PRECISION DEVICES and PDI

In 1989, Chris and Tom Sokol, spun off from their father’s Sokol Crystal Products (SCP) company, which designed and produced innovative quartz crystals and quartz crystal filters and oscillator. They named their company Precision Devices, Inc., and began selling quartz crystals quartz filters and oscillators under their PRECISION DEVICES name and PDI designation. In 1995, they asked Attorney Sokol to file federal trademark applications for both marks.

When the Trademark Office allowed and published the PRECISION DEVICES application, Precision Trading Corp. opposed the application. (Opposition No. 91/105,206). Precision Trading asserted its prior use and Registration Nos. 1,572,921 and 1,948,728 for PRECISION for television sets, VCRs, radios, audio cassette players, CD players and stereo receivers, amplifiers and speakers. When Attorney Sokol pointed out various deficiencies in these registrations, Precision Trading did not respond, and the TTAB dismissed the Opposition with prejudice. Precision Devices was issued U.S. Registration No. 2,143,834 for electronic components, namely, quartz crystals, and quartz filters and oscillators, sold to manufacturers and distributors that sell to manufacturers.

The Trademark Office initially refused the PDI application based on a likelihood of confusion with Power Dynamics, Inc.’s preexisting Registration No.: 1,644,319 for PDI for electrical filters. Attorney Sokol overcame this refusal by petitioning to cancel the existing ‘319 registration based on the term “electrical filter” being overbroad. (Cancelation No. 25,130). Power Dynamics signed a Consent Agreement that was then used as persuasive evidence to overcome the refusal. Precision Devices was issued U.S. Registration No. 1,988,372 for quartz crystals and quartz crystal oscillators, and U.S. Registration No. 2,200,869 for quartz crystal filters.

Filed Under

Overcoming Likelihood of Confusion Rejections by the USPTO and Competitors, Overcoming Descriptiveness Rejections by the USPTO

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