?1207.01(b)-(b)(v). ?Similarity in any one of these elements may be sufficient to find the marks confusingly similar.? In re Inn at St. John?s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff?d per curiam, 777 F. App?x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP ?1207.01(b). When comparing marks, ?[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.? Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP ?1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John?s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (C.C.P.A. 1971)), aff?d per curiam, 777 F. App?x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP ?1207.01(b). In this case, applicant?s mark is the wording ?VEHICLE MASTERS? appearing in standard characters. Registrant?s marks are the wording ?BRAKE MASTERS? appearing in standard characters and the stylized wording ?BRAKE MASTERS? with design elements. Applicant?s mark is highly similar to registrant?s marks in appearance, sound, and commercial impression. Regarding Registration No. 76088974, mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. ?2.52(a); TMEP ?1207.01(c)(iii). Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that ?the argument concerning a difference in type style is not viable where one party asserts rights in no particular display?). Here, since the applied for mark could be shown in any manner, it could be shown in a way identical to the registered mark. Therefore that the applied for mark appears in standard characters will not obviate confusion. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP ?1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34). Disclaimed matter that is descriptive of or generic for a party?s goods and/or services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP ?1207.01(b)(viii), (c)(ii). Matter that is descriptive of or generic for a party?s goods and/or services is typically less significant or less dominant in relation to other wording in a mark. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int?l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)). In the present case, the registered marks disclaim the wording ?BRAKE.? Further, the attached evidence shows that the wording ?VEHICLE? in the applied-for mark is merely descriptive of or generic for applicant?s goods and/or services. Thus, this wording is less significant in terms of affecting the mark?s commercial impression, and renders the wording ?MASTERS? in the applied for and registered marks the more dominant element of the mark. Because the marks are highly similar, purchasers are likely to believe that the services emanate from the same source. Therefore, the marks are confusingly similar, and the first prong of the likelihood of confusion test is met. Comparison of the Services The second prong of the likelihood of confusion test is a comparison of applicant?s and registrant?s services. Applicant?s services are: Automotive maintenance and repair; Motor vehicle maintenance and repair; Repair, maintenance and modification of suspensions, cars, trucks, all terrain vehicles, utility vehicles, dirt bikes, street bikes, motorcycles, snow mobiles, personal water crafts. small boats; Vehicle repair and maintenance Registrant?s services are: 1487817: Automotive brake repair services 2614011: Automotive brake service repair services The services are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int?l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP ??1207.01, 1207.01(a)(vi). The compared services need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP ?1207.01(a)(i). They need only be ?related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.? Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP ?1207.01(a)(i). In this case, applicant?s services are closely related to registrant?s services. The attached Internet evidence, consisting of screenshots from http://tonysautorepairs.com/, http://www.lortonauto.com/, http://www.lortonauto.com/, http://otcpowersports.com/, http://www.wickedmotorsfl.com/, and http://www.autotechservicedc.com/, establishes that the same entity commonly manufactures, produces, or provides the relevant services and markets the services under the same mark. Thus, applicant?s and registrant?s services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009). The evidence shows that purchasers are accustomed to encountering the services of the applicant and registrant offered under the same mark. Therefore, purchasers are likely to believe the services emanate from the same source. Accordingly, the services of applicant and the registrant are considered related for purposes of the likelihood of confusion analysis, and the second prong of the test is met. Conclusion Because the marks are highly similar and the services are closely related, there is a likelihood of purchaser confusion as to the source of the services. Therefore, registration is refused under Section 2(d) of the Trademark Act. 15 U.S.C. ?1052(d). Although applicant?s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration. RESPONSE: I don?t understand the limits. By all accounts, you are saying there can only be 1 of everything. We all know that?s not the society we are living in. I hope this addresses all concerns. Thank you for your consideration Steve Becker

EVIDENCE

Original PDF file:
evi_1-6947842-20210414224 321548603_._TRADE_MARK_90 079765.pdf
Converted PDF file(s) ( 4 pages) Evidence-1Evidence-2Evidence-3Evidence-4

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Steve Becker, a corporation of Illinois, having an address of
      6012 W. 159th St.
      Oak Forest, Illinois 60452
      United States
      Email Address: XXXX
      708-687-6404
Proposed: PRIME MUFFLERS INC, DBA Vehicle Masters, a corporation of Illinois, having an address of
      6012 W. 159th Street
      6012 W. 159th St.
      Oak Forest, Illinois 60452
      United States
      Email Address: XXXX
      708-687-9955

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use PERFORMANCE CENTER AND VEHICLE apart from the mark as shown.

Correspondence Information (current):
      STEVE BECKER
      PRIMARY EMAIL FOR CORRESPONDENCE: vehiclemasterspc@gmail.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): TMApp@legalzoom.com
Correspondence Information (proposed):
      PRIME MUFFLERS INC
      PRIMARY EMAIL FOR CORRESPONDENCE: vehiclemasterspc@gmail.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): TMApp@legalzoom.com

The docket/reference number is 90079765.

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)
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: /Steve Becker/      Date: 04/14/2021
Signatory's Name: Steve Becker
Signatory's Position: Owner/President
Signatory's Phone Number: 7086879955

Signature method: Signed directly within the form

Response Signature
Signature: /Steve Becker/     Date: 04/14/2021
Signatory's Name: Steve Becker
Signatory's Position: Owner/President

Signatory's Phone Number: 7086879955 Signature method: Signed directly within the form

The signatory has confirmed that he/she is not represented by an authorized attorney, and that he/she is either: (1) the owner/holder; or (2) a person or persons with legal authority to bind the owner/holder; and if he/she had previously been represented by an attorney in this matter, either he/she revoked their power of attorney by filing a signed revocation with the USPTO or the USPTO has granted this attorney's withdrawal request.

Mailing Address:    STEVE BECKER
   
   
   6012 W. 159TH ST.
   OAK FOREST, Illinois 60452
Mailing Address:    PRIME MUFFLERS INC
   6012 W. 159th Street
   6012 W. 159th St.
   Oak Forest, Illinois 60452
        
Serial Number: 90079765
Internet Transmission Date: Wed Apr 14 22:53:26 ET 2021
TEAS Stamp: USPTO/ROA-XX.XX.X.XX-2021041422532669769
2-90079765-7706144c5ec977189b464ce6d4789
45a219637f77db7a6f26a62d85fbc98aad33-N/A
-N/A-20210414224321548603