Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`PTO Form 1957 (Rev 10/2011)
`
`OMB No. 0651-0050 (Exp 09/20/2020)
`
`Response to Office Action
`
`The table below presents the data as entered.
`
`Input Field
`
`SERIAL NUMBER
`
`LAW OFFICE ASSIGNED
`
`88057994
`
`LAW OFFICE 103
`
`Entered
`
`MARK SECTION
`
`MARK
`
`LITERAL ELEMENT
`
`STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`MARK STATEMENT
`
`EVIDENCE SECTION
`
`        EVIDENCE FILE NAME(S)
`
`       ORIGINAL PDF FILE
`
`       CONVERTED PDF FILE(S)
`       (9 pages)
`
`       ORIGINAL PDF FILE
`
`       CONVERTED PDF FILE(S)
`       (7 pages)
`
`https://tmng-al.uspto.gov/resting2/api/img/88057994/large
`
`TESLA DISK PUMPS
`
`YES
`
`YES
`
`The mark consists of standard characters, without claim to any particular font style,
`size or color.
`
`evi_671914787-20190221180521580141_._A_DISK_PUMPS_-
`_Section_2_d__Likelihood_of_Confusion_Response.pdf
`
`\\TICRS\EXPORT17\IMAGEOUT17\880\579\88057994\xml4\ROA0002.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\880\579\88057994\xml4\ROA0003.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\880\579\88057994\xml4\ROA0004.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\880\579\88057994\xml4\ROA0005.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\880\579\88057994\xml4\ROA0006.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\880\579\88057994\xml4\ROA0007.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\880\579\88057994\xml4\ROA0008.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\880\579\88057994\xml4\ROA0009.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\880\579\88057994\xml4\ROA0010.JPG
`
`evi_671914787-20190221180521580141_._Exhibit_A.pdf
`
`\\TICRS\EXPORT17\IMAGEOUT17\880\579\88057994\xml4\ROA0011.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\880\579\88057994\xml4\ROA0012.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\880\579\88057994\xml4\ROA0013.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\880\579\88057994\xml4\ROA0014.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\880\579\88057994\xml4\ROA0015.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\880\579\88057994\xml4\ROA0016.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\880\579\88057994\xml4\ROA0017.JPG
`
`       
`       
`       
`       
`       
`       
`       
`       
`       
`       
`       
`       
`       
`       
`

`

`DESCRIPTION OF EVIDENCE FILE
`
`Response to Section 2(d) Refusal and Exhibit A in support.
`
`GOODS AND/OR SERVICES SECTION (current)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`FILING BASIS
`
`        FIRST USE ANYWHERE DATE
`
`        FIRST USE IN COMMERCE DATE
`
`GOODS AND/OR SERVICES SECTION (proposed)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`FILING BASIS
`
`       FIRST USE ANYWHERE DATE
`
`       FIRST USE IN COMMERCE DATE
`
`007
`
`Pumps for machines
`
`Section 1(a)
`
`At least as early as 01/01/2012
`
`At least as early as 01/01/2012
`
`007
`
`Pumps for machines
`
`Section 1(a)
`
`At least as early as 01/01/2012
`
`At least as early as 01/01/2012
`
`       STATEMENT TYPE
`
`       SPECIMEN
`       FILE NAME(S)
`
`       SPECIMEN DESCRIPTION
`
`ADDITIONAL STATEMENTS SECTION
`
`DISCLAIMER
`
`NEW ATTORNEY SECTION
`
`NAME
`
`FIRM NAME
`
`STREET
`
`CITY
`
`STATE
`
`ZIP/POSTAL CODE
`
`COUNTRY
`
`PHONE
`
`EMAIL
`
`"The substitute (or new, or originally submitted, if appropriate) specimen(s)
`was/were in use in commerce at least as early as the filing date of the
`application"[for an application based on Section 1(a), Use in Commerce] OR "The
`substitute (or new, or originally submitted, if appropriate) specimen(s)
`was/were in use in commerce prior either to the filing of the Amendment to
`Allege Use or expiration of the filing deadline for filing a Statement of Use" [for
`an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is
`a true copy of the specimen that was originally submitted with the application,
`amendment to allege use, or statement of use" [for an illegible specimen].
`
`\\TICRS\EXPORT17\IMAGEOUT 17\880\579\88057994\xml4\ ROA0018.JPG
`
`Specimen consists of a photograph of Applicant's pumps bearing the applied-for
`mark.
`
`No claim is made to the exclusive right to use DISK PUMPS apart from the mark as
`shown.
`
`Francis John Ciaramella, Esquire
`
`Francis John Ciaramella, PLLC
`
`110 Front Street, Suite 300
`
`Jupiter
`
`Florida
`
`33477
`
`United States
`
`5612957325
`
`frank@fjcpllc.com
`
`AUTHORIZED EMAIL COMMUNICATION
`
`Yes
`
`CORRESPONDENCE SECTION
`
`BAYOU PUMPS & PRODUCTS INC
`BAYOU PUMPS & PRODUCTS INC
`
`

`

`ORIGINAL ADDRESS
`
`NEW CORRESPONDENCE SECTION
`
`NAME
`
`FIRM NAME
`
`STREET
`
`CITY
`
`STATE
`
`ZIP/POSTAL CODE
`
`COUNTRY
`
`PHONE
`
`EMAIL
`
`188 PINEWOODS ROAD
`FARMERVILLE
`Louisiana
`US
`71241
`
`Francis John Ciaramella, Esquire
`
`Francis John Ciaramella, PLLC
`
`110 Front Street, Suite 300
`
`Jupiter
`
`Florida
`
`33477
`
`United States
`
`5612957325
`
`frank@fjcpllc.com
`
`AUTHORIZED EMAIL COMMUNICATION
`
`Yes
`
`SIGNATURE SECTION
`
`DECLARATION SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`SIGNATORY'S PHONE NUMBER
`
`DATE SIGNED
`
`RESPONSE SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`SIGNATORY'S PHONE NUMBER
`
`DATE SIGNED
`
`AUTHORIZED SIGNATORY
`
`FILING INFORMATION SECTION
`
`SUBMIT DATE
`
`TEAS STAMP
`
`/Francis John Ciaramella/
`
`Francis John Ciaramella, Esquire
`
`Attorney of Record, Florida Bar Member
`
`5612957325
`
`02/21/2019
`
`/Francis John Ciaramella/
`
`Francis John Ciaramella, Esquire
`
`Attorney of Record, Florida Bar Member
`
`5612957325
`
`02/21/2019
`
`YES
`
`Thu Feb 21 18:11:38 EST 2019
`
`USPTO/ROA-XX.XXX.XX.XX-20
`190221181138016691-880579
`94-620556dd7f669c4b4c783f
`9955ce7dc735f91a73ebc3b35
`2f685879c122d6b3d3-N/A-N/
`A-20190221180521580141
`
`Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`PTO Form 1957 (Rev 10/2011)
`
`OMB No. 0651-0050 (Exp 09/20/2020)
`
`

`

`To the Commissioner for Trademarks:
`
`Response to Office Action
`
`Application serial no. 88057994 TESLA DISK PUMPS(Standard Characters, see https://tmng-al.uspto.gov/resting2/api/img/88057994/large) has
`been amended as follows:
`
`EVIDENCE
`Evidence in the nature of Response to Section 2(d) Refusal and Exhibit A in support. has been attached.
`Original PDF file:
`evi_671914787-20190221180521580141_._A_DISK_PUMPS_-_Section_2_d__Likelihood_of_Confusion_Response.pdf
`Converted PDF file(s) ( 9 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`Evidence-5
`Evidence-6
`Evidence-7
`Evidence-8
`Evidence-9
`Original PDF file:
`evi_671914787-20190221180521580141_._Exhibit_A.pdf
`Converted PDF file(s) ( 7 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`Evidence-5
`Evidence-6
`Evidence-7
`
`CLASSIFICATION AND LISTING OF GOODS/SERVICES
`Applicant proposes to amend the following class of goods/services in the application:
`Current: Class 007 for Pumps for machines
`Original Filing Basis:
`Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is
`using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark
`was first used at least as early as 01/01/2012 and first used in commerce at least as early as 01/01/2012 , and is now in use in such commerce.
`
`Proposed: Class 007 for Pumps for machines
`Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is
`using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark
`was first used at least as early as 01/01/2012 and first used in commerce at least as early as 01/01/2012 , and is now in use in such commerce.
`Applicant hereby submits one(or more) specimen(s) for Class 007 . The specimen(s) submitted consists of Specimen consists of a photograph of
`Applicant's pumps bearing the applied-for mark. .
`"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing
`date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if
`appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the
`filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true
`copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible
`specimen]. Specimen File1
`
`ATTORNEY ADDRESS
`Applicant proposes to amend the following:
`Proposed:
`Francis John Ciaramella, Esquire of Francis John Ciaramella, PLLC, having an address of
`110 Front Street, Suite 300 Jupiter, Florida 33477
`United States
`frank@fjcpllc.com
`5612957325
`
`

`

`CORRESPONDENCE ADDRESS CHANGE
`Applicant proposes to amend the following:
`Current:
`BAYOU PUMPS & PRODUCTS INC
`BAYOU PUMPS & PRODUCTS INC
`188 PINEWOODS ROAD
`FARMERVILLE
`Louisiana
`US
`71241
`
`Proposed:
`Francis John Ciaramella, Esquire of Francis John Ciaramella, PLLC, having an address of
`110 Front Street, Suite 300 Jupiter, Florida 33477
`United States
`frank@fjcpllc.com
`5612957325
`
`ADDITIONAL STATEMENTS
`Disclaimer
`No claim is made to the exclusive right to use DISK PUMPS apart from the mark as shown.
`
`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: /Francis John Ciaramella/      Date: 02/21/2019
`Signatory's Name: Francis John Ciaramella, Esquire
`Signatory's Position: Attorney of Record, Florida Bar Member
`Signatory's Phone Number: 5612957325
`
`Response Signature
`Signature: /Francis John Ciaramella/     Date: 02/21/2019
`Signatory's Name: Francis John Ciaramella, Esquire
`Signatory's Position: Attorney of Record, Florida Bar Member
`
`Signatory's Phone Number: 5612957325
`
`The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which
`includes the District of Columbia, Puerto Rico, and other federal territories and possessions; 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. attorney or a Canadian attorney/agent
`not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is
`concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior
`representative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder's
`appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.
`
`Mailing Address:    Francis John Ciaramella, Esquire
`   Francis John Ciaramella, PLLC
`   110 Front Street, Suite 300
`   Jupiter, Florida 33477
`
`Serial Number: 88057994
`Internet Transmission Date: Thu Feb 21 18:11:38 EST 2019
`TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20190221181138016
`691-88057994-620556dd7f669c4b4c783f9955c
`e7dc735f91a73ebc3b352f685879c122d6b3d3-N
`/A-N/A-20190221180521580141
`
`        
` 
`

`

`BEFORE THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRADEMARK LAW OFFICE 103
`SERIAL NUMBER 88057994
`
`MARK:
`TESLA DISK PUMPS
`
`RESPONSE TO OFFICE ACTION
`
`TO THE ASSISTANT SECRETARY AND COMMISSIONER OF PATENTS AND
`
`TRADEMARKS:
`
`IN RESPONSE TO THE ABOVE-REFERENCED OFFICE ACTION. the Applicant
`
`hereby submits the following.
`
`In the Office Action of November 28, 2018, the Examining Attorney stated that the
`
`application for TESLA DISK PUMPS (hereafter the “Application”) may ultimately be refused
`
`registration under Trademark Act section 2(d) because of a likelihood of confusion with
`
`Registration No. 4152161 for TESLA and Prior Application No. 79178383 for TESLA (hereafter
`
`“Prior Marks”).
`
`The Applicant respectfully disagrees, and hereby responds as follows.
`
`Res onse to Section 2 d Likelihood of Confusion:
`
`Explanation of the DuPont Multi—Factor Test for the Purpose of Determining W'hether
`
`Confusion, Mistake, or Deception is Likely
`
`The test for likelihood of confusion is whether a “reasonably prudent consumer” in the
`
`marketplace is likely to be confused as to the origin of the goods or services bearing one of the
`
`marks. In re E]. DuPont dc Nemom‘s and (70., 177 U.S.P.Q. 563 (C.C.P.A 1973).
`
`Consequently, the Federal Circuit Court of Appeals adopted multiple factors for the purpose of
`
`deciding likelihood ofconfusion on a case-by-case basis, otherwise known as the DuPont
`
`factors.
`
`FRANCIS JOHN CIARAMELLA, PLLC
`110 Front Street. Suite 300. Jupiter. Florida 3477 - Telephone (561) 295—7325 - Facsimile (561) 295-7355
`
`1
`
`

`

`Application of the DuPont Factors
`
`Applying the DuPont factors to the instant case. Applicant hereby submits the following
`
`arguments in support of its argument that there would be no likelihood of confusion between the
`
`Application and the Prior Marks.
`
`1) Dissimilarity of the Marks in their Entireties as to Appearance, Sound, Connotation, and
`
`Commercial Impression (The Sight, Sound, and Meaning Analysis)
`
`In the first part of the likelihood of confusion analysis, the marks are compared for
`
`similarities in their appearance, sound, connotation, and commercial impression. TMEP
`
`§§ 1207.01, 1207.01 (b) (emphasis added). The meaning or connotation of a mark must be
`
`determined in relation to the named goods or services. Even marks that are identical in sound
`
`and/or appearance may create sufficiently different commercial impressions when applied to the
`
`respective parties’ goods or sen-ices so that there is no likelihood ofconfusion. See, e. g, In re
`
`Sears, Roebuck and Co, 2 USPQ2d 1312 (TTAB '1987) (CROSS-OVER for bras held not likely
`
`to be confused with CROSSOVER for ladies’ sportswear); In re British Bill/dog, Ltd. 224 USPQ
`
`854 (TTAB 1984) (PLAYERS for men’s underwear held not likely to be confused with
`
`PLAYERS for shoes); In re Syde] Lingerie (70., Inc. 197 USPQ 629 (TTAB 1977) (BOTTOMS
`
`UP for ladies” and children’s underwear held not likely to be confused with BOTTOMS UP for
`
`men’s clothing).
`
`a) Appearance
`
`Even though marks may be similar in appearance when they share “similar terms or
`
`phrases,” the Trademark Trial and Appeal Board (the “Board”) has consistently held that
`
`confusion is not likely if the marks in their entireties convey significantly different commercial
`
`impressions, or the matter common to the marks is not likely to be perceived by purchasers as a
`
`distinguishing source because it is merely descriptive or diluted. See) e. g. Shen Manufacturing
`
`Co. v. Rit: HotelLtd.. 393 F.3d 1238. 73 USPQ2d 1350 (Fed. Cir. 2004) (RITZ and THE RITZ
`
`KIDS create different commercial impressions); In re Farm F1‘63]? Catfish (70., 231 USPQ 495
`
`(TTAB 1986) (CATFISH BOBBERS (with “CATFISH” disclaimed) for fish held not likely to
`
`FRANCIS JOHN CIARAMELLA. PLLC
`110 Front Street. Suite 300. Jupiter. Florida 3477 - Telephone (561) 295—7325 - Facsimile (561) 295-7355
`
`2
`
`

`

`be confused with BOBBER for restaurant services). The Board has stated that similarity as to
`
`one aspect of the sight, sound, and meaning trilogy will not automatically result in a finding of
`
`likelihood of confusion when the goods are identical or closely related. 4 McCarthy on
`
`Trademarks and Unfair Competition § 23:21 (4th ed.) (emphasis added).
`
`Looking at the commercial impression of the respective marks. it is clear to the average
`
`consumer that the respective marks are from more than one source based upon their appearance.
`
`Specifically, both the Applicant and the Prior Owners present their respective marks using
`
`distinct logos or fonts, each connoting a particular and distinct commercial impression.
`
`Application
`Prior Registration
`Prior
`
`
`
`
`
`
`
`TESLADISKPUMPS TE 5 l a
`
`TESLA
`
`
`
`Here. Applicant’s word mark is for TESLA DISK PUMPS. whereas the Prior Marks are
`
`for TESLA. The Application contains additional wording apart from PLUSH. namely “DISK
`
`PUMPS.” While the Examining Attorney is correct in that the words “DISK PUMPS” need to be
`
`disclaimed, as they are descriptive of Applicant’s goods, each word or phrase is still considered
`
`to be part of the mark. Accordingly, Applicant’s full mark is still TESLA DISK PUMPS.
`
`Furthermore, splitting a mark into its various components and comparing only certain
`
`portions of one mark with another mark is improper. iMassey Junior College, Inc. v. Fashion
`
`Institute queChnoiogy. 492 F.2d 1399 (C.C.P.A. 1974); Franklin 1Mint Corp. v. M’asrer Mfg.
`
`(’70.. 667 F.2d 1005 (C.C.P.A. 1981) (holding that it is a violation of the anti-dissection rule to
`
`ignore elements of a mark in deciding whether confusion is likely). Here it is highly
`
`inappropriate to compare Applicant’s mark to the Prior Marks merely upon the shared
`
`synonymous use of the word TESLA. The anti-dissection rule requires that Applicant’s mark for
`
`TESLA DISK PUMPS be considered in its entirety.
`
`This creates a significant commercial impression upon the consumer in that from merely
`
`seeing either of the above marks. they know that they are viewing and purchasing sen‘ices made
`
`by the respective owner.
`
`FRANCIS JOHN CIARAMELLA. PLLC
`110 Front Street. Suite 300. Jupiter. Florida 3477 - Telephone (561) 295—7325 - Facsimile (561) 295-7355
`
`’;
`
`

