| 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 |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 90106578 |
| LAW OFFICE ASSIGNED | LAW OFFICE 106 |
| MARK SECTION | |
| MARK | mark |
| LITERAL ELEMENT | RAPTOR |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
|
In the outstanding Office Action, the Examining Attorney has issued (1) a refusal based on a likelihood of confusion with the marks in U.S. Registration Nos. 2714717 and 5517500: RAPTOR TACTICAL for military helmet covers (camouflage) and RAPTOR for safety glasses; and (2) a requirement for clarification of applicant’s goods. Applicant first notes that it has amended and narrowed its recitation of goods to specially define its goods as “protective head gear, namely, safety helmets .” Applicant submits that the narrowed description of its goods, together with the following remarks, supports a withdrawal of the noted refusal. In asserting the likelihood of confusion refusal, the Examining Attorney maintains that the marks share the same commercial impression because they share the term “RAPTOR”; and further maintains that the goods of the cited registrations and present application identify “complimentary goods” because the goods are “highly related” – in particular, that applicant’s protective head gear and helmets are highly related to registrants’ protective military caps for use with night vision goggles (US Reg. No. 5517500) and safety goggles (US Reg. 2714717). Applicant respectfully disagrees with the Examining Attorney’s conclusions that the goods are “highly related” and her reasoning that the cited evidence supports the conclusion that the goods are similar or complementary in terms of purpose or function, and that the goods are offered by the same owner. The internet evidence attached to the Office Action consists of website excerpts from NightVisionForLess.com, OpticsPlanet.com, RevisionMilitary.com, and Uarm.com – and while the Examining Attorney states that such website excerpts serve to further establish a similarity of the goods and that applicant’s and registrants’ goods are considered related for likelihood of confusion purposes, there is actually no demonstration showing a similarity or relatedness or similar source of the two registrant’s goods and applicant’s goods. The internet evidence provided by the Examining Attorney shows fully equipped night vision helmets that sell for $2500 and higher, and further shows that military ballistic helmets and protective goggles may be sold by the same source. Therefore, what the evidence shows is that the two REGISTERED marks are similar and used for similar or related or “complimentary” goods. So in fact, that same evidence actually shows that two RAPTOR marks may be registered and coexist for complimentary goods. There is no evidence showing that applicant’s industrial safety helmets are used in any military setting or originate from similar sources. As shown by applicant’s specimens of use, its safety helmets are not military helmets and are not similar to the military helmets shown in the Examining Attorney’s evidence; and indeed, at $79, applicant’s safety helmets are not in the same league as $2500+ night vision helmets shown in the cited evidence, which must certainly only be purchased after a high level of careful consideration. Applicant’s goods are industrial safety helmets to protect from injury from blows to the head in industrial/work settings – they are not intended for or equipped or approved for military use, nor are they designed or intended for use with night vision goggles. Further, if the one registrant’s RAPTOR mark for military caps for use with night vison goggles was approved over the other, earlier registrant’s mark for safety goggles, and those two marks were permitted by the USPTO to coexist, then so should applicant’s. The two cited marks are related in the sense that one mark’s protective goods are used with the goggles and the other mark’s protective goods are goggles. If such related goods are permitted to coexist, then so should applicant’s, especially since applicant’s safety helmets are not specifically described as being for use with goggles. Furthermore, the coexistence of the two cited marks, and support for coexistence of applicant’s mark as well, is supported by USPTO searches showing 294 active “RAPTOR” marks in the USPTO, 65 of those being in Class 9, and 21 of those being for goods described with the wording “protective” or “safety” – including at least one other RAPTOR mark (US Reg No. 3893433) for Class 9 goods including protective work gloves, which mark likewise proceeded to registration over the cited RAPTOR mark for