U.S. Trademark Application Serial No. 77689956
Mark: ENERGYHUB
Response to Office Action dated December 6, 2011

The Examining Attorney has issued a refusal on the basis that the Applicant’s

mark ENERGYHUB may be found confusingly similar to the registration for the mark

HUB, Registration No. 3908449, for use in connection with “Electric switch housings,

electrical switches and transmitters of electronic signals all for use with a stand alone

switch used to signal a singular event,” as to Class 9 (“the Cited Mark”). Registration has

also been refused on the basis that Applicant’s mark merely describes a feature and

function of applicant’s goods and/or services. Applicant respectfully requests

reconsideration and withdrawal of these refusals in light of the following remarks.

I. There Is No Likelihood of Confusion

Applicant respectfully submits that when viewed in their entireties and in context,

and in light of the factors enunciated by the court in Application of E.I. Du Pont de

Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563 (CCPA 1973), the Cited Mark

HUB – an acronym for “hold up button,” a device used during bank robberies to alert

emergency personnel – is not confusingly similar to the Applicant’s mark

ENERGYHUB, and the refusal to register should therefore be withdrawn and the

Applicant’s mark approved for publication.

It is well settled that a likelihood of confusion may be said to exist only where (1)

an applicant’s mark is similar to the cited prior mark in terms of sound, appearance, or

commercial impression, and (2) the applicant’s goods or services are so related or the

activities surrounding their marketing are such that confusion as to their origin is likely.

Application of E.I. Du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563
Serial No. 77689956

(CCPA 1973). When evaluated in accordance with the Du Pont factors and the

analogous guidelines set forth in the Trademark Manual of Examining Procedure

(“TMEP”) § 1207.01, it is evident that there would be no likelihood of confusion between

Applicant’s mark and the Cited Mark.

Here, the only similarity between the Cited Mark and Applicant’s mark is the

common use of the letters H-U-B. A finding that the marks are confusingly similar based

solely on the shared use of these three letters can only be based upon an improper

dissection of the Applicant’s mark.

It is equally well settled that “marks must be compared in their entireties.” In re

National Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 750 (Fed. Cr. 1985); see also

Homeowners Group, Inc. v. Home Marketing Specialists, Inc., 931 F.2d 1100 (6th Cir.

1991) (marks must be viewed in their entirety and in context). Applicant respectfully

submits that, when viewed in its entirety, its mark is vastly different from the Cited Mark,

in terms of sight, sound, and overall commercial impression. While marks must be

compared in their entireties, “[i]n assessing the likelihood of confusion between

compound word marks, one must determine if there is a portion of the word mark which

is dominant in terms of creating a commercial impression.” TMEP §1207.01(b)(ii). The

TMEP makes clear that marks must be evaluated by determining the overall impression

that they leave on the average consumer. See TMEP §1207.01(b), citing Sealed Air

Corp. v. Scott Paper Co., 190 USPQ 106, 109 (TTAB 1975) (“In evaluating the

similarities between marks the emphasis must be on he recollection of the average

purchaser who normally retains a general rather than specific impression of trademarks.”)
Serial No. 77689956

Here, unlike the Cited Mark, the word ENERGY appears prominently in the

Applicant’s mark and sufficiently alters the commercial impression of the letters HUB

alone. The word ENERGY is essential to the overall impression of the mark, as

ENERGYHUB comprises a phrase, which creates an overall impression of centralized

energy monitoring. The letters HUB alone do not convey this same impression. (See

Lever Bros. Co. v. Barcolene Co., 463 F.2d 1107, 1109, 174 U.S.P.Q. 392, 59 C.C.P.A.

1162, 1164 (CCPA 1972), comparing the marks “all” and “all clear!”, the court stated

“the commercial impression engendered by applicant’s mark is derived not from the

component words ‘all’ or ‘clear’, per se, but rather from the mark as a whole.”).

The Cited Mark uses the letters H-U-B as an acronym for “hold up button,” not

the English word “hub.” Indeed, on December 9, 2009, the Cited Mark Applicant

represented to the Patent & Trademark Office during prosecution of the Cited Mark that:

HUB is a term coined by Applicant to identify its switches. It is an
acronym for “hold up button” (also called a hold up switch). See
Exhibit A submitted with this response, which is a true and correct copy of
a page from Applicant’s website at
http://www.unitedsecurity.com/pages/holdup.html showing the
Applicant’s HUB branded switches.

