Serial No.: 76/706,745 TRADEMARK
Docket No.: 114901.3008
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

IN RE APPLICATION OF: § INT’L CLASS NOS.: 1, 4, 37 and 42
Western International Gas & §
Cylinders, Inc. §
§
SERIAL NO.: 76/706,745 § LAW OFFICE: 101
§
FILED: March 11, 2011 § EXAMINING ATTY.: Steven M. Perez
§
MARK: SAFETY FIRST WESTERN (and § ATTY. DKT. NO.: 114901.3008
Design) §
Certificate of TEAS Transmission Under 37 CFR 2.197
Commissioner for Trademarks I hereby certify that this correspondence (along with any paper referred to
P. O. Box 1451 as being attached or enclosed) is being transmitted to the U.S. Patent and
Trademark Office via the Office Trademark Electronic Application System
Alexandria, VA 22313-1451 (TEAS) in accordance with 37 CFR 2.195(a)(2).

Dated: October 14, 2015 Name: Anne L. Buckmaster
Signature: /Anne L. Buckmaster/

AMENDMENT AND RESPONSE TO OFFICE ACTION MAILED ON APRIL 14, 2015
Dear Sir:
Applicant files this response to the Office Action mailed on April 14, 2015, with a six
month period to respond set to expire on October 14, 2015. Applicant respectfully requests
reconsideration of the application in view of the following amendments and remarks:
AMENDMENTS
Per Examining Attorney’s suggestions, Applicant amends its identification of goods in
Int’l Class 1, as follows:
Class 1 Compressed gases and gas mixtures for industrial use other than as
fuel, namely, stabilized methylacetylene and propadiene mixtures,
propylene and acetylene gas, oxygen, breathing air, nitrogen,
argon, helium, hydrogen, carbon dioxide, and tri-mix and specialty
gas mixtures combining the foregoing; propylene and acetylene
gas used in welding and cutting

Applicant amends its Application to claim acquired distinctiveness under Section 2(f),
without prejudice, as follows:
The SAFETY FIRST WESTERN (and Design) mark has become distinctive of
goods and/or services through Applicant’s substantially exclusive and continuous
use in commerce for at least five (5) year immediately before the date of this
statement.

The foregoing amendments have been made in the proper section of the response.

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Serial No.: 76/706,745 TRADEMARK
Docket No.: 114901.3008
REMARKS
The Examining Attorney continues to refuse to register Applicant’s Mark SAFETY

FIRST WESTERN (and Design) in Int’l Classes 1, 4, 37 and 42 (“Applicant’s Mark”)
under Section 2(d) based on a perceived likelihood of confusion with U.S. Trademark
Registration No. 3959434 for WESTERN GAS PARTNERS, LP (and Design) in Int’l Classes 4,
36, 40 and 42, owned by Western Gas Partner, LP; U.S. Trademark Registration No. 3959433
for WESTERN GAS PARTNERS, LP in Int’l Classes 4, 36, 40 and 42, owned by Western Gas
Partners, LP (collectively, WGP’s marks”); and U.S. Trademark Registration No. 1313085 for
WESTERN ENTERPRISES in Int’l Classes 6 and 9, owned by Western/Scott Fetzer Company
(“WSF’s mark”). Further, the Examining Attorney has also objected to Applicant’s
identification of goods in Int’l Class 1 as “indefinite;” and its previous specimens for Int’l
Classes 1 and 4 as “illegible.”
Applicant respectfully traverses the objections and asserts that there is no likelihood of
confusion between Applicant’s Mark, and WGP’s or WSF’s Marks, as set forth below.
I. IDENTIFICATION OF GOODS IN INT’L CLASS 1
The Examining Attorney has objected to Applicant’s identification of goods in Int’l Class
1 as “indefinite” and has suggested clarification, as follows:
Class 1 Compressed gases and gas mixtures for industrial use other than as
fuel, namely, stabilized methylacetylene and propadiene mixtures,
propylene and acetylene gas, oxygen, breathing air, nitrogen,
argon, helium, hydrogen, carbon dioxide, and tri-mix and specialty
gas mixtures combining the foregoing; propylene and acetylene
gas used in welding and cutting

Per Examining Attorney’s suggestion, Applicant has amended its goods in Int’l Class 1,
as shown above.
Applicant respectfully requests that its identification of goods in Int’l Class 1 be
accepted.
II. SUBSTITUTE SPECIMENS FOR INT’L CLASSES 1 AND 4
The Examining Attorney has objected to Applicant’s previous specimens for Int’l Class 1
and 4 as “illegible.”

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Serial No.: 76/706,745 TRADEMARK
Docket No.: 114901.3008
Applicant submits the attached substitute specimen for Int’l Classes 1 and 4, showing the
Mark as used in commerce in connection with the goods identified in the Application, attached
hereto as Exhibit A. Suitable specimens for goods include labels, tags, or container for the
goods, or a display associated with the goods that show use of the mark in the actual sale of the
goods. See TMEP §904.03. In particular, Applicant’s substitute specimen is a photograph of a
product container and a close-up image of the product container showing its Mark in connection
with Int’l Class 1 for “compressed gases and gas mixtures for industrial use other than as fuel,
namely, stabilized methylacetylene and propadiene mixtures, propylene and acetylene gas,
oxygen, breathing air, nitrogen, argon, helium, hydrogen, carbon dioxide, and tri-mix and
specialty gas mixtures combining the foregoing; propylene and acetylene gas used in welding
and cutting,” as amended, and with Int’l Class 4 for “fuel gases, namely, acetylene, propylene,
hydrogen, and a mixture of stabilized methyacetylene and propadiene.” Both the photograph and
the close-up image show use of the Mark in the actual sale of the goods.
In support of its substitute specimen for Int’l Classes 1 and 4, Applicant also submits a
Declaration Under 37 C.F.R. § 2.20 In Support of Substitute Specimen, attached hereto as
Exhibit B.
Applicant respectfully requests that its substitute specimens for Int’l Classes 1 and 4 be
accepted.
III. LIKELIHOOD OF CONFUSION UNDER SECTION 2(d)

The Examining Attorney continues to refuse to register Applicant’s Mark in
Int’l Classes 1, 4, 37 and 42 under Section 2(d) based on a perceived likelihood of confusion
with WGP’s marks in Int’l Classes 4, 36, 40 and 42 and WSF’s mark in Int’l Classes 6 and 9.
A. SAFETY FIRST WESTERN (and Design) Mark Is a Well-Known Mark
Such That Confusion Is Unlikely

Applicant respectfully traverses the rejection and asserts that its Mark has
become so well-known in connection with the goods and services in in Int’l Classes 1, 4, 37 and
42 such that confusion with WGP’s marks and/or WSF’s mark is unlikely. See Declaration of
Denise C. Haugen Under 37 C.F.R. § 2.20 In Support of Registration on the Principal Register

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Serial No.: 76/706,745 TRADEMARK
Docket No.: 114901.3008
Under Section 2(f), dated October 13, 2015, attached hereto as Exhibit C. Famous marks enjoy
broad legal protection, because they are “more likely to be remembered and associated in the
public mind.” Recot, Inc. v. Becton, 214 F.3d 1322, 1327 (Fed. Cir. 2000). When present, the
fame of the mark is a “dominant factor in the likelihood of confusion analysis for a famous
mark.” Id. at 1328.
In the interest of furthering the prosecution to publication, Applicant has amended its
Application to claim acquired distinctiveness under Section 2(f): “SAFETY FIRST WESTERN
(and Design) Mark has become distinctive of the goods and/or services through Applicant’s
substantially exclusive and continuous use in commerce for at least five (5) years immediately
before the date of this statement.”
i. Acquired Distinctiveness Based Upon Five Years Use

Applicant’s Mark has acquired distinctiveness based upon at least five (5) years
use of its Mark in connection with goods and services in Int’l Classes 1, 4, 37 and 42. In
particular, Applicant’s Mark has become distinctive through Applicant’s “substantially exclusive
and continuous use [of the Mark] in commerce” in connection with the goods and services in
Int’l Classes 1, 4, 37 and 42 for at least the five years immediately before the date of this
statement. (See Exhibit C, at ¶2). See also TMEP § 1212.05(d). Applicant has used its Mark in
commerce in connection with the goods and services in Int’l Classes 1, 4, 37 and 42 for at least
five (5) years (i.e., since at least as early as 2008). (Id. at ¶2; see also Application). Such proof
of at least five years use in commerce may be accepted as prima facie evidence that the Mark has
acquired distinctiveness in connection with the goods and services. See TMEP § 1212.05.
ii. Acquired Distinctiveness Based Upon Actual Evidence

In the alternative, Applicant’s Mark has acquired distinctiveness through seven
(7) years use of its Mark in connection with the goods and services in Int’l Classes 1, 4, 37 and
42, and large scale advertising and marking of the Mark. The following factors are relevant in
determining whether a mark has acquired distinctiveness:
(1) long use of the mark in commerce, see TMEP § 1212.06(a) (citing In re Uncle
Sam Chemical Co., Inc., 229 USPQ 233 (TTAB 1986) (holding that term SPRAYZON
for “cleaning preparations and degreasers for industrial and institutional use” had

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Docket No.: 114901.3008
acquired distinctiveness in § 2(f) claim because applicant had submitted declaration of its
president supporting sales figures and attesting to over eighteen years of substantially
exclusive and continuous use);

(2) large scale marketing and advertising expenditures, see TMEP § 1212.06(b); and

(3) company or customer affidavits or declarations that assert recognition of the mark
as a source indicator, see TMEP § 1212.06(c).

Applicant has used its Mark substantially exclusively and continuously in interstate
commerce in its current format since at least as early as 2008 and since at least as early as 1996
in a similar version. (See Exhibit C, at ¶2). Applicant’s Mark has become well-known and
distinctive of the goods and services in Int’l Classes 1, 4, 37 and 42 through Applicant’s
substantially exclusive and continuous use of the Mark in commerce. (See Exhibit C, at ¶3).
From January 1, 2009 to the present, Applicant has expended over $310,000 on the
marketing and advertising of its Mark in connection with the goods and services in Int’l Classes
1, 4, 37 and 42. (See Exhibit C, at ¶4).
Applicant’s marketing and advertising methods include internet marketing, direct
mailing, and participation in industry conferences. (See Exhibit C, at ¶5). Applicant’s internet
marketing includes regular postings on Western’s website, and advertising in various online
industry magazines. (Id. (citing http://www.westernintl.com)). Applicant actively promotes its
Mark in connection with the goods and services in Int’l Classes 1, 4, 37 and 42 at various
industry conferences throughout the United States. (See Exhibit C, at ¶6).
From 2008 to the present, Applicant has generated over $600 million in sales revenues
under its Mark in connection with the goods and services in Int’l Classes 1, 4, 37 and 42. (See
Exhibit C, at ¶7).
As a result of Applicant’s substantially exclusive and continuous use of its Mark in
commerce for seven years in its current format, consumers have come to associate the Mark
with the goods and services in Int’l Classes 1, 4, 37 and 42 sold by Western International Gas &
Cylinders, Inc. (See Exhibit C, at ¶8). Therefore, Applicant’s Mark has acquired distinctiveness
and become well-known through seven years of use and advertising of the Mark in its current
format and over fifteen years use of a similar mark. (Id. at ¶9).

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Serial No.: 76/706,745 TRADEMARK
Docket No.: 114901.3008
B. No Likelihood of Confusion – WESTERN ENTERPRISES

The Examining Attorney continues to refuse to register Applicant’s Mark in
Int’l Classes 1, 4, 37 and 42 under Section 2(d) based on a perceived likelihood of confusion
with WSF’s mark in Int’l Classes 6 and 9. Applicant respectfully asserts that there is no
likelihood of confusion between Applicant’s Mark and WSF’s mark. A number of factors are
relevant when determining whether a likelihood of confusion exists, including the following:
(1) Similarity of the marks as to appearance, connotation, sound
and commercial impression;
(2) Relatedness of the goods and services with which the marks are
being used;
(3) Similarity of established channels of trade;
(4) Sophistication of the purchasers of the goods or services; and
(5) Number and nature of similar marks on similar goods.

See TMEP § 1207.01 (citing In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361
(C.C.P.A. 1973)). The pertinent factors are discussed below:
i. Significantly Different Goods and Services
Consumer confusion is also unlikely due to the significant difference between the goods
and services of the two companies. See, e.g., Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73
USPQ2d 1350 (Fed. Cir. 2004) (holding cooking classes and kitchen textiles not related).
WSF’s registration is for “fittings and accessories for industrial and medical compressed gas
storage…” in Int’l Classes 6 and 9. In contrast, Applicant’s application is for fuel gases,
compressed gases, maintenance of gas and liquid cylinders, and refilling cylinders in Int’l
Classes 1, 4, 37 and 42. Therefore, there is no likelihood of confusion due to the significant
difference in goods and services provided by the parties under their respective marks, and
Applicant respectfully requests the withdrawal of the rejection. See TMEP § 1207.01(a)(i).
ii. Different Commercial Impressions

In relation to their respective goods and services, Applicant’s Mark and WSF’s
WESTERN ENTERPRISES mark convey significantly different connotations and commercial
impressions. The Examining Attorney asserts that the presence of the term “Western” in each of

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Serial No.: 76/706,745 TRADEMARK
Docket No.: 114901.3008
these marks provides evidence of a likelihood of confusion. However, even marks with a term in
common are not likely to confuse consumers when:
(1) the marks in their entireties convey significantly different commercial
impressions; or

(2) the matter common to the marks is not likely to be perceived by purchasers as
a distinguishing source because it is merely descriptive or diluted.

See TMEP § 1207.01(b)(ii) and (iii). See In re Bed & Breakfast Registry, 791 F.2d 157 (Fed.
Cir. 1986) (holding BED & BREAKFAST REGISTRY for making lodging reservations for
others in private homes not likely to be confused with BED & BREAKFAST
INTERNATIONAL for room booking agency services); see also In re Electrolyte Labs. Inc.,
929 F.2d 645, 647 (Fed. Cir. 1990) (holding K+ (and Design) for dietary potassium supplement
not likely to be confused with K+EFF (stylized) for dietary potassium supplement).
Furthermore, the meaning or connotation of a mark must be determined in relation to the named
goods or services. See TMEP § 1207.01(b)(v).
Applicant’s Mark consists of a prominent design of a “W,” a circle design and the phrase
“Safety First.” The term “Western” is not a dominant portion of Applicant’s Mark. In contrast,
the term “Western” is the dominant portion of WSF’s mark. In other words, Applicant’s Mark
and WSF’s mark in their entirety covey significantly different commercial impressions.
Further, the term “Western” is a commonly used in trademarks. A search of the TESS
database identified 1111 live trademark applications/registrations for marks including the term
“Western.” See Exhibit D, attached hereto, a true and correct copy of a printout of the first fifty
(50) records from the TESS database. The term “Western” by itself and as a dominant portion of
a mark is quite diluted, such that any potential distinctiveness of a “Western” mark depends
primarily on other more dominant components in the mark. In other words, the term “Western”
is not likely to be perceived by purchasers as a distinguishing source because it is merely diluted.
Accordingly, in relation to their respective goods and services, Applicant’s Mark and
WSF’s mark convey significantly different connotations and commercial impressions and the
term “Western” is merely diluted such that consumers are not likely to be confused by the two
marks.

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Serial No.: 76/706,745 TRADEMARK
Docket No.: 114901.3008
iii. Sophisticated Consumers Are Unlikely to Be Confused
Applicant’s consumers are purchasers seeking fuel gases, compressed gases, maintenance
of gas and liquid cylinders, and refilling cylinder services for commercial projects on behalf of
their companies or employers, and are likely to make careful decisions when choosing such
goods services. Further, WSF’s consumers are purchasers seeking fittings and accessories for
industrial and medical compressed gas storage, who generally take care in selecting such goods.
These circumstances, which involve care in purchasing, minimize the likelihood of confusion.
See TMEP § 1207.01(d)(vii). Further, these consumers are not likely to purchase either
company’s goods and services as an impulse buy (e.g., candy bars, pet treats) due to the
significantly higher cost of commercial projects and the care required in selecting fittings and
accessories.
C. No Likelihood of Confusion – WESTERN GAS PARTNERS, LP

