Attorney Docket No. 44357-85012

FOR ELECTRONIC FILING

Serial No. 77/637,678
Mark: API
Examining Attorney: Mark Rademacher
Law Office: 114

RESPONSE
This is in response to the Office Action issued on March 17, 2009.
I. Likelihood of Confusion
Registration of the subject mark was refused under §2(d) of the Trademark Act on the
grounds that, when used on or in connection with replacement components for automotive air
conditioners, namely, compressors and clutches; replacement components for automotive air
conditioners, namely, driers, expansion valves and blower motors, the applied-for mark so
resembles a previously registered mark as to be likely to cause confusion. The Office Action
specifically alleges that Applicant’s mark is likely to cause confusion with the mark API shown
in U.S. Trademark Reg. No. 2,726,285, for automobile bodies, brake linings for land vehicles,
brake segments for land vehicles, brakes for vehicles, bumper for automobile. For the reasons
stated below, Applicant respectfully submits that its mark is not likely to cause confusion with
the cited mark.
The principal factual considerations pertinent to the issue of likelihood of confusion are
set forth in In re E. I. Du Pont de Nemours & Co., 177 U.S.P.Q. 563 (C.C.P.A. 1973). These
factors include, among other things, differences between the relevant goods, the number and
nature of similar marks registered and used in connection with similar goods and services, the
differences between the relevant marks, the costs of the respective goods and services, and the
sophistication of the relevant consumers. Considering these factors, Applicant submits that there
is no likelihood that consumers would be confused into believing that Applicant’s services
somehow originate from or are sponsored by the owner of the mark cited in the Office Action.

A. The Differences Between Applicant’s Goods and the Goods Associated with the
Cited Registration Are Sufficient to Avoid a Likelihood of Confusion.
Even where identical marks are used, differences between the parties’ respective goods
and services may be sufficient to avoid a likelihood of confusion. See, e.g., Shen Mfg. Co. v. Ritz

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Hotel Ltd., 73 U.S.P.Q.2d 1350 (Fed. Cir. 2004) (finding no likelihood of confusion between
RITZ for cooking classes and RITZ for kitchen utensils, because of the differences between the
goods and services and the weakness of the mark). When comparing the parties’ goods, the
relevant consideration is whether consumers would perceive the goods as originating from the
same source. Id. at 1355-56.
In support of the assertion that Applicant’s replacement components for automotive air
conditioners, namely, compressors and clutches; replacement components for automotive air
conditioners, namely, driers, expansion valves and blower motors are related to Registrant’s
automobile bodies, brake linings for land vehicles, brake segments for land vehicles, brakes for
vehicles, bumper for automobile, the Office Action cites several third party registrations for
marks used in connection with “the same or similar goods and/or services as those of applicant
and registrant in this case” as purported evidence that Applicant’s goods are closely related to the
goods associated with the cited registration. However, the Trademark Trial and Appeal Board
has established that the value of such evidence is rather limited. As the Board stated in In re
Mucky Duck Mustard Co., evidence of third party registrations “may … have some probative
value to the extent that they may serve to suggest that such goods or services are of a type which
may emanate from a single source.” In re Mucky Duck Mustard Co., Inc., 6 U.S.P.Q.2d 1467
(TTAB 1988) (emphasis added). Similarly, in In re Harboshide Beverage Group LLC,
Trademark Serial No. 78/626,361 (TTAB March 27, 2007), the Board held that four use-based
third party registrations were not sufficient to establish that consumers were likely to be confused
by concurrent use of similar marks on lager and fruit juices, even where the only difference
between the marks was the additional generic term LAGER. Thus, while third party registrations
may be admissible, they are of very limited probative value and are far from conclusive evidence
that the goods and services described therein are in face “related,” or that consumers perceive the
goods as originating from the same source, as is required for a finding of likelihood of confusion.
In this case, Applicant’s goods are replacement components for automotive air
conditioners, namely, compressors and clutches; replacement components for automotive air
conditioners, namely, driers, expansion valves and blower motors and Registrant’s goods are
automobile bodies, brake linings for land vehicles, brake segments for land vehicles, brakes for
vehicles, bumper for automobile. Applicant’s goods are specialized replacement parts for
automotive air conditioners. Automotive air conditioner repair work is a specialized field that is

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not performed by just any automotive mechanic. Because automotive air conditioners require
refrigerant that is heavily regulated for environmental reasons, the mechanic must be certified to
purchase the refrigerant and must have specialized equipment for preventing the release of ozone
depleting gases when the automotive air conditioning system is opened for repairs.
Registrant’s goods are automotive body parts and brake parts, which are distinguishable
from Applicant’s replacement components for automotive air conditioners. Automotive body
parts are sold in different channels of trade than are either replacement components for
automotive air conditioners or brake parts and are purchased by different consumers.
Automotive body parts are most often purchased by automotive body repair professionals who
specialize in metal work, automotive paint and finishing techniques and automotive
reconstruction, all of which are largely cosmetic. These professionals rarely provide the
mechanical system repair services that would require the purchase of either replacement
components for automotive air conditioners. Moreover, these parts have very different purposes.
Automotive body parts serve a protective and cosmetic purpose, encasing the internal
mechanical parts of an automobile, and providing an aesthetically pleasing exterior. In contrast,
components for automotive air conditioners serve a purely functional and mechanical purpose.
In face, the Trademark Office has also seemingly determined that Applicant’s goods and
Registrant’s goods are so different as to require classification in distinct International Classes.
Applicant’s replacement components for automotive air conditioners, namely, compressors and
clutches are classified in International Class 7 and its replacement components for automotive air
conditioners, namely, driers, expansion valves and blower motors are classified in International
Class 11, while Registrant’s automobile bodies, brake linings for land vehicles, brake segments
for land vehicles, brakes for vehicles, bumper for automobile are classified in International Class
12. While this factor is not determinative of the dissimilarity of the goods, it does demonstrate
that the goods are significantly distinguishable, as the creators of the classification system
deemed them different enough to be classified separately.
For all of these reasons, Applicant respectfully submits that the differences between its
goods and those associated with the cited registration are sufficient to avoid a likelihood of
confusion. Thus, Applicant respectfully requests that the refusal to register the subject
application be withdrawn.

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B. The Registered Mark Cited in the Office Action and the term “API” Itself are
Weak Due To Concurrent Usage by Others In Connection With Related Goods and
Services.
It is well settled that the strength or weakness of a mark is relevant to determining
whether a likelihood of confusion exists. Shen Mfg. Co., Inc. v. Ritz Hotel, Ltd., 393 F.3d 1238,
1245 (Fed. Cir. 2004). Where numerous different parties use marks that contain a common term
for generally related goods and/or services, the common element is weak in the relevant industry.
In re Box Solutions Corp., 79 U.S.P.Q.2d 1953 (TTAB 2006). Thus, evidence of third party use
and registration of similar marks is admissible and relevant to show that a mark is relatively
weak and entitled only to a narrow scope of protection. Id.; see also Sweats Fashions, Inc. v.
Pannill Knitting Co., 4 U.S.P.Q.2d 1793 (Fed. Cir. 1987).
In the present case, it is significant that there are several separately owned trademark
registrations and allowed applications for the mark API for use in connection with goods and
services arguably related to those listed in the cited registration and the subject application. For
example, in addition to the cited registration, a search of the Trademark Office database
identified the following third party marks:
TRADEMARK Status/ Status Full Goods/Services Owner
Serial No./ Reg. No. Date
Disclaimer
API Published – (Int’l Class: 35) Wholesale distributorship featuring American
Opposed tires Pacific
SN: 78-527961 May 14, 2007 Industries, Inc.
API and Design Registered (Int’l Class: 11) Water handling and distribution Aquarius
July 4, 2006 products, namely plastic fittings and connectors, Brands, Inc.
bubblers, emitters, jets and sprays, stake
assemblies, tubing, dripperline, regulators, filters,
nipples, cutoffs, valve manifolds, valves, risers,
SN: 76-586917 pressure test kits, flow controllers, flow control
RN: 3,110,854 paths, soaker line, access boxes, elbows, tees,
adapters, port plugs, insect plugs, clamp plates,
air vents, air and vacuum release valves, hose,
pipe, ball valves, pipe grommets, mistake plugs,
put wire anchors, tubing end closures, washers,
wire ties, take-off fittings, saddles for pvc pipe,
sprinkler shut offs, swing pipe fittings, punches,
taps drills, pressure check devices, tools for filters,
namely filter wrenches
API Registered 8 & (Int’l Class: 35) Retail store services featuring Airpower
15 high-low pressure breathing air systems for use in International,
SN: 76-119867 April 14, 2008 firefighting and scuba diving Inc.
RN: 2,552,108 (Int’l Class: 37) Maintenance and repair of high-
low pressure breathing air systems for use in
firefighting and scuba diving

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TRADEMARK Status/ Status Full Goods/Services Owner
Serial No./ Reg. No. Date
Disclaimer
API Registered (Int’l Class: 1) Chemical preparations, namely, Mars Fishcare
February 19, filtering material and water treatment chemicals forNorth America,
2008 aquariums, chemical test kits consisting Inc.
essentially of chemicals for measuring chemical
content of aquarium water; gravel additives and
SN: 76-978328 liquid fertilizers for plants used in aquariums
RN: 3,385,919 (Int’l Class: 3) Aquarium glass cleaners
(Int’l Class: 5) Pharmaceutical preparations for fish
for the treatment of bacterial infections, fungal
infections, parasitic infections, eye cloud, mouth
fungus, fin rot, tail rot, damaged fins, lesions,
stress, anchor worms, body slime, ick/ich,
damaged gills, blood spots, fish lice, skin flukes,
and white spot disease
(Int’l Class: 21) Instruments for cleaning
aquariums, namely, pads, scrapers and wipes

Copies of the details of these registrations are attached as Exhibit 1. Also attached as Exhibit 2
are printouts showing actual use of many of these marks.
In considering what scope of protection a mark deserves, the strength of the mark must
be taken into account. Where the features that are common to two marks being compared are
weak, even minor additions or changes to the mark and/or relatively minor differences in the
goods or services can effectively negate any confusing similarity.
When confronted with such commonly used terms in the marketplace (e.g., PREMIUM,
NATIONAL, PLUS, API, etc.), consumers have been conditioned to expect different sources,
especially where there are other differences between the marks and distinctions in the goods and
services. Nat’l Cable Television Ass’n v. Am. Cinema Editors, Inc., 19 U.S.P.Q.2d 1424 (Fed.
Cir. 1991) (in such situations, it is reasonable to infer that the relevant public may have become
conditioned to draw fine lines, even between sources of arguably related goods). Moreover, by
permitting the above-identified registrations for the mark API to exist concurrently, the U.S.
Patent and Trademark Office has apparently taken the position that confusion between the marks
is not likely due to the differences between the associated goods and services.
In this case, as discussed above, the differences between the goods associated with the
Applicant’s mark and those associated with the cited registration are at least as distinguishable as
are the goods and services associated with the above-identified third party marks. Thus, due to
the multiple third party registrations for API marks used with related goods and services, and the

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other significant differences between Applicant’s goods and the goods associated with the mark
cited in the Office Action, a purchaser of Applicant’s goods sold under the mark API is not likely
to be confused that such goods in some way originate from or are affiliated with the Registrant.
Accordingly, Applicant requests that the refusal to register the subject mark under §2(d) be
withdrawn.

C. Consumers are Accustomed to Differentiating Between Identical Acronyms When
Used to Indicate Different Sources for Goods.
While Applicant’s mark and the mark in the cited registration are both comprised of the
acronym API, consumers are accustomed to distinguishing between identical acronyms used by
different parties. Because of the numerous terms that any single letter could stand for, available
acronyms are limited and consumers are accustomed to identical acronyms being used to refer to
different parties. This is especially so when the acronym is used to refer to a phrase that is not
itself well-known or readily recognizable. In fact, many acronyms are used by various entities
without consumer confusion. For instance, the acronym ABA is used by the American Bar
Association, the American Bankers Association, the American Basketball Association, the
American Birding Association, and the American Booksellers Association, among others.
In this case, the owner of the cited registration is Auto Parts Industrial, Ltd. Thus,
presumably, the acronym API refers to “Auto Parts Industrial.” However, neither the acronym
API nor the phrase “Auto Parts Industrial” are so well-known or readily recognizable that
consumers would believe that the acronym is reserved for this one party. Rather, consumers
encountering such acronyms are accustomed to looking for other differences between the marks
themselves or the associated goods and services to distinguish between owners of such marks.
This is further evidenced by the number of parties who have already registered and are using the
API mark in connection with related goods and services, as discussed above. Thus, considering
the other differences between Applicant’s goods and the goods associated with the cited
registration, as discussed above, Applicant respectfully submits that there is no likelihood that
consumers would be confused into believing that the goods sold under Applicant’s API mark
originate from or are sponsored by Registrant.

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D. The Relevant Consumer is Quite Sophisticated and Will Exercise a Great Deal of
Care When Purchasing Applicant’s or Registrant’s Goods.
It is well settled that a likelihood of confusion analysis cannot be made in a vacuum, and

must instead be made with reference to the relevant purchaser. Where the relevant purchaser is

rather sophisticated, it is appropriate to apply an elevated standard when determining whether a

likelihood of confusion exists. Weiss Assoc., Inc. v. HRL Assoc., Inc., 14 U.S.P.Q.2d. 1840 (Fed.

Cir. 1990). When it comes to the purchase of automobile parts, purchasers tend to be far more

discriminating than ordinary consumers. These are not impulse buys, but rather are expensive

purchases that are well-researched by purchasers, who are often experts in automotive repair and

extremely brand conscious. Moreover, especially in the case of Applicant’s goods, the

purchasers are specially trained and certified for repairing automotive air conditioners. These

purchasers of expensive automotive products are perhaps some of the pickiest consumers in the

marketplace. See Camacho Cigars, Inc. v. Compania Insular Tabacalera, 171 U.S.P.Q. 673

(D.D.C. 1971) (applying an elevated standard in the likelihood of confusion analysis for

consumers of high-priced cigars). Sophisticated purchasers of Applicant’s automotive air

conditioning components simply won’t be confused into mistakenly purchasing registrant’s body

parts merely because both are sold under the same acronym. For such picky and knowledgeable

consumers of high priced goods, even subtle differences between the goods associated with

identical marks are sufficient to prevent confusion as to source.

For all of these reasons, Applicant respectfully submits that there is no likelihood of

confusion between its mark and the mark cited in the Office Action. Accordingly, Applicant

requests that the refusal of registration of the subject mark under §2(d) be withdrawn.

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CONCLUSION
In view of the above, Applicant respectfully submits that the application is in proper
condition for publication, and notification to that effect is earnestly solicited. The Examining
Attorney is encouraged to contact the undersigned by telephone if any other matters require
resolution prior to approval for publication.

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