See Exhibit A, Serial No. 77578538 (Cited Mark Application) Response to Office Action

dated December 9, 2009 (emphasis added); see also Exhibit B (Exhibit A to Response to

Office Action dated December 9, 2009, Serial No. 77578538 as filed, namely, the above-

referenced website for www.unitedsecurity.com). Thus, it is obvious that the dominant

impression created by both the words used in the Applicant’s mark — a phrase — and

that left by the Cited Mark— the three letters HUB representing “hold up button” — are

totally different.
Serial No. 77689956

These differences in connotation are more clear when the Applicant’s Mark is

viewed in context. As described in the application and as can be seen at the Applicant’s

web site at www.energyhub.com, Applicant’s mark is used to identify Applicant’s

products and services; seen in this context, the word ENERGYHUB will call to mind the

notion of energy monitoring, and not merely signifying a “hold up button,” or even a

“hub” in the abstract.

The overall commercial impressions conveyed by the two marks are completely

different. The Cited Mark does not contain the additional word ENERGY, the first

element in the Applicant’s mark and a word essential to the meaning of the phrase and

hence the overall commercial impression of the Applicant’s Mark. Indeed, the Cited

Mark would never be associated with the additional word ENERGY because, according

to the Cited Mark Applicant, the word “HUB” in the Cited Mark is an acronym for the

phrase “hold up button,” see, e.g., Exhibits A and B. Indeed, the only similarity between

the Applicant’s mark and each of the Cited Mark are the letters H-U-B, but there is not

similarity in commercial meaning between Applicant’s mark and the Cited Mark.

Numerous decisions support the conclusion that the shared use of a single term

and nothing more is plainly insufficient to create a likelihood of confusion. For example,

in First Savings Bank F.S.B. v. First Bank Systems, Inc., 40 USPQ2d 1865, 1871 (10th

Cir. 1996), the Court examined the marks FIRSTBANK and FIRST BANK SYSTEM.

The court determined that a reasonable jury could find that, based on the visual

differences created by the added word, the similarity between the two marks was

minimal. See id. Similarly, in Atlantic Richfield Co. v. Arco Globus International Co.,
Serial No. 77689956

43 USPQ2d 1574, 1579 (S.D.N.Y. 1997), the court evaluated the similarities between the

plaintiff’s ARCO marks and the defendant’s ARCO GLOBUS INTERNATIONAL mark.

Citing the presence of the additional words in the defendant’s mark, the court determined

that the two marks were “not sufficiently similar to tip the scales towards a finding of

likelihood of confusion.” Id. See also Security Center, Ltd. v. First National Security

Centers, 750 F.2d 1295, 1302 (5th Cir. 1985); Colony Foods, Inc. v. Sagemark, Ltd., 735

F.2d 1336, 1339 (Fed. Cir. 1984) (HUNGRY HOBO held not confusingly similar to

HOBO JOE’S or related HOBO marks, all for restaurant services); Interwoven Stocking

Co. v. Crest Hosiery Mill, 134 USPQ 43, 44-45 (TTAB 1962). The exact same principle

applies in this case. Numerous cases support the proposition that the first element of a

mark is most likely to be impressed upon the mind of the purchaser and remembered.

See Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895 (TTAB 1998). By

ignoring the first word element in Applicant’s mark, the Examiner is basing the refusal

on the one element of those marks which is probably the least prominent visually, aurally

or cognitively.

In addition, the Applicant’s mark differs obviously and significantly to the Cited

Mark in sound, due to the presence in the Applicant’s mark of the additional word

ENERGY. As the Court stated in First Savings Bank F.S.B., “[a]s to pronunciation,

‘First Bank System’ contains an additional word, and to that extent is pronounced

differently than FirstBank.” 40 USPQ2d 1865, 1871. Again, Applicant notes that its

mark contains the phrase ENERGYHUB, creating a mark that sounds entirely different

from the one word HUB.
Serial No. 77689956

Moreover, the mere similarity of two marks does not necessarily give rise to a

likelihood of confusion; rather, confusion is likely where similar marks are used in

connection with related goods or services. See, e.g., Local Trademarks, Inc. v. Handy

Boys, Inc., 16 USPQ2d 1156 (TTAB 1990) (LITTLE PLUMBER for liquid drain opener

held not confusingly similar to LITTLE PLUMBER and design for advertising services,

namely the formulation and preparation of advertising copy and literature in the plumbing

field); Quartz Radiation Corp. v. Comm/Scope Co., 1 USPQ2d 1668 (TTAB 1986) (QR

for coaxial cable held not confusingly similar to QR for various products (e.g., lamps,

tubes) related to the photocopying field). If the goods and services in question differ,

such that no reasonable consumer would mistakenly believe that they emanate from the

same source, then there is no likelihood of confusion. This is particularly true where the

marks in question are as different as they are here. “If the marks of the respective parties

are identical, the relationship between the goods or services need not be as close to

support a finding of likelihood of confusion as would be required in a case where there

are differences between the marks.” TMEP 1207.01(a), citing Amcor, Inc. v. Amcor

Industries, Inc., 210 USPQ 70, 78 (TTAB 1981).

Here, the Cited Mark is used in connection with “Electric switch housings,

electrical switches and transmitters of electronic signals all for use with a stand alone

switch used to signal a singular event,” as to Class 9 only (emphasis added). More

particularly, the Cited mark is used in connection with a “hold up button” used by, e.g.,

bank employees during a robbery (i.e., “a singular event”) to alert emergency personnel.
Serial No. 77689956

Indeed, during prosecution, the Cited Mark Applicant described the goods to the U.S.

Patent & Trademark Office as follows:

Applicant makes stand alone physical switches that do not function in any of the
ways outlined by the Examiner in her arguments. The product is a stand alone
switch used to signal a singular event. For example, if an emergency, e.g., a
fire, or a robbery, is taking place at a business location, an employee will
manually operate the switch to signal to appropriate authorities or a monitoring
service that there is a problem.

Applicant’s HUB products are not used with any type of a common connection
point for network devices. They are not segments in a LAN. They are not
switching hubs. They are physical switches and associated housings, manually
operated, for signaling purposes.

HUB is a term coined by Applicant to identify its switches. It is an acronym for
“hold up button” (also called a hold up switch). See Exhibit A submitted with this
response, which is a true and correct copy of a page from Applicant’s website at
http://www.unitedsecurity.com/pages/holdup.html showing the Applicant’s HUB
branded switches.

See, Exhibit A (emphasis added).

Applicant, on the other hand, uses its mark with “electronic systems comprised of

electronic display units, computer hardware, electronic transmitters and receivers,

temperature and humidity controllers and sensors, electric switches, electrical plugs and

sockets, and software for monitoring and controlling utility consumption, namely,

electricity, water, and gas consumption,” as to Class 9, and “online system management

services that allow users to remotely monitor and control their electric, water, and gas

utility consumption and to remotely monitor, program, and control large and small

appliances,” as to Class 42; put another way, the Applicant is in the business of providing

network systems and associated devices and online system management services. To

construe the Cited Mark – the trademark of a “hold up button” used in emergency
Serial No. 77689956

situations such as bank robberies and fires – so broadly as to cover any service that might

remotely monitor and control utility consumption would give the Cited Mark Applicant

trademark rights far in excess of what the law or common sense allows, particularly

where the Cited Mark Applicant expressly stated that (unlike Applicant’s mark), the

Cited Mark is “not used with any type of a common connection point for network

devices,” “[is not a] segment[] in a LAN,” and “[is not a] switching hub[].” See Exhibit

A. The limited nature of the Cited Mark’s scope is further underscored by an Examiner’s

Amendment entered during the prosecution of the Cited Mark that limited the Cited

Mark’s description of goods and services to “[e]lectric switch housings, electrical

switches and transmitters of electronic signals all for use with a stand alone switch used

to signal a singular event,” Exhibit C, Examiner’s Amendment, Serial No. 77578538

(emphasis added).

In contrast, Applicant provides its products and system management services that

allow users to remotely monitor and control their electric, water, and gas utility

consumption and to remotely monitor, program, and control large and small appliances.

The Cited Mark relates to a “hold up button” and related housings only. This is very

different than the services covered by the Applicant’s mark, which are related to the

provision of service plans and systems associated with the ability to remotely monitor

and control utility consumption. Thus, Applicant’s services are not in the same field as

that of the HUB mark, are not competitive with that of the HUB mark, and will not be

marketed alongside that of the HUB mark.
Serial No. 77689956

Where the parties’ products or services are somewhat related but not competitive,

a finding of likelihood of confusion must depend on the presence of additional factors.

See Homeowners Group, Inc. v. Home Marketing Specialists, Inc., 18 USPQ2d 1587,

1593 (6th Cir. 1991). All such “additional factors” in this case, particularly the glaring

differences in sight, sound, and connotation discussed above, militate in favor of the

Applicant. Indeed, Applicant’s services will be offered to different consumers through

completely different channels of trade. Consumers seeking to remotely monitor and

control their utility consumption (e.g., homeowners) do not have the same goals as

consumers seeking to purchase “hold up buttons” from a security company (e.g., a bank).

Nor would they expect to find those services offered by the same provider. Indeed, the

website referenced by the Cited Mark Applicant as advertising the Cited Mark’s goods,

http://www.unitedsecurity.com/pages/holdup.html, (attached at Exhibit B), is a security

company website and does not reference any products or services associated with utility

consumption. Thus, it is unlikely consumers will be confused or think that the two marks

originate from the same source.

Several additional and related Du Pont factors favor the Applicant in this case:

that parties’ respective goods move in distinct channels of trade; there is no evidence that

the Cited Mark is famous; and there is absolutely no evidence of actual confusion, which

is shown in part by the fact that neither user has objected to the other’s use of the term.

With respect to the Cited Mark, as mentioned above, it can be reasonably inferred

from the cited application that its “hold up buttons” are marketed over channels typical to

the security-conscious consumer, e.g., banks. By contrast, Applicant’s energy monitoring
Serial No. 77689956

and controlling systems and services are targeted to persons and entities who are

interested in remotely controlling their electric, water, and gas utility consumption, and

would not be looking to a security company for those services. Because the parties’

respective goods or services are targeted to different sets of consumers, the third Du Pont

factor favors the Applicant.

It is well settled that the fame of a mark is “a dominant factor in the likelihood of

confusion analysis for a famous mark, independent of the consideration of the relatedness

of the goods.” Recot, Inc. v. M.C. Becton, 54 USPQ2d 1894, 1898; see also TMEP

1207.01 (d) (ix). When the cited mark is famous, it is reasonable to presume that the

public is more likely to confuse the junior mark with the famous registered mark. See id.

In this case, however, there is absolutely no evidence of record to indicate that the Cited

Mark is famous in any relevant market, and so the mark does not deserve any of the

broader protections accorded to famous marks. This is yet another factor that militates in

favor of the Applicant.

According to Du Pont, the examiner must consider the ‘nature and extent of any

actual confusion” (factor seven), which may be gauged by “length of time during and

conditions under which there has been concurrent use without evidence of actual

confusion” (factor eight). Du Pont, 177 USPQ at 567. The Du Pont court also requires

an examination of any prior dealings between the two parties, or lack thereof, specifically

including any evidence of “laches and estoppel attributable to owner of prior mark and

indicative of lack of confusion” (factor eleven (d)). Id. The chronology of these marks

clearly indicates that all three of these factors favor the Applicant.
Serial No. 77689956

The Applicant filed the subject application on March 12, 2009. The Cited Mark

was filed on September 25, 2008. Assuming arguendo that the Cited Mark’s claimed

dates of first use are earlier than its filing date, that means that the allegedly confusingly

similar term HUB has possibly been used concurrently by each party, and to the best of

the Applicant’s knowledge, there has never been any instance whatsoever of actual

confusion. Moreover, the Applicant had never received any complaint or other

communication from the Cited Mark Applicant objecting to the use of Applicant’s mark.

If the Cited Mark Applicant objected to such use, or if confusion has occurred, the failure

of the Cited Mark Applicant to notify Applicant or take any other action over an extended

period of time would constitute laches, a factor weighing in Applicant’s favor in the Du

Pont analysis. More likely, however, the absence of any complaint on the part of the

Cited Mark Applicant is simply indicative that the marks in question are not confusingly

similar.

In summary, confusion between Applicant’s mark ENERGYHUB and the Cited

Mark HUB is not likely in light of:

• The differences between the respective marks in terms of appearance,

sound, connotation and overall impression; and

• The differences in the products and services provided in Class 9, and

Applicant’s services in Class 42;

• Each of the parties’ services is marketed to different target customers;

• There is no evidence of fame as to the Cited Mark; and

• There has been no actual confusion or other complaint.
Serial No. 77689956

Accordingly, Applicant respectfully requests reconsideration and withdrawal of this

refusal.

II. Applicant’s Mark is Not Merely Descriptive

Applicant respectfully submits that the Mark is not merely descriptive, but is

rather a suggestive combination of words coined by the Applicant which requires thought

to understand, and is therefore entitled to registration on the Principal Register.