goggles. Copies of such USPTO searches/records are attached. It appears from such searches that the strength of the term RAPTOR is relatively weak, and similar marks being used with goods falling in Class 9 or being described as safety or protective in nature, is simply not enough for two RAPTOR marks to be considered as conflicting or incapable of coexisting. In conclusion, applicant submits respectfully that its RAPTOR mark, now specifically recited for use with “protective head gear, namely, safety helmets,” is no longer broad enough to be considered close enough or related enough to the goods of the cited marks so as to result in a likelihood of confusion among the relevant consumers. Further, applicant’s RAPTOR mark for specifically safety helmets is not any closer to either of the cited marks, than the cited marks are to each other. In view of the above, applicant submits that it has properly complied with the requirement for clarification of its goods, that the Section 2(d) refusal should be withdrawn, and that the present application should be approved for publication. If anything further is required to do so, the Examining Attorney is invited to contact applicant’s undersigned attorney of record. Respectfully submitted, Lisa B. Lane Attorney of record Fox Rothschild LLP 215.299.2900 – direct 609.413.5699 – cell llane@foxrothschild.com |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_9811583161-2021061408 1006240633_._Abel_RAPTOR_ Response_to_OA_-_Evidence.pdf |
| CONVERTED PDF FILE(S) (8 pages) |
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| \\TICRS\EXPORT18\IMAGEOUT 18\901\065\90106578\xml4\ ROA0003.JPG | |
| \\TICRS\EXPORT18\IMAGEOUT 18\901\065\90106578\xml4\ ROA0004.JPG | |
| \\TICRS\EXPORT18\IMAGEOUT 18\901\065\90106578\xml4\ ROA0005.JPG | |
| \\TICRS\EXPORT18\IMAGEOUT 18\901\065\90106578\xml4\ ROA0006.JPG | |
| \\TICRS\EXPORT18\IMAGEOUT 18\901\065\90106578\xml4\ ROA0007.JPG | |
| \\TICRS\EXPORT18\IMAGEOUT 18\901\065\90106578\xml4\ ROA0008.JPG | |
| \\TICRS\EXPORT18\IMAGEOUT 18\901\065\90106578\xml4\ ROA0009.JPG | |
| DESCRIPTION OF EVIDENCE FILE | USPTO search results/records evidence as referenced herein. |
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 009 |
| DESCRIPTION | Protective head gear; safety helmets |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 06/18/2019 |
| FIRST USE IN COMMERCE DATE | At least as early as 06/18/2019 |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 009 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | Protective head gear, namely, safety helmets |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 06/18/2019 |
| FIRST USE IN COMMERCE DATE | At least as early as 06/18/2019 |
| WEBPAGE URL | None Provided |
| WEBPAGE DATE OF ACCESS | None Provided |
| CORRESPONDENCE INFORMATION (current) | |
| NAME | LISA B. LANE |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | ipdocket@foxrothschild.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | llane@foxrothschild.com; dfowler@foxrothschild.com |
| DOCKET/REFERENCE NUMBER | 101468.00029 |
| CORRESPONDENCE INFORMATION (proposed) | |
| NAME | Lisa B. Lane |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | ipdocket@foxrothschild.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | llane@foxrothschild.com; dfowler@foxrothschild.com |
| DOCKET/REFERENCE NUMBER | 101468.00029 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /lisa b lane/ |
| SIGNATORY'S NAME | Lisa B. Lane |
| SIGNATORY'S POSITION | Attorney of record, PA bar member |
| SIGNATORY'S PHONE NUMBER | 215.299.2900 |
| DATE SIGNED | 06/14/2021 |
| ROLE OF AUTHORIZED SIGNATORY | Authorized U.S.-Licensed Attorney |
| SIGNATURE METHOD | Sent to third party for signature |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Jun 14 13:44:19 ET 2021 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.XXX-2 0210614134419510493-90106 578-7807b893fb2e3da3c81fa ed16bc2247a496d48c7441cdf 937967b990f33afcda1-N/A-N /A-20210614081006240633 |
| 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 |
In the outstanding Office Action, the Examining Attorney has issued (1) a refusal based on a likelihood of confusion with the marks in U.S. Registration Nos. 2714717 and 5517500: RAPTOR TACTICAL for military helmet covers (camouflage) and RAPTOR for safety glasses; and (2) a requirement for clarification of applicant’s goods.
Applicant first notes that it has amended and narrowed its recitation of goods to specially define its goods as “protective head gear, namely, safety helmets .” Applicant submits that the narrowed description of its goods, together with the following remarks, supports a withdrawal of the noted refusal.