`

`b) Sound
`
`While the Examining Attorney is correct in stating that the mere addition or deletion of a
`
`term to a registered mark does not obviate a likelihood of confusion. it is well established that
`
`merely because two marks contain a similar term, it does not establish that there is a likelihood
`
`of confusion. In fact, there is no rule that confusion automatically exists between marks
`
`containing the same term. Sec Application ofFerrcro. 479 F.2d 1395 (C.C.P.A. 1973) (no
`
`confusion between TIC TAC and TIC TAC TOE both for impulse foods); see also White Rock
`
`Distillerics, Inc. v. Franciscan Vineyards, Inc., 2009 WL 498673 (ND. Cal. 2009) (unpublished)
`
`(Board reversed Examining Attorney and found no likelihood of confusion between VOLTA for
`
`vodka and TERZA VOLTA for wine).
`
`In Colgate-Palmolive Co, v. Carrer- Wallace, Inc. 432 F.2d 1400 (C.C.P.A. 1970). the
`
`Court of Customs and Patent Appeals affirmed the Board's decision that there was no likelihood
`
`of confusion between PEAK and PEAK PERIOD for personal care products. Likewise, in IN RE
`
`JOHNSON & JOHNSON. 2002 WL 649081 (T.T.A.B. 2002), the Board reversed the Examining
`
`Attorney's refusal to register the mark EPIC MICROVISION for a medical device, despite the
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`existence of a prior registration for the mark EPIC also for a medical device. The present case is
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`analogous. Applicant's mark shares the common term TESLA; specifically, Applicant’s mark is
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`TESLA DISK PUMPS, whereas the Prior Marks are both for TESLA. However. consumers will
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`discern the differences between the Prior Marks and Applicant's mark because of the Applicant’s
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`use ofadditional words. The Application is also distinguishable from the Prior Marks in terms
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`of both sound and pronunciation. The Applicant’s mark forces the consumer to pronounce the
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`additional words in “disk pumps.”
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`Moreover. the Applicant’s mark contains significantly more syllables than the Prior
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`Marks. In fact. the Applicant’s mark contains a total of four (4) syllables. The Prior Marks are
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`significantly shorter and are only two (2) syllables in length, with significant differences in
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`commercial impression resulting.
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`c) Meaning and Overall Commercial Impression
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`“Similarity is not limited to the eye or ear. The mental impact of a similarity in meaning
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`may be so pervasive as to outweigh any visual or phonetic differences. That is, the
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`FRANCIS JOHN CIARAMELLA. PLLC
`110 Front Street. Suite 300. Jupiter. Florida 3477 - Telephone (561) 295—7325 - Facsimile (561) 295-7355
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`4
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`‘psychological imagery evoked by the respective marks3 may overpower the respective
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`similarities or differences in appearance and sound.” 4 McCarthy on Trademarks and Unfair
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`Competition § 23:26 (4th ed.).
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`Any similarities as to appearance or sound between the respective marks. if any, are
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`overpowered and obviated by the differences in the meaning between the respective marks, as
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`well as the overall commercial impression and presentation of the marks in commerce.
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`The Applicant and the Prior Owners present, use, and advertise their respective marks in
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`unique ways. Upon viewing Applicant’s goods, the difference in commercial impression is
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`immediately apparent.
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`Specifically. Applicant’s mark for TESLA DISK PUMPS immediately impresses into the
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`minds ofconsumers multiple and diverse images as a result of the marks word portion, namely
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`that Applicant’s goods relate to or involve rotary disk pumps. Such an impression is not evident
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`in either Prior Mark, which accordingly results in a significantly different commercial
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`impression.
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`2) Similarity as to Nature of the Goods or Services
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`Where the goods and services are directly competitive, the degree of similarity required
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`to prove a likelihood of confusion is less than in the case of dissimilar products. 4 McCarthy on
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`Trademarks and Unfair Competition § 23:20.50 (4th ed.); Attrezzi, LL (I v. Ala/Wag (701119., 436
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`F.3d 32, 77 U.S.P.Q.2d 1641 (lst Cir. 2006). Here, there is no evidence that the Prior Marks and