Descriptive terms are those which immediately and directly convey to the

consumer the ingredients, qualities or characteristics of the product or service. See, e.g.,

Educational Development Corp. v. The Economy Company, 195 U.S.P.Q. 482 (10th Cir.

1977); Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 189 USPQ 759, 765

(2d Cir. 1976). A mark must convey the information with a degree of particularity. Plus

Products v. Medical Modalities Assocs., 211 USPQ 1199, 1204-05 (TTAB 1981). If a

multistage reasoning process is required to determine the characteristics of the product or

service, then the mark is suggestive. See In re Abcor Development Corp., 588 F.2d 811,

200 USPQ 218 (CCPA 1978). It is well established that the burden is on the Examining

Attorney to prove descriptiveness (See, e.g., In re Merrill, Lynch, Pierce, Fenner &

Smith, 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987)), and that doubts are to be

resolved in favor of the Applicant (See, e.g., In re Rank Organization, Ltd., 222 USPQ

324, 326 (TTAB 1984)).

The Trademark Trial and Appeal Board (the “TTAB”) has for many years utilized

a three-part test to determine whether a mark is merely descriptive or, on the other hand,

suggestive in nature. See, e.g., No Nonsense Fashions, Inc. v. Consolidated Foods Corp.,
Serial No. 77689956

226 U.S.P.Q. 502 (T.T.A.B. 1985). Under this scheme, one is to apply (i) an imagination

test – whether the mark “conveys to consumers an immediate idea of the ingredients,

qualities or characteristics” of the goods or services identified by the mark; (ii) a

competitors’ use test – whether use of the word or phrase in question “has been so

frequent that consumers are unlikely to perceive the term when used in the manner of a

trademark as indicating source or origin;” and (iii) a competitors’ need test – whether the

mark “deprives competitors of an apt description” of their goods or services. Id. at 507.

Application of this test to the present case demonstrates that Applicant’s ENERGYHUB

mark is suggestive rather than merely descriptive.

A. The Imagination Test

Descriptive terms are those which immediately and directly convey to the

consumer the ingredients, qualities or characteristics of the product or service. See, e.g.,

Educational Development Corporation, supra. Application of the first prong of the

TTAB’s test does not support the Section 2(e)(1) refusal, because the mark does not

convey to consumers an immediate idea of the nature or characteristics of Applicant’s

goods through a well understood or recognized meaning.

It is well-established that an Examining Attorney should only refuse registration

where it can be shown that the mark has a well understood and recognized meaning that

is descriptive of the goods and services. See In re Gould Paper Corp., 834 F.2d 1017, 5

U.S.P.Q.2d 1110, 1018 (Fed. Cir. 1987); In re Orleans Wines, Ltd., 196 U.S.P.Q. 516,

517 (T.T.A.B. 1977)). In the present case, the mark ENERGYHUB taken as a whole,

does not have such a meaning and therefore should not be refused registration.
Serial No. 77689956

A mark does not have to be devoid of all meaning in relation to the goods and

services to be registrable. See TMEP § 1209.01(a). Combinations of merely descriptive

components have been found to be registrable if the juxtaposition of the words is

inventive or evokes a unique commercial impression. See, e.g., In re TBG, Inc., 229

U.S.P.Q. 759 (T.T.A.B. 1986); In re National Shooting Sports Foundation, 219 U.S.P.Q.

1018, 1020 (T.T.A.B. 1983); In re Shutts, 217 U.S.P.Q 363 (T.T.A.B. 1983); Application

of Colonial Stores, Inc., 394 F.2d 549, 157 U.S.P.Q 382 (C.C.P.A. 1968). The issue is

whether the mark, considered in its entirety, possesses a merely descriptive significance

as applied to the goods or services in question, i.e., whether it conveys a readily

understood meaning to the average purchaser of the goods or services. See In re Bright-

Crest, Ltd., 204 U.S.P.Q. 591 (T.T.A.B. 1979).

The phrase “energy hub” does not merely describe a characteristic or function of

the goods and servies. As the Examiner noted, “energy” is defined very broadly as, e.g.,

a source of usable power, especially electricity, etc. The term “energy’ in an of itself

does not connote to a consumer hardware and software goods for remotely monitoring

and management utility consumption, and remote network monitoring and management

services. While Applicant’s goods and services involve systems for remotely monitoring

and controlling utility consumption, they are not a “source of useable power” or

electricity as the definition appears to require – indeed the mark will seem incongruous in

most such circumstances. Nothing about the phrase “energy hub” suggests that the term

should be interpreted on such a macro level. Furthermore, it does not suggest the

particular nature of Applicant’s goods and services; rather, it could evoke any number of
Serial No. 77689956

“energy” related goods of any size. To understand “energy hub” as referring specifically

computer hardware, electronic transmitters and receivers, temperature and humidity

controllers and sensors, and software for monitoring and controlling electricity, water,

and gas consumption, requires an imaginative leap that goes well beyond any readily

understood meaning of the compound term – and would be particularly remote for

someone looking at a finished product which is not a “source” of energy at all as the

definition of the term appears to require. Likewise, a consumer would not understand the

phase “energy hub” as specifically referring to online system management services that

allow users to remotely monitor and control their electric, water, and gas utility

consumption and to remotely monitor, program, and control large and small appliances.

There is nothing about the phrase “energy hub” that suggests remote control and

programming of appliances. Because a consumer would have to engage in significant

imagination or “mental gymnastics” to reach the actual meaning of ENERGYHUB, the

mark should be deemed suggestive in nature.

B. The Competitors’ Use Test

Application of the second prong of the TTAB’s test does not support the Section

2(e)(1) refusal, because use of the phrase “ENERGYHUB” has not been so frequent that

consumers are unlikely to perceive the term when used in the manner of a trademark as

indicating source or origin. Applicant is aware of no other companies or organizations in

its industry using the phrase ENERGYHUB as a trademark in the same fashion as

Applicant. The Examining Attorney, upon whom the burden rests in descriptiveness
Serial No. 77689956

cases, presented no evidence of competitors’ use of the term as a trademark in support of

the Office Action. Thus, this prong must be resolved in favor of Applicant.

C. The Competitors’ Need Test

Similarly, under the third prong of the test, the Applicant’s mark is not merely

descriptive because Applicant’s competitors do not need to use the phrase ENERGYHUB

to describe their goods or services. See No Nonsense Fashions, Inc., 226 U.S.P.Q. at 507.

There are many ways a competing institution could describe similar goods in ordinary

English, so that Applicant’s exclusive use of the mark would not deprive its competitors

of an essential descriptive term. “The English language has a wealth of synonyms and

related words with which to describe the qualities which manufacturers may wish to

claim for their products, and the ingenuity of the public relations profession supplies new

words and slogans as they are needed.” Aluminum Fabricating Co. v. Seasons-All

Window Corp., 119 U.S.P.Q. 61, 63 (2d Cir. 1953). Indeed, because Applicant’s mark is

not clear about the exact nature of the goods offered, another institution would likely not

want to use the term because of this ambiguity.

Moreover, “[t]he more imagination that is required to associate a mark with a

product or service, the less likely the words used will be needed by competitors to

describe their products.” See Union Carbide, 188 U.S.P.Q. at 623. As previously

discussed, the mark ENERGYHUB does not clearly identify or describe a feature of the

Applicant’s goods; instead, the customer must peruse the Applicant’s literature, and then

interpret that information to understand the implication of the mark. These “mental

gymnastics” indicate that a significant exercise of imagination is required to associate
Serial No. 77689956

Applicant’s mark with the concept of hardware, software, humidifiers, and the like,

making it unlikely that competitors will need the words ENERGYHUB to describe their

products and services.

In summary, the refusal of Applicant’s mark should be withdrawn because (1) the

mark does not immediate and directly convey what the Applicant’s goods are; (2)

imagination is required to appreciate the meaning and significance of the phrase “energy

hub” as used in the mark; (3) there is no evidence that competitors use the phrase in the

same way as a trademark; and (4) there is no evidence that competitors need to use the

phrase. Because application of the TTAB’s three-prong test demonstrates that the mark

ENERGYHUB is suggestive rather than merely descriptive, Applicant respectfully

requests that the mark be approved for registration.

Applicant believes that the foregoing satisfactorily addresses all the issues raised

in the Office Action, and therefore respectfully requests speedy approval of the mark for

publication.
EXHIBIT A
PTO Form 1957 (Rev 9/2005)
OMB No. 0651-0050 (Exp. 04/30/2011)

Response to Office Action

The table below presents the data as entered.

Input Field Entered
SERIAL NUMBER 77578538
LAW OFFICE
LAW OFFICE 109
ASSIGNED
MARK SECTION (no change)
ARGUMENT(S)
In response to the Office Action issued on July 6, 2009, and having carefully reviewed the Examiner’s
arguments and authorities, Applicant respectfully submits the following:

2(e)(1) refusal – Mark is Merely Descriptive

HUB is not descriptive of Applicant’s goods. Applicant makes stand alone physical switches that do not
function in any of the ways outlined by the Examiner in her arguments. The product is a stand alone
switch used to signal a singular event. For example, if an emergency, e.g., a fire, or a robbery, is taking
place at a business location, an employee will manually operate the switch to signal to appropriate
authorities or a monitoring service that there is a problem.

Applicant’s HUB products are not used with any type of a common connection point for network
devices. They are not segments in a LAN. They are not switching hubs. They are physical switches
and associated housings, manually operated, for signaling purposes.

HUB is a term coined by Applicant to identify its switches. It is an acronym for “hold up button” (also
called a hold up switch). See Exhibit A submitted with this response, which is a true and correct copy
of a page from Applicant’s website at http://www.unitedsecurity.com/pages/holdup.html showing the
Applicant’s HUB branded switches.

It follows from the above that HUB is not generic for Applicant’s products.

Based on the above, Applicant respectfully requests that the Examiner withdraw the 2 (e)(1) refusal, and
allow the mark.

If the Examiner has any further questions or concerns, she may contact the Applicant’s attorney on his
direct line at 619.595.4247.

Respectfully submitted.

/Michael J. Hoisington/
Attorney for Applicant and member of the California Bar.
EVIDENCE SECTION
EVIDENCE FILE NAME(S)

ORIGINAL PDF FILE evi_9817216936-202542741_._hubwebpage.pdf
CONVERTED PDF
FILE(S) \TICRSEXPORT8IMAGEOUT877578577578538xml1ROA0002.JPG
(1 page)

DESCRIPTION OF A copy of a page from Applicant’s website showing use of the mark with
EVIDENCE FILE Applicant’s switches.
SIGNATURE SECTION
RESPONSE SIGNATURE /Michael J. Hoisington/
SIGNATORY’S NAME Michael J. Hoisington, Esq.
SIGNATORY’S POSITION Attorney of recored, California bar member.
DATE SIGNED 12/09/2009
AUTHORIZED
SIGNATORY
YES

FILING INFORMATION SECTION
SUBMIT DATE Wed Dec 09 20:38:30 EST 2009
USPTO/ROA-98.172.169.36-2
0091209203830216395-77578
TEAS STAMP 538-460b846a782718376d5fd
fc6c3be8de9a-N/A-N/A-2009
1209202542741029

PTO Form 1957 (Rev 9/2005)
OMB No. 0651-0050 (Exp. 04/30/2011)

Response to Office Action
To the Commissioner for Trademarks:

Application serial no. 77578538 has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

In response to the Office Action issued on July 6, 2009, and having carefully reviewed the Examiner’s
arguments and authorities, Applicant respectfully submits the following:
2(e)(1) refusal – Mark is Merely Descriptive

HUB is not descriptive of Applicant’s goods. Applicant makes stand alone physical switches that do not
function in any of the ways outlined by the Examiner in her arguments. The product is a stand alone
switch used to signal a singular event. For example, if an emergency, e.g., a fire, or a robbery, is taking
place at a business location, an employee will manually operate the switch to signal to appropriate
authorities or a monitoring service that there is a problem.

Applicant’s HUB products are not used with any type of a common connection point for network devices.
They are not segments in a LAN. They are not switching hubs. They are physical switches and associated
housings, manually operated, for signaling purposes.

HUB is a term coined by Applicant to identify its switches. It is an acronym for “hold up button” (also
called a hold up switch). See Exhibit A submitted with this response, which is a true and correct copy of a
page from Applicant’s website at http://www.unitedsecurity.com/pages/holdup.html showing the
Applicant’s HUB branded switches.

It follows from the above that HUB is not generic for Applicant’s products.

Based on the above, Applicant respectfully requests that the Examiner withdraw the 2 (e)(1) refusal, and
allow the mark.

If the Examiner has any further questions or concerns, she may contact the Applicant’s attorney on his
direct line at 619.595.4247.

Respectfully submitted.

/Michael J. Hoisington/
Attorney for Applicant and member of the California Bar.