In asserting the likelihood of confusion refusal, the Examining Attorney maintains that the marks share the same commercial impression because they share the term “RAPTOR”; and further maintains that the goods of the cited registrations and present application identify “complimentary goods” because the goods are “highly related” – in particular, that applicant’s protective head gear and helmets are highly related to registrants’ protective military caps for use with night vision goggles (US Reg. No. 5517500) and safety goggles (US Reg. 2714717).
Applicant respectfully disagrees with the Examining Attorney’s conclusions that the goods are “highly related” and her reasoning that the cited evidence supports the conclusion that the goods are similar or complementary in terms of purpose or function, and that the goods are offered by the same owner. The internet evidence attached to the Office Action consists of website excerpts from NightVisionForLess.com, OpticsPlanet.com, RevisionMilitary.com, and Uarm.com – and while the Examining Attorney states that such website excerpts serve to further establish a similarity of the goods and that applicant’s and registrants’ goods are considered related for likelihood of confusion purposes, there is actually no demonstration showing a similarity or relatedness or similar source of the two registrant’s goods and applicant’s goods.
The internet evidence provided by the Examining Attorney shows fully equipped night vision helmets that sell for $2500 and higher, and further shows that military ballistic helmets and protective goggles may be sold by the same source. Therefore, what the evidence shows is that the two REGISTERED marks are similar and used for similar or related or “complimentary” goods. So in fact, that same evidence actually shows that two RAPTOR marks may be registered and coexist for complimentary goods. There is no evidence showing that applicant’s industrial safety helmets are used in any military setting or originate from similar sources. As shown by applicant’s specimens of use, its safety helmets are not military helmets and are not similar to the military helmets shown in the Examining Attorney’s evidence; and indeed, at $79, applicant’s safety helmets are not in the same league as $2500+ night vision helmets shown in the cited evidence, which must certainly only be purchased after a high level of careful consideration. Applicant’s goods are industrial safety helmets to protect from injury from blows to the head in industrial/work settings – they are not intended for or equipped or approved for military use, nor are they designed or intended for use with night vision goggles. Further, if the one registrant’s RAPTOR mark for military caps for use with night vison goggles was approved over the other, earlier registrant’s mark for safety goggles, and those two marks were permitted by the USPTO to coexist, then so should applicant’s. The two cited marks are related in the sense that one mark’s protective goods are used with the goggles and the other mark’s protective goods are goggles. If such related goods are permitted to coexist, then so should applicant’s, especially since applicant’s safety helmets are not specifically described as being for use with goggles. Furthermore, the coexistence of the two cited marks, and support for coexistence of applicant’s mark as well, is supported by USPTO searches showing 294 active “RAPTOR” marks in the USPTO, 65 of those being in Class 9, and 21 of those being for goods described with the wording “protective” or “safety” – including at least one other RAPTOR mark (US Reg No. 3893433) for Class 9 goods including protective work gloves, which mark likewise proceeded to registration over the cited RAPTOR mark for goggles. Copies of such USPTO searches/records are attached. It appears from such searches that the strength of the term RAPTOR is relatively weak, and similar marks being used with goods falling in Class 9 or being described as safety or protective in nature, is simply not enough for two RAPTOR marks to be considered as conflicting or incapable of coexisting.
In conclusion, applicant submits respectfully that its RAPTOR mark, now specifically recited for use with “protective head gear, namely, safety helmets,” is no longer broad enough to be considered close enough or related enough to the goods of the cited marks so as to result in a likelihood of confusion among the relevant consumers. Further, applicant’s RAPTOR mark for specifically safety helmets is not any closer to either of the cited marks, than the cited marks are to each other.
In view of the above, applicant submits that it has properly complied with the requirement for clarification of its goods, that the Section 2(d) refusal should be withdrawn, and that the present application should be approved for publication. If anything further is required to do so, the Examining Attorney is invited to contact applicant’s undersigned attorney of record.
Respectfully submitted,
Lisa B. Lane Attorney of record
Fox Rothschild LLP 215.299.2900 – direct
609.413.5699 – cell
llane@foxrothschild.com