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`the Applicant” s mark are competing or being confused with one another.
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`Applicant is seeking to register the trademark TESLA DISK PUMPS. It is Applicant's
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`contention that there is such an oveiwhelming dissimilarity between the marks in tenns of
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`appearance, sound, and commercial impression that the goods on which they are respectively
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`used are not likely to result in confusion.
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`Here, Applicant seeks registration for “machine pumps” in International Class 007. The
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`Examining Attorney has pointed out that both the Prior Owner of Registration No. 4152161 and
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`the Applicant offer pumps; however, the owner of Registration No. 4152161 appears to use its
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`mark for electronic motors for use with pumps, rather than for the pumps themselves. Likewise,
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`the owner of the Prior Pending Application uses its mark for valves and pumps as part of a larger
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`FRANCIS JOHN CIARAMELLA. PLLC
`110 Front Street. Suite 300. Jupiter. Florida 3477 - Telephone (561) 295—7325 - Facsimile (561) 295-7355
`
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`machine, which in their case is for use with spray equipment. Only the Applicant uses its mark
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`for actual machine pumps.
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`Therefore, the Application, is unlikely to cause confusion.
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`3) Conditions Under Which and Buyers to Whom Sales are Made
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`Here, the buyers of the respective goods and services will be a sophisticated. In other
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`words, consumers making purchases of services from either the Applicant or the Prior Owners
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`are well educated, and not likely to make such purchases on impulse.
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`As such, the services offered by the Applicant and Prior Owners are aimed at
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`discriminating purchasers. “Where the relevant buyer class is composed of professional or
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`commercial purchasers. it is reasonable to set a higher standard of care than exists for
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`consumers. . .they (the professional purchasers) are usually knowledgeable enough to be less
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`likely to be confused by trademarks that are similar. For example, the First Circuit found no
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`infringement in the case of ASTRA local anesthetic preparation versus ASTRA computerized
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`blood analyzer machine. The ‘most critical factor’ was said to be the sophistication of the buyers
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`of the products.” 4 McCarthy on Trademarks and Unfair Competition § 23: 101 (4th ed.); Astra
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`Pharmaceutical Products, Inc. v. Beckman Instruments, Inc, 718 F.2d 1201, 1206, 220 U.S.P.Q.
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`786 (1st Cir. 1983).
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`The Prior Owners and Applicant deal in respective goods and services that can be
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`extremely expensive. If the goods or services are relatively expensive, more care is taken and
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`buyers are less likely to be confused as to source or affiliation. 4 McCarthy on Trademarks and
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`Unfair Competition § 23:95 (4th ed.); McGregor-Doniger, Inc. v. Driz/e, Inc, 599 F.2d 1126,
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`1137, 202 U.S.P.Q. 81, 92 (2d Cir. 1979).
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`4) The Fame of the Prior Mark
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`All trademarks are not equal. Some are strong, some are weak and most are somewhere
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`in between. “Strong” marks are given “strong” protectioniprotection over a wide range of
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`related products and services and variations on visual and aural format. 'The stronger the mark.
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`the more likely it is that encroachment on it will produce confusion.’ Conversely, relatively weak
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`marks are given a relatively narrow range ofprotection both as to products and format variations.
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`FRANCIS JOHN CIARAMELLA. PLLC
`110 Front Street. Suite 300. Jupiter. Florida 3477 - Telephone (561) 295—7325 - Facsimile (561) 295-7355
`
`6
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`2 McCarthy on Trademarks and Unfair Competition § 1 1:73 (4th ed.). Likewise, here, there is
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`no evidence that the cited Prior Marks are famous or have acquired secondary meaning within
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`the marketplace or that consumers associate the term TESLA with the Prior Owners. To the
