Response to Office Action

Section 2(d) Refusal

A. Introduction

The service mark sought to be registered consists of the word mark TOWER RISK MANAGEMENT. The services designated in the application, as amended herein, are: "Wholesale and retail insurance brokerages in the field of property and casualty insurance; insurance claims management services; insurance services, namely, reinsurance underwriting and brokerage services, insurance administration, insurance consultation, risk management services, claims processing, management and adjustment services in the field of reinsurance; insurance claims services, namely, providing multi-line loss adjustment services; in International Class 36"

Registration has been refused under Section 2(d) of the Trademark Act, 15 U.S.C. Section 1052(d), on the ground that the mark sought to be registered resembles the marks of the following registrations as to be likely to cause confusion:

1) Registration No. 1,837,036 for the mark TOWER IS THE PLACE THAT SAYS YES!, designating the services as "consumer lending, consumer credit and credit and life insurance" in International Class 36. The registration is dated May 17, 1994. According to the TARR records of the PTO, the Section 8 (6-year) affidavit was timely filed on May 15, 2000 and accepted. However, based on the TARR records, the renewal application, due on May 17, 2004 (November 17, 2004 with extension) does not appear to have been filed. Accordingly, this registration appears to have expired. (The TARR records show a further "Section 8 (6-year)" affidavit filed on April 30, 2004 filed, however, no indication that a renewal has been timely filed..) However, as TARR still refers to this registration as "Live", without waiving its rights to argue that the registration has indeed expired, applicant argues below against this citation.

2) Registration No. 1,908,764 for the mark TOWER LOAN designating the services as "consumer lending, consumer credit and casualty insurance agency services" in International Class 36. The registration is dated August 1, 1995. According to the TARR records of the PTO, the Section 8 (6-year) affidavit was timely filed on September 22, 2000 and accepted. To date, the renewal application, due on August 1, 2005, does not appear to have been filed.. If no renewal is timely filed, applicant expressly reserves its rights to supplement this filing to reflect the expired status of this registration.

3) Registration No. 2,253,233 for the mark TOWER RISK SERVICES designating the services as "underwriting workers compensation insurance; administration of workers compensation claims; and cost containment and loss prevention in connection with workers compensation" in International Class 36. The registration is dated June 15, 1999. According to the TARR records of the PTO, the Section 8 (6-year) affidavit, due on June 15, 2005, does not appear to have been filed. However, it may still be filed, with extension, until December 15, 2005. If no Section 8 affidavit is timely filed, applicant expressly reserves its rights to supplement this filing to reflect the expired status of this registration.

In view of the arguments set forth below, Applicant respectfully submits that the applied for mark is unlikely to be confused any of the cited registrations. Thus, Applicant asks the Trademark Examining Attorney to reconsider her refusal to register TOWER RISK MANAGEMENT.

B. Argument Concerning Section 2(d) Refusal

In its 1973 Du Pont decision, the Court of Customs and Appeals provides the governing standard for determining likelihood of confusion under §2(d) of the Trademark Act. In re E.I. DuPont de Nemours & Co., 177 U.S.P.Q. 563 (CCPA 1973). Of the thirteen factors enumerated by the court, the most relevant ones in proceedings before the Patent and Trademark Office are the following:

A careful analysis of these factors must lead to the conclusion that there can be no likelihood of confusion between TOWER RISK MANAGEMENT and the marks of the cited registrations.

1. Applicant's Mark Differs from the Cited Marks In Appearance, Sound and Commercial Impression

Any likelihood of confusion analysis must begin by comparing the marks. As correctly noted by the Trademark Examining Attorney, the marks must be compared, in their entireties, for similarities in appearance, sound, connotation, and commercial impression. In the initial comparison, a mark should not be split into its component parts and each part then compared with parts of the asserted conflicting mark. Rather, it is the impression which the marks as a whole create on the average prudent consumer and not the parts thereof which is important. See, e.g. Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005; 212 U.S.P.O. 233 (CCPA 1981) ("It is axiomatic that a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion.")

While the basic rule is that the marks must be compared in their entireties and not dissected, "in articulating reasons for reaching a conclusion on the issue of confusion, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties." In re National Data Corp., 753 F.2d 1056, 224 U.S.P.Q. 749 (Fed. Cir. 1985), accord In re Dixie Restaurants, Inc., 105 F.3d 1405, 41 U.S.P.Q.2d 1531 (Fed. Cir. 1997)

Applying the foregoing standard to the marks at issue supports a finding that Applicant's mark TOWER RISK MANAGEMENT is not likely to be confused with TOWER IS THE PLACE THAT SAYS YES!, TOWER LOAN, or TOWER RISK SERVICES.

a. Appearance

The marks of the first two cited registrations differ considerably from the applied mark TOWER RISK MANAGEMENT. While each includes the term "Tower", each also includes significant other terms.

Turning initially to the cited mark TOWER IS THE PLACE THAT SAYS YES!, the differences between the marks is beyond question. The applied for mark consists of three terms while the cited one consists of seven. The only term that is shared is the term "Tower", however, the addition of the respective other terms more than overcomes any similarities when the marks are viewed as a whole.

Similarly, concerning the cited mark TOWER LOAN, this two word mark is quite difference in appearance to applicant's word mark. There is no term in applicant's mark that resembles "Loan" in any manner. Accordingly, the marks are different in appearance.

Finally, regarding the cited mark TOWER RISK SERVICES, while this mark is closer in appearance to the applied for mark, they still are distinguishable when viewed in their entireties.

The Trademark Examining Attorney suggests that the words other than "Tower" have limited significance because they are descriptive, in the case of applicant's mark and the latter two cited marks or merely part of a slogan, in the case of the first cited mark. While this generalization is to some extent accurate, as recognized by the Trademark Examining Attorney herself, the so-called descriptive portion of the marks cannot be ignored. (This is particularly relevant as a consumer is not privy to the fact that a particular term might be disclaimed in the records of an application, all that the consumer is confronted with is the mark as a whole.) Applicant submits that, when viewed as a whole the overall differences in the appearance of the marks overcomes the fact that each mark contains the term "Tower", thus, avoiding a likