TEAS Response to Suspension Inquiry

PTO- 1822

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

---

PTO- 1822

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 Suspension Inquiry or Letter of Suspension

To the Commissioner for Trademarks:

Application serial no. 90462033 PRIMO (Stylized and/or with Design, see http://uspto.report/TM/90462033/mark.png) has been amended as follows:

OTHER REASON
The Examining Attorney has placed the instant application in suspense pending the outcome of Application Serial No 88345068, PRIMO for ?Battery-operated night lights; Electric night lights; Toilet trainer seats, namely, smaller training seats for attachment to full-size toilets and toilet seats for training purposes? in Class 11; ?Baby carrier covers specially adapted for baby carriers worn on the body; Baby carriers worn on the body; Pouch baby carriers? in Class 18; ?Baby bouncers; Baby changing tables; Bassinets; Bed rails; Chests for toys; Cribs; Cribs for babies; High chairs; High chairs for babies; Infant beds; Infant bouncers; Non-metal step stools; Play yards; Playpens for babies; Portable baby bath seats for use in bath tubs; Portable bath seat; Toy boxes and chests; Toy chests; Cot tidies, namely, fabric organizers to hang on side of cribs; Fitted covers for high chairs? in Class 20; ?Baby bathtubs; Infant bathtubs; Inflatable bath tubs for babies; Stands for portable baby baths? in Class 21; and ?Baby swings; Infant swings? in Class 28, owned by Jersey Plastic Molders (?Jersey Plastic?). Applicant, JW Mobile, respectfully submits that there is no potential conflict with the cited application for the following reasons. JW Mobile assumes the basis for the suspension is solely the potential conflict with Jersey Plastic?s Class 11 goods, since there is no possible relevance of any of the other listed goods of Serial No 88345068. The question, then, is whether there is a likelihood of confusion between PRIMO for ?LED light strips for decorative purposes; Strip lighting for indoor use? on the one hand, and PRIMO for ?Battery-operated night lights; Electric night lights; Toilet trainer seats, namely, smaller training seats for attachment to full-size toilets and toilet seats for training purposes? on the other hand? Again, JW Mobile assumes the Examining Attorney does not believe any conflict arises between JW Mobile?s Class 11 goods and ?Toilet trainer seats, namely, smaller training seats for attachment to full- size toilets and toilet seats for training purposes.? This reduces the issue to whether there is a likelihood of confusion between PRIMO for ?LED light strips for decorative purposes; Strip lighting for indoor use? (JW Mobile) and PRIMO for ?Battery-operated night lights; Electric night lights? (Jersey Plastic)? JW Mobile submits that there is no likelihood of confusion. First, according to the Oxford Languages dictionary, a night light is ?a small lamp, typically attached directly to an electrical outlet, providing a dim light during the night.? The operative word is ?dim,? since the purpose of a night light is well-known to be to provide sufficient light to enable the user to move around a dark room or hallway, but not enough light to disturb sleep. See, Ex 1. By contrast, Wikipedia defines LED strip lighting as follows: An LED strip light (also known as an LED tape or ribbon light) is a flexible circuit board populated by surface mounted light-emitting diodes (SMD LEDs) and other components that usually comes with an adhesive backing. Traditionally, strip lights had been used solely in accent lighting, backlighting, task lighting, and decorative lighting applications. Increased luminous efficacy and higher-power SMDs have allowed LED strip lights to be used in applications such as high brightness task lighting, fluorescent and halogen lighting fixture replacements, indirect lighting applications, ultraviolet (UV) inspection during manufacturing processes, set and costume design, and even growing plants. See, Ex 2. LED strip lighting simply serves a different purpose, and may be especially bright, as in task lighting or halogen lighting replacement. Insofar as likelihood of confusion is concerned, the issue in trademark cases is not whether LED strip lighting could possibly be used for a night light, but whether consumers shopping for night lights and encountering JW Mobile?s LED strip lighting products would think they came from the same source or were associated with the same source? Given the products? very different purposes, the answer is no. Moreover, the answer is no, looking only at the parties? descriptions of goods and services ? which are limited to ?night lights? on the one hand and ?LED strip lights? on the other hand ? even without regard to the parties? actual use of their products. Considering the parties? actual use of their products, JW Mobile submits that the likelihood of confusion issue can be conclusively settled in favor of no likelihood of confusion. Jersey Plastic did not file any specimen of use that is a night light in Class 11, but opted instead to file a specimen of a toilet trainer seat. See, Ex 3. However, more importantly, Jersey Plastic admitted in arguments submitted on April 15, 2019 (in response to an office action) that its mark had been used concurrently with the cited registrants? marks for 23 years, and that there had been no confusion with the cited registrants? mark, because the registrants? marks were used for adult products, while Jersey Plastic?s mark was used for baby products. See, Ex 4. This admission is significant here, because it clarifies, as a matter of record, that the night lights in question are for babies, and are sold through trade channels for baby products (the argument was put forward expressly in connection with trade channels, among other things), and this use has been consistent for many years. By contrast, JW Mobile?s products are not for babies, as evidenced in the specimen of use JW Mobile filed in support of its application. See, Ex 5. Indeed, JW Mobile uses the generic terminology ?Wireless Home Entertainment LED Lighting? for its products. On this basis, there is no likelihood of confusion with Jersey Plastic?s night lights for babies? rooms, given the very different purposes of the products and different trade channels where they are sold. Moreover, both Jersey Plastic and JW Mobile make and sell other products under their respective marks that place their Class 11 products in separate brand families. Jersey Plastic makes dozens of baby products under the PRIMO mark having nothing to do with lighting. JW Mobile makes and sells dozens of wireless phone accessory and lifestyle products under its registered PRIMO mark that consumers are already familiar with. Consumers would thus naturally associate a night light product for baby rooms with Jersey Plastic and its other baby products; and an LED strip lighting product for wireless home entertainment with JW Mobile and its other wireless phone accessory and lifestyle products. Finally, the instant application is for a highly stylized graphical treatment of the PRIMO mark. Not only does this further distinguish it from Jersey Plastic?s PRIMO mark, but it directly associates JW Mobile?s mark with JW Mobile?s other PRIMO products, similarly and uniformly sold using the same highly stylized graphical treatment. For all the foregoing reasons, JW Mobile respectfully requests that the potential likelihood of confusion finding with respect to Jersey Plastic?s currently pending application be set aside; JW Mobile?s pending application be removed from suspense; and JW Mobile?s pending application be allowed to proceed forthwith to registration.
Original PDF file:
OT_24234173215-120629981_ ._Exhibit_1.pdf
Converted PDF file(s) (1 page)
1
Original PDF file:
OT_24234173215-120629981_ ._Exhibit_2.pdf
Converted PDF file(s) (4 pages)
1
2
3
4
Original PDF file:
OT_24234173215-120629981_ ._Exhibit_3.pdf
Converted PDF file(s) (5 pages)
1
2
3
4
5
Original PDF file:
OT_24234173215-120629981_ ._Exhibit_4.pdf
Converted PDF file(s) (9 pages)
1
2
3
4
5
6
7
8
9