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`contrary, and as explained below, there are many marks containing the word TESLA for use with
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`various goods and services, and the Prior Owners represent a minuscule percentage of such
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`trademarks.
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`5) The Nature and Extent of Any Actual Confusion
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`There has been no documented evidence that shows that any consumers have confused
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`the respective marks in commerce. There have been no demonstrated events of confusion by
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`consumers between the respective marks.
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`Courts have long held that concurrent use of such marks without instances of actual
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`confusion is evidence of no confusion. 4 McCarthy on Trademarks and Unfair Competition §
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`23:18 (4th ed); Pignons SA. de rlleccmique dc Precision v. Polaroid Corp, 657 F.2d 482, 490,
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`212 U.S.P.Q. 246 ('1 st Cir. 1981) (“[W]hen the marks have been in the same market, side by side,
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`for a substantial period of time, there is a strong presumption that there is little likelihood of
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`confusion”); Grcentree Laboratories, Inc. v. G. G. Bean, 1116., 718 F. Supp. 998, 13 U.S.P.Q.2d
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`l 161 (D. Me. 1989) (concurrent use for five years without confusion where plaintiffs mark is
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`weak creates a presumption that confusion is unlikely; judgment of no infringement);
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`Akriebo/ager Electrolux v. Armarron Intern, Inc, 999 F.2d 1, 4, 27 U.S.P.Q.2d 1460 (1st Cir.
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`1993) (“[A]n absence of actual confusion, or a negligible amount of it, between two products
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`after a long period of coexistence on the market is highly probative in showing that little
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`likelihood of confusion exists”).
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`6) The Number and Nature of Similar Marks in Use on Similar Goods
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`Alternatively, other marks besides those belonging to the Applicant and Prior Owners
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`have used the word TESLA for use with similar goods and seivices. As a result of such
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`registrations continued co-existence, it cannot be said that Applicant’s mark will create a
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`likelihood ofconfusion. Please see Exhibit A that contains a list of numerous such marks.
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`FRANCIS JOHN CIARAMELLA, PLLC
`110 Front Street. Suite 300. Jupiter. Florida 3477 - Telephone (561) 295—7325 - Facsimile (561) 295-7355
`
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`
`
`
`Trademark
`Registration
`International Class
`
`TESLAH20
`4701384
`007
`
`
`TESLA
`5639913
`007, 009, 011
`
`
`TESLA
`5639912
`007, 009, 011
`
`
`
`
`
`
`
`
`
`
`TESLA
`3593086
`007, 009
`
`
`TESLA
`2005764
`007, 009
`
`
`TESLA
`
`160945 5
`
`009
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`If these marks as well, as the Prior Marks, are able to co-exist with so many other similar
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`trademarks for analogously similar services, then it can also be said that there is room for
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`Applicant’s mark for TESLA DISK PUMPS. Applicant submits that such extensive use of said
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`words in this manner by third parties for similar goods or services entitles Applicant to a reduced
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`scope of trademark protection, which weighs against a finding of likelihood of confusion.
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`Conclusion
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`Consequently, taking the respective marks in their totality pursuant to the Anti-Dissection
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`Rule, consumers would likely be able to differentiate between the respective marks because of
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`the differences in goods and seiyices, difference in appearance, as well as their overall
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`commercial impression. Additionally, consumers of the owners’ respective products are
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`sophisticated and likely to exercise great care in purchasing their respective goods and services,
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`and there has been no evidence of any actual confusion.
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`Therefore, the Applicant respectfully requests that the Examining Attorney allow
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`Applicant’s application for the mark TESLA DISK PUMPS to proceed to publication. If for
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`some reason the Examiner continues to believe that the present application is not in condition for
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`publication, the Examiner is respectfully requested to call Applicant’s