Anatomy of an Office Action Response

Episode 4 – PYROSIL

What is this series?

We break down a recently-filed, successful Office Action Response, looking at the case law, evidence, and strategic decisions that made it a success.

Today’s post focuses on strategies in responding to a likelihood of confusion refusal featuring identical marks in different classes.

The Office Action – PYROSIL

The applicant’s filing for PYROSIL, Ser. No. 86912816, for a variety of products and services including silicon and other chemical precursors (Class 1), fuel and dust absorbing and binding compounds (Class 4), metered fuel pumps (Class 9), and chemical coating services (Class 44), and actually used for a silicon oxide coating and coating process, received a citation to a prior pending application for PYROSIL for paints and primers used in the aerospace industry (Class 2), Ser. No. 79179408. Both applications are now registered.

Because the prior PYROSIL application was still pending, the Office Action did not provide (and did not need to provide) arguments to support the refusal.

The correspondent, Otto Lee of Intellectual Property Law Group LLP, filed an Office Action Response arguing against the refusal. The prior applications’ limitation to the aerospace industry was a key: it limited the customer base of the cited mark, and the applicant supplemented the meaning of “industrial” products in its description with extrinsic information about the product and its customers. The Response emphasized that the products offered under both marks were sold to different and non-overlapping classes of sophisticated customers in distinct manufacturing industries, and were necessarily sold through different trade channels. While the applicant’s products are focused on adhesive promotion coatings, e.g. to increase print quality, the applicant’s website references automotive uses and neither the description of goods in the application nor the supplementary materials carve out or disavow aerospace or military use. That’s certainly a desirable outcome for the applicant, and a good strategic reason for counsel relying on extrinsic evidence rather than narrowing the applicant’s description of goods to exclude the fields.

Counsel also pointed to another out-of-class registration for PYROSIL, Reg. No. 2546215, for thermocouples in Class 9, noting that it was also sold to a niche group of professional buyers and could co-exist without confusion. This data point is valuable under the 6^th du Pont factor, and arguably also restricts the prior registrant’s rights under the 11^th du Pont factor as well.

The response made a variety of arguments about the lack relationship between the goods, ultimately successfully. The applicant could have pointed to registry evidence of co-existence of similar products, both in industrial silicon and fuels. In re Thor Tech, Inc., 113 USPQ2d 1546 (TTAB 2015). The following table, from TM TKO’s ThorCheck prosecution tool, identifies a number of instances where identical or highly similar marks co-exist without apparent confusion for exactly the sorts of goods.

Following the successful Office Action Response, the application will be published for opposition in March 2017.