IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE
`THE TRADEMARK EXAMINING OPERATION
`
`In re the application of
`Flexsys America, L.P
`Serial No. 75/931869
`Mark: QDI
`Filed: February 28, 2000
`
`Trademark Examining Attorney
`Yong Oh (Richard) Kim
`Law Office: 115
`
`RESPONSE TO OFFICE ACTION DATED JANUARY 24, 2003 AND REQUEST
`FOR RECONSIDERATION
`
`Applicant requests reconsideration of the Official Action dated January 24, 2003
`since the record contains evidence sufficient to show that there is no mutilation of the
`mark.
`
`The Official Action continued and made final the refusal for mutilation‘ of the
`
`mark on the grounds that the drawing was an incomplete representation of the mark as
`displayed on the specimens. Further, the Official Action reasoned that the applicant has
`failed to submit any evidence supporting its claim that Q-FLEX and QDI create separate
`commercial impressions as trademarks for the goods.
`
`Mutilation of Mark
`
`RESPONSE
`
`In the present case, the Applicant submits that there can be no question that the
`specimen submitted constitutes two distinct
`terms, each of which is capable of
`distinguishing applicant’s goods from like goods.
`In fact, the specimens clearly show a
`division between the Q-FLEX mark and the QDI mark as demonstrated by the multiple
`spaces between them. This separation between the marks is deliberately used by the
`Applicant to indicate to the consumer that the two marks are different marks, one
`indicating an umbrella brand and the other indicating a specific product within that brand.
`Historically, courts have allowed the registration of marks when specimens were
`submitted showing use that was much more closely joined with other marks and/or
`generic material than Applicant’s mark. See by way of example, In re Raychem Corp.,
`12 USPQ2d 1399 (TTAB 1989) in which the Board allowed the registration of the mark
`TlNEL—LOCK. In this case, the Examining Attorney required new specimens because
`she contended that the mark shown on applicant's drawing, "TINEL-LOCK," did not
`coincide with the mark "TR06AI-TINEL-LOCK-RING" used on the specimens. Id.
`When the requirement was made final, applicant appealed. Id. Both applicant and the
`Examining Attorney filed briefs. Id. An oral hearing was requested and was conducted.
`Id. The court held that the generic term "RING," although connected to the model
`number and the source-identifying term, "TlNEL—LOCK," by a hyphen, nonetheless
`played no integral role in forming the portion of applicant's mark which distinguishes
`applicant's goods from those of others. Id. Thus, the Board reversed the requirement of
`the Examiner for different specimens showing "TINEL-LOCK" used alone. Id.
`
`

`
`
`
`
`
`In the present case, it is the same, Q-FLEX is an umbrella mark of a family of
`products and the applicant’s other mark QDI is used to designate the particular member
`product of the Q-FLEX family of products. A consumer of the Q-FLEX family of goods
`would readily recognize that QDI is a product within the Q-FLEX family of goods and
`would recognize the two marks as two different marks. As such there can be no doubt
`that applicant’s mark clearly distinguishes appel1ant’s product from others of the same
`class; and that no person will be injured or deceived by its registration, so far as the
`record discloses.
`In re Servel Inc, 37 S.C.P.A. 977, 181 F.2d 192, 195, 85 USPQ 257,
`259-60 (CCPA 1950).
`In order to illustrate this Applicant provides a copy of a draft
`advertisement that Applicant intends to use at an upcoming Rubber Expo to be held
`October 14-16, 2003 in Cleveland, Ohio. See Annex A attached hereto. Although not a
`submittable specimen, this draft advertisement illustrates how the Q-FLEX mark is an
`umbrella mark for a family of goods while the QDI mark is for a specific product within
`that family, namely a liquid anti-degradant. As Annex A shows, there are other products
`within the Q-FLEX family, such as Q—BLACK.
`This type of use is commonly seen in commerce today. Ford® Taurus® is just
`but one example. Taurus® is recognized by consumers as a type of car within the_Ford®
`family. The use of Ford® and Taurus® together does not function to injure or deceive
`consumers.
`It serves not only to distinguish Ford’s products from its competitors but
`serves to distinguish Ford’s products from each other. The same holds true for the use of
`Q-FLEX together with QDI on the specimen provided. The use of the marks in such a
`fashion is ordinary, not only in Applicant’s industry but in commerce generally.
`In conclusion, there can be no question that the specimen provided show clearly
`two distinct
`terms QDI and Q-FLEX, each of which is capable of distinguishing
`applicant’s goods from like goods, if they were to be used separably as trademarks.”
`In re Dempster Bros., Inc. 132 USPQ 300 (TTAB 1961). Having addressed all of the
`Examiner’s objections,
`the Applicant
`respectfiilly requests
`that a Certificate of
`Registration be issued forthwith.
`
`FLEXSYS AMERICA L.P.
`
`{£7
`J
`/,
`KMN’
`
`
`
`
`Paul D. McGrady
`Lindsey E. Welu
`Ladas & Parry
`224 South Michigan Ave.
`Chicago, IL 60604
`(312) 427-1300
`Attorneys for Applicant
`
`