Correspondence Information (current):
      Philip A Kantor
      PRIMARY EMAIL FOR CORRESPONDENCE: prsak@aya.yale.edu
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED
Correspondence Information (proposed):
      Philip A Kantor
      PRIMARY EMAIL FOR CORRESPONDENCE: prsak@aya.yale.edu
      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 applicant owner/holder and the applicant owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

Response Suspension Inquiry Signature
Signature: /Philip A Kantor/     Date: 10/26/2021
Signatory's Name: Philip A Kantor
Signatory's Position: Attorney of record Nevada Bar No 6701
Signatory's Phone Number: 17022551300
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:    Philip A Kantor
   LAW OFFICES OF PHILIP A KANTOR PC
   
   1781 VILLAGE CENTER CIR STE 120
   LAS VEGAS, Nevada
Mailing Address:    Philip A Kantor
   LAW OFFICES OF PHILIP A KANTOR PC
   1781 VILLAGE CENTER CIR STE 120
   LAS VEGAS, Nevada 89134
        
Serial Number: 90462033
Internet Transmission Date: Tue Oct 26 12:16:47 ET 2021
TEAS Stamp: USPTO/RSI-XX.XXX.XXX.XXX-202110261216470
45316-90462033-78198f35fcc956c8a625c2619
fd676d2b6d53a0a7e85cb3a8f5b34aa7994981-N
/A-N/A-20211026120629981862