The Examining Attorney continues to refuse to register Applicant’s Mark in
Int’l Classes 1, 4, 37 and 42 under Section 2(d) based on a perceived likelihood of confusion
with WGP’s marks in Int’l Classes 4, 36, 40 and 42. Applicant respectfully asserts that there is
no likelihood of confusion between Applicant’s Mark and WGP’s marks. The pertinent du Pont
factors are discussed below:
i. Significantly Different Goods and Services
Consumer confusion is also unlikely due to the significant difference between the goods
and services of the two companies. WGP’s registrations are for “lubricants and fuels…and
industrial oils and greases” in Int’l Class 4, “insurance and financial services…” in Int’l Class
36, “material treatment services…” in Int’l Class 40 and “computer services…” in Int’l Class 42.
In contrast, Applicant’s application is for fuel gases, compressed gases, maintenance of gas and
liquid cylinders, and refilling cylinders in Int’l Classes 1, 4, 37 and 42, as discussed above.
Therefore, there is no likelihood of confusion due to the significant difference in goods and
services provided by the parties under their respective marks, and Applicant respectfully requests
the withdrawal of the rejection. See TMEP § 1207.01(a)(i).

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ii. Different Commercial Impressions

In relation to their respective goods and services, Applicant’s Mark and WGP’s
WESTERN GAS PARTNERS, LP marks convey significantly different connotations and
commercial impressions. Similar to WSF’s WESTERN ENTERPRISE mark, the Examining
Attorney asserts that the presence of the term “Western” in each of these marks provides
evidence of a likelihood of confusion.
As discussed above, Applicant’s Mark consists of a prominent design of a “W,” a circle
design and the phrase “Safety First.” The term “Western” is not a dominant portion of
Applicant’s Mark. In contrast, the term “Western” is the dominant portion of WGP’s marks. In
other words, Applicant’s Mark and WGP’s marks in their entirety covey significantly different
commercial impressions.
Accordingly, in relation to their respective goods and services, Applicant’s Mark and
WGP’s marks convey significantly different connotations and commercial impressions and the
term “Western” is merely diluted such that consumers are not likely to be confused by the two
marks.
iii. Sophisticated Consumers Are Unlikely to Be Confused
Applicant’s consumers are purchasers seeking fuel gases, compressed gases, maintenance
of gas and liquid cylinders, and refilling cylinders for commercial projects on behalf of their
companies or employers, and are likely to make careful decisions when choosing such goods
services. Further, WGP’s consumers are purchasers seeking lubricants, industrial oils and
greases, insurance and financial services, material treatment services and/or computer services,
who generally take care in selecting such goods and services. These circumstances, which
involve care in purchasing, minimize the likelihood of confusion. See TMEP § 1207.01(d)(vii).
Further, these consumers are not likely to purchase either company’s goods and services as an
impulse buy (e.g., candy bars, pet treats) due to the significantly higher cost of commercial
projects and the nature of the goods and services (e.g., used for a long duration).
Consequently, pursuant to Section 2(f) of the Lanham Act, Applicant respectfully
requests withdrawal of the Examining Attorney’s refusal to register the Applicant’s Mark on the
Principal Register.

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Serial No.: 76/706,745 TRADEMARK
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CONCLUSION
Applicant respectfully requests that its Application be accepted, as amended, and be
allowed to proceed to publication. Applicant believes that no fees are due with this filing.
However, if it is incorrect, Applicant hereby authorizes the Commissioner to charge any fees
required by this filing to Deposit Account No. 07-0153 (114901-3008).

Respectfully submitted,

Date: October 14, 2015 /Teresa J. Lechner-Fish/
Teresa J. Lechner-Fish
Registration No. 62,667
GARDERE WYNNE SEWELL LLP
2000 Wells Fargo Plaza
1000 Louisiana Street
Houston, TX 77002-5011
(713) 276-5525 (Telephone)
(713) 276-6525 (Facsimile)
Email: [email protected]

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