`
`EXHIBIT
`
`tabblef
`
`

`
` LAW OFFICES
`
`LADAS as PARRY
`
`
`McGRADY, Jr.
`
`4
`Telephone: (312) 427-1300 ext. 213
`Email? mc9rady@|adaS-net
`
`224 SOUTH MICHIGAN AVENUE
`
`CHICAGO, ILLINOIS 60604
`,
`
`TELEPHONE:
`TELEFAX:
`
`(312) 427-1300
`(312)427-6663
`(312) 427-6668
`www.ladas.com
`
`July 23, 2003
`
`Box TTAB No Fee
`
`The Honorable Assistant Commissioner
`
`for Trademarks
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`26 WEST 61 STREET
`NEW YORK, NY 1oo23
`
`5670 WILSHIRE BLVD.
`Los ANGELEs' CA 90036
`52-54 HIGH HOLBORN
`LONDON WC1V 6RR, ENGLAND
`
`DACHAUERSTRASSE 37
`80335 MUNICH, GERMANY
`
`RE:
`
`Flexsys America, L.P.
`Trademark Application SN 75/931869
`Mark: QDI
`Our Ref. No. 30000273-1
`United States of America
`
`;
`~
`
`:
`
`‘
`
`~—
`:~~
`‘"4
`‘('3
`i~;>
`
`Dear Sir or Madam:
`
`Enclosed please find the following:
`
`1.
`
`2.
`
`3.
`
`Response to Office Action dated January 24, 2003 and Request
`Reconsideration with Exhibit;
`
`for
`
`Certificate of Mailing; and
`
`Return receipt postcard
`
`Please time stamp the postcard and return it to us acknowledging receipt of this
`correspondence and its enclosures. Thank you for your assistance.
`
`Very truly yours,
`.
`I
`
`.
`
`'
`
`A
`
`ul D. McGrady, Jrgf
`
`PDM:sdm
`
`Enclosures
`
`/
`
`r
`
`r
`
`
`
`L:
`g:
`3”?‘
`
`""
`"
`‘
`
`;
`F‘:
`4;“:
`
`3 3,
`
`C”
`
`‘O
`:2
`
`|.—-IL'1
`
`

`
`
`
`f
`
`:. ...!
`
`Applicant:
`Mark:
`
`Serial No.:
`
`Appl. Filed:
`Documents:
`
`CERTIFICATE OF MAILING UNDER 37 cfr 1.8 (a)
`
`Flexsys America, L.P.
`QDI
`
`75/931869
`
`February 28, 2000
`Response to Office Action dated January 24, 2003 and
`Request for Reconsideration with Exhibit
`
`I hereby certify that the above-identified documents, which are attached, are being
`deposited with the United States Postal Service as First Class Mail
`in an envelope
`addressed to:
`
`Box TTAB No Fee
`
`Assistant Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`July 23, 2003