EVIDENCE
Evidence in the nature of A copy of a page from Applicant’s website showing use of the mark with
Applicant’s switches. has been attached.
Original PDF file:
evi_9817216936-202542741_._hubwebpage.pdf
Converted PDF file(s) (1 page)
Evidence-1

SIGNATURE(S)
Response Signature
Signature: /Michael J. Hoisington/ Date: 12/09/2009
Signatory’s Name: Michael J. Hoisington, Esq.
Signatory’s Position: Attorney of recored, California bar member.

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 applicant’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 applicant in
this matter: (1) the applicant 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 applicant has filed a power of attorney appointing him/her in this matter; or (4) the
applicant’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.

Serial Number: 77578538
Internet Transmission Date: Wed Dec 09 20:38:30 EST 2009
TEAS Stamp: USPTO/ROA-98.172.169.36-2009120920383021
6395-77578538-460b846a782718376d5fdfc6c3
be8de9a-N/A-N/A-20091209202542741029
EXHIBIT B
EXHIBIT C
To: United Security Products, Inc. ([email protected])
Subject: U.S. TRADEMARK APPLICATION NO. 77578538 – HUB – 009329-00013
Sent: 2/2/2010 2:43:50 PM
Sent As: [email protected]
Attachments:

UNITED STATES PATENT AND TRADEMARK OFFICE

SERIAL NO: 77/578538

MARK: HUB
*77578538*
CORRESPONDENT ADDRESS:
MICHAEL J. HOISINGTON
HIGGS, FLETCHER & MACK, LLP GENERAL TRADEMARK INFORMATION:
401 W A ST STE 2600 http://www.uspto.gov/main/trademarks.htm
SAN DIEGO, CA 92101-7913

APPLICANT: United Security Products, Inc.

CORRESPONDENT’S REFERENCE/DOCKET
NO: 009329-00013

CORRESPONDENT E-MAIL ADDRESS:
[email protected]

EXAMINER’S AMENDMENT
ISSUE/MAILING DATE: 2/2/2010

AMENDMENT: In accordance with the authorization granted by Michael J. Hoisington, Esq. on
February 2, 2010, the application has been AMENDED as indicated below. Please advise the undersigned
examining attorney immediately if there is an objection to the amendment. Otherwise, no response is
necessary. TMEP §707.

If the identification of goods and/or services has been amended, please note that any future amendments
must be in accordance with 37 C.F.R. §2.71(a) and TMEP §1402.07(e).

Identification of Goods in International Class 9

The identification of goods is amended to read as follows: “Electric switch housings, electrical switches
and transmitters of electronic signals all for use with a stand alone switch used to signal a singular
event.” See TMEP §§1402.01, 1402.01(e).
The refusal under Section 2(e)(1) is WITHDRAWN.

/Julie A. Watson/
Trademark Attorney
Law Office 109
(571) 272-9236
(571) 273-9109 (fax)

STATUS CHECK: Check the status of the application at least once every six months from the initial
filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system
at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the
complete TARR screen. If the status of your application has not changed for more than six months, please
contact the assigned examining attorney.
To: United Security Products, Inc. ([email protected])
Subject: U.S. TRADEMARK APPLICATION NO. 77578538 – HUB – 009329-00013
Sent: 2/2/2010 2:43:52 PM
Sent As: [email protected]
Attachments:

IMPORTANT NOTICE REGARDING YOUR TRADEMARK
APPLICATION

Your trademark application (Serial No. 77578538) has been reviewed. The
examining attorney assigned by the United States Patent and Trademark Office
(“USPTO”) has written a letter (an “Office action”) on 2/2/2010 to which you must
respond (unless the Office letter specifically states that no response is required).
Please follow these steps:

1. Read the Office letter by clicking on this link
http://tmportal.uspto.gov/external/portal/tow?DDA=Y&serial_number=77578538&doc_type=EXA&mail_date=
OR go to http://tmportal.uspto.gov/external/portal/tow and enter your serial number to access the
Office letter. If you have difficulty accessing the Office letter, contact [email protected]

PLEASE NOTE: The Office letter may not be immediately available but will be viewable within 24
hours of this e-mail notification.

2. Contact the examining attorney who reviewed your application if you have any questions about the
content of the Office letter (contact information appears at the end thereof).

3. Respond within 6 months, calculated from 2/2/2010 (or sooner if specified in the Office letter), using
the Trademark Electronic Application System (TEAS) Response to Office Action form. If you have
difficulty using TEAS, contact [email protected]

ALERT:
Failure to file any required response by the applicable deadline will result in the ABANDONMENT
(loss) of your application.

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the
USPTO does NOT accept e-mailed responses.