PYROSIL – Anatomy of an Office Action Response #4

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 6th du Pont factor, and arguably also restricts the prior registrant’s rights under the 11th 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.

Owner Goods/Services Mark Mark Goods/Services Owner
Regal Chemical Company 001 silicone emulsions for control and suppression of foam in aqueous solutions REGAL
Reg: 3842060
Serial: 77461042
REGAL
Reg: 1706125
Serial: 74196056
002 interior paint Columbia Insurance Company
Dow Corning Corporation 001 polycrystalline silicon, polysilicon, silanes, and silicon source chemicals used in manufacturing silicone ingots and wafers for semiconductor devices (…) HSC
Reg: 3734230
Serial: 77761283
HSC
Reg: 3469539
Serial: 78818952
002 paints Superior Products International Ii, Inc.
Emerald Performance Materials, Llc 001 specialty and fine chemicals, resins and polymers, namely, (…) silicone-based additives in the nature of low molecular weight silicone-based oligomers, (…) all for use in the manufacture of (various products) EMERALD
Reg: 4344989
Serial: 85324867
EMERALD
Reg: 4686712
Serial: 85980802
002 paint thinners Emerald Services, Inc.
Petroleum Marketing Analysis, Inc., dba Aura Oil & Lamp Creations 004 lamp fuel AURA
Reg: 4007891
Serial: 77300540
AURA
Reg: 3220824
Serial: 78753154
002 exterior paint Columbia Insurance Company
Chevron Intellectual Property Llc 004 lubricating-oils REGAL
Reg: 0088032
Serial: 71058463
REGAL
Reg: 1706125
Serial: 74196056
002 interior paint Columbia Insurance Company
Champion Brands, LLC 004 stove and lantern fuel HI-TECH
Reg: 2256277
Serial: 75239061
HI-TECH
Reg: 1295391
Serial: 73404876
002 spray paint Seymour Of Sycamore Inc.
Tiara Brands, Inc. 004 gasoline CROWN
Reg: 2069133
Serial: 75081978
CROWN
Reg: 1334990
Serial: 73493222
002 paint thinner Packaging Service Co., Inc.
West Penn Oil Company, Inc. 004 gasoline EMBLEM
Reg: 0330234
Serial: 71367514
EMBLEM
Reg: 4732801
Serial: 86190094
002 paints The Valspar Corporation
Regal Beloit America, Inc. 004 lubricating oils and greases WAVERLY
Reg: 4489586
Serial: 85889529
WAVERLY
Reg: 2340120
Serial: 75541752
002 house paint Icon De Holdin GS Llc
Sterno Products, Llc 004 chafing dish fuel HOT SPOT
Reg: 4500511
Serial: 85835539
HOT SPOT
Reg: 1311806
Serial: 73403836
002 spray paint Seymour Of Sycamore Inc.
Charles Carney

dba Pro Tech Lubricants

004 diesel oil PROTECH
Reg: 4661852
Serial: 86043852
PRO TECH
Reg: 4847575
Serial: 86424118
002 architectural paints Swimc, Inc.
Micro Powders, Inc. 004 wax emulsions and wax powders for industrial applications AQUAMATTE
Reg: 4209568
Serial: 85540685
AQUA MATTE
Reg: 2091731
Serial: 74642767
002 interior paint Swimc, Inc.

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

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