Tube Light Company, Inc.

November 19, 2007

Douglas I. Wall, Esquire
Associate
[email protected]

SENT VIA TEAS EMAIL @ USPTO.GOV
Caroline E. Wood, Esq.
Trademark Examining Attorney
Law Office 110
United States Patent and Trademark Office
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451

Re: Trademark for: TUBELITE COMPANY, INC.
Proposed Mark: Elite
Our File No. 577.6297
Serial No. 77094538

Re: RESPONSE TO OFFICE ACTION DATED 5/24/07

Dear Ms. Wood:

Please allow this correspondence to serve as the Tubelite Company, Inc.’s
(“Tubelite”) response to your Office Action Notice (“OAN”) dated May 24, 2007.
Contained below are Tubelite’s arguments in response to the specific categories raised
in the Office Action.

GENERAL INFORMATION / BACKGROUND
Tubelite is a family owned company based out of Apopka, Florida, which has
roots dating back to 1928, when the company was formed by Samuel C. Miller on the
West Side of Manhattan in New York City. The company’s initial focus was on the
manufacture of neon signs, with Mr. Miller owning several patents related to housings
and insulators used in that specialized field. Tubelite was incorporated in 1964 and
currently has nine offices located primarily in the eastern half of the United States (with
the exception being a branch located in Phoenix, Arizona).
Caroline E. Wood, Esq.
Trademark Examining Attorney
Law Office 110
November 20, 2007
Page 2

Today, Tubelite has grown beyond its roots in neon signs and is currently one of
the largest material suppliers for the sign, screen printing, and digital imaging industries.
Owing to its longstanding history, the Tubelite name has become synonymous with
outstanding customer service and technical expertise in these fields. Further
information regarding Tubelite can be found at the company’s website:
www.tubelite.com.

Tubelite’s Proposed Mark
Tubelite’s proposed mark is a combination of the word “Elite” presented in a
stylized, script located adjacent to a globe with off axis meridians. Tubelite’s proposed
mark is intended to be utilized as a source identifier of a specific category Tubelite’s
products related to its signage printers, laminators, inks, and other materials utilized in
the screen printing, neon signage, and digital imaging industries. As noted in the
trademark application, the proposed mark is intended to be used in classes 2, 7, 9 and
16.

LIKELIHOOD OF CONFUSION UNDER 2(d)
In the May 24, 2007 OAN, three separately registered trademarks have been
identified by your office as being confusingly similar to Tubelite’s proposed mark. The
registered marks consist of the word mark “Elite Image” (registrations, 2889419 and
2595275), as well as the combination mark “E Elite Image” (registration 3147149). None
of these registered marks claims any exclusive rights to the use of the word “image”
except as used in the respective trademarks. As the word marks are nearly identical in
their presentation and scope, for purposes of this response, they will be discussed at
the same time. The combination mark “E Elite Image” shall be addressed separately.

Visual Differences with Word Mark “Elite Image”
(Registrations, 2889419 and 2595275)
Starting with the simplest argument, Tubelite points out that its proposed mark
consists of a single word, “Elite” as opposed to the compounded “Elite Image” word
marks. Next, Tubelite’s proposed mark is presented in a stylized, script font versus what
appears to be a generic font, such as Courier or Times New Roman for the word marks.
Next, Tubelite’s proposed mark is a combination of both words and symbols (“Elite” with
a globe containing off axis meridians) versus the simplistic, non-combination word mark
“Elite Image.” In light of the complexity of Tubelite’s proposed mark versus the simplistic
word mark, Tubelite asserts that, visually, there is no likelihood of confusion as
someone purchasing a product styled with a word mark of “Elite Image” would not be
confused with Tubelite’s more complex and distinctive, proposed mark utilizing the
single stylized word with symbol “Elite.”

Visual Difference with the Combination Mark “E Elite Image”
(Registration 3147149)

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Caroline E. Wood, Esq.
Trademark Examining Attorney
Law Office 110
November 20, 2007
Page 3

Tubelite acknowledges that the combination mark “E Elite Image” is a closer
match to the Tubelite proposed mark, as compared to the simplistic word mark above.
However, Tubelite disagrees that the “E Elite Image” mark is so visually similar as to be
confusing.

Tubelite points out that, as with the word marks above, the “E Elite Image” mark
contains multiple words where as Tubelite’s mark is the singular “Elite.” As with the
word marks above, Tubelite’s proposed mark is a stylized, script font whereas the “E
Elite Image” mark consists of a generic looking font such as Courier or Times New
Roman. Additionally, the “E Elite Image” mark utilizes differing sizes of fonts internally
as noted by the size difference between both the “elite” and “image” words, as well as
between the first non-capitalized letter “e” of the word “elite.” Comparatively, Tubelite’s
proposed mark is a singular sized font throughout, and moreover contains a capitalized
“E” at the start of the “Elite” word. This capitalization is found nowhere in the registered
“E Elite Image” mark, further heightening the visual distinction of the two marks.

The visual distinctiveness of the two marks is further noted by the different
symbols which are utilized in conjunction with the word content of the mark. Specifically,
the “E Elite Image” mark uses a mostly solid graphical, lower case “e” rotate slightly off
axis. Comparatively, Tubelite’s proposed mark utilizes a mostly light colored globe
containing meridian, and has no letters associated with the name. Additionally, while the
“E Elite Image” mark has separate between the symbol and word parts of the mark,
Tubelite’s proposed mark touches, and overlaps the symbol of the part, creating a
unitary, singular symbol.

Lastly, an online review of the “E Elite Image” combination mark’s actual use in
commerce (as noted on websites used by companies like “The Office Depot” and
“Office Max”) shows that the mark is consistently presented using the color blue as its
central theme. The use of this same blue color is noted throughout the mark holder’s
entire line of products upon which the registered mark appears. While this blue color is
not, in and of itself, an element of the registered mark, its consistent use utilizing the
blue color is clearly distinctive from Tubelite’s use of its proposed mark, which does not
use the blue color at all. Instead, Tubelite’s proposed mark is typically a singular white
or black color, but not blue at all. This difference is heightened by the openness of the
symbols utilizes in each mark (as discussed above) which further emphasizes the use
of color by the registered mark. Furthermore, Tubelite’s primary color scheme used in
conjunction with the advertising for all of its products is based primarily around the
colors red and black, colors which are near the opposite end of the color spectrum from
the registered mark.

Differences in Relevant Consuming Markets

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Caroline E. Wood, Esq.
Trademark Examining Attorney
Law Office 110
November 20, 2007
Page 4

Beyond the visual differences between the registered word marks and Tubelite’s
proposed mark, Tubelite notes that the relevant consuming markets for each entity’s
products are not the same, thereby preventing the likelihood of confusion. Moreover,
Tubelite asserts that the “Elite Image” mark is not a strong trademark which qualifies it
for any special treatment in outside its specifically defined consumer group, as a mark
such as “Coca-Cola” or “Exxon” would be. As such, Tubelite asserts that the marks
should be viewed in conjunction with their respective limited markets and relevant
consuming markets.

Turning to the specific class for both marks, the registered trademarks and
proposed mark overlap in classes 2 and 16. Tubelite’s trademark application notes at
Class 2 that the intended use of the mark is being used with:

Solvent based, dye based, water based and ultraviolet
printers’ inks used in the digital imaging and screen printing
processes and inkjet printable media, namely, photographic
films for inkjet printing for computer to film applications to
produce film positives.

The most common denominator between all of the above items and that which would
best summarize this use of the trademark would be “printers ink used in screen
printing.”

Tubelite’s trademark application notes at Class 16 that the intended use of the
mark would be for:

Plastic sheet material, namely, vinyl, foils, polyesters and
fabrics for inkjet printing, or to be cut into letters, emblems,
etc. for application to signboards, advertising displays and
the like.

The most common denominator between all of the above items and that which would
best summarize this use of the trademark would be “materials for use in sign making.”

“Elite Image” registration 2889419 notes that the mark is being used in
conjunction with goods and services associated related to “computer printer ink ribbons,
computer ribbons, ink ribbons, and computer printer ribbons.” The most common
denominator between all of the above items and that which would best summarize this
use of the trademark would be “computer printer ink ribbons.”

“Elite Image” registration 2595274 notes that the mark is being used in
conjunction with goods and services associated related to “imaging products, namely

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Caroline E. Wood, Esq.
Trademark Examining Attorney
Law Office 110
November 20, 2007
Page 5

filled ink jet cartridges, ink jet printer ink, toner cartridges, photocopier toner in
cartridges, photocopier toner, toner for copiers, facsimile toner in cartridges, facsimile
toner, and toner for facsimile machines.” The most common denominator between all of
the above items and that which would best summarize this use of the trademark would
be “ink jet and toner for copiers and facsimile machines.”

“E Elite Image” registration 3147149 notes that the mark is being used in
conjunction with goods and services associated related to “toner cartridges, filled ink jet
cartridges, ink jet printer ink, photocopier toner in cartridges, photocopier toner,
facsimile toner in the cartridges, and toner for facsimile machine.” The most common
denominator between all of the above items and that which would best summarize this
use of the trademark would be “ink cartridges for printers, copiers, and facsimile
machines. “

Based upon the above, Tubelite asserts that there is no overlap of the same
channels of trade as the relevant consumers of each marked products is different. As
noted by performing an internet search, “Elite Image” markets its ink jet product at office
supply companies such as Office Depot and Office Max. The “Elite Image” mark is used
to advertise economically priced, replacement inkjet, facsimile, and printer cartridges.
While it is true that Tubelite’s proposed mark is to be utilized for, among other things,
inkjet materials, the medium upon which the inkjet is to be utilized is completely
different. The “Elite Image” cartridges are viewed as less expensive replacements for
the more highly priced inkjet cartridges associated with generic printing as you would
find on a common printer. The consumers of “Elite Image” products would be individuals
looking to replace a printer cartridge for their printer, facsimile machine or copier. All of
these devices are intended to transfer the written word or image to paper only.

Comparatively, Tubelite’s proposed mark is utilized on products and machinery
associated with sign making typically associated with commercial advertising such as
billboards and banners. The products upon which the proposed mark is used include,
but are not limited to, PVC film, coated papers, photograph media, textile banners, clear
film, and satin. The machinery upon which the proposed mark is used are specialized
devices which utilize the above products.

Next, the proposed mark is also used on products and machinery which are
associated with the screen printing process. Screen printing (also known as silk
screening), is a process by which a sharp edge image created by a stencil is transferred
onto T-shirts, hats, CDs, DVDs, ceramics, glass, polyethylene, polypropylene, paper,
metals, and wood. Silk screening has been called “the most versatile of all printing
processes” by the Printer’s National Environmental Assistance Center.

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Caroline E. Wood, Esq.
Trademark Examining Attorney
Law Office 110
November 20, 2007
Page 6

Lastly, the proposed mark is also used on products and machinery which are
associated with the neon lighting industry. Materials associated with the proposed
mark’s use include tubing, insulators, housings, and related electrical equipment to
power neon signs typically used in commercial advertising. None of these uses of the
proposed marks overlap with any of the registered marks relevant consuming markets.

As evidence by the above, there is a large distinction between the relevant
markets for the marks at issue. Specifically, the general public purchasing a low cost
replacement printer cartridge, facsimile cartridge, toner, or other like product would not
be expected to be the same consumer who would be purchasing Tubelite’s specialized
products for purposes of creating advertising signs, neon signs or screen printing
materials. Further, if a general consumer were to change consuming streams and
venture into Tubelite’s relevant market, such a consumer would be expected to be more
educated and cognizant as to the differences between the two marks and therefore
difference sources of product. More to the point, someone who would be seeking to
purchase Tubelite’s materials and equipment would be expected to exercise a higher
standard of care in purchasing the specialized equipment and materials, as opposed to
a consumer making what amount to a nearly impulse purchase of a replacement printer
cartridge.

The distinction between the relevant consuming markets is further evidenced in
the manner by which the relevant marks are utilized by the registered mark holders and
Tubelite. Tubelite advertises its materials and equipment directly to the public via its
website and catalogs. A careful search the internet has failed to note any such direct
marketing by the registered mark holders. There appears to be no “Elite Image” website
which is directly affiliated with the materials associated with the mark. In fact, the
websites most expected to be affiliated with the “Elite Image” mark, specifically,
www.eliteimageinc.com and www.elite-image.com, are for products not directly affiliated
with the mark holder’s products, to wit: a photography studio and general online catalog.
It appears that all advertising done by the registered mark holder is done secondarily to
its supplying its products directly to the various office supplies stores, who then
advertise the products on their respective websites.

Summary of Arguments
In summary, and for all of the reasons outlined above, Tubelite asserts that its
proposed “Elite” mark is not confusingly similar to the “Elite Image” word marks and the
“E Elite Image” compound mark. Additionally, Tubelite asserts that the respective uses
of the marks and relevant consuming publics of the products do not overlap such that a
likelihood of confusion exists between the proposed mark and registered marks.
Tubelite’s proposed use of the mark is in a limited, specialized field which is not typically
associated with the same secondary sales of products through office supplies stores, as
utilized by the registered mark holders.

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Caroline E. Wood, Esq.
Trademark Examining Attorney
Law Office 110
November 20, 2007
Page 7

RECITATION AND CLASSIFICATION OF SERVICES UNACCEPTABLE
Filed contemporaneously with this response to Office Action Notice, you will find
Tubelite’s revised trademark application (serial number 77094538). Tubelite notes in the
Office Action Notice that suggested changes were requested as to classes 1, 2, 7, 9,
17, and 19. Tubelite notes that its application only identifies intended uses in classes 2,
7, 9, and 16 for its proposed mark. Accordingly, Tubelite has made the changes to the
applicable classes, as directed, and awaits further instructions from you.

SPECIMEN UNACCEPTABLE FOR CLASS 9
Similarly, as requested, Tubelite has attached a more suitable sample for its use
of the proposed mark in class 9. Specifically, Tubelite is attaching a scanned page from
its neon tubing catalog that evidences its use of the proposed mark in conjunction with
the goods identified by class 9.

If you have any questions, comments or concerns, please don’t hesitate to
contact the undersigned. Thank you for your consideration.

Respectfully Submitted,

/s/ Philip D. Storey /s/

Philip D. Storey

PDS/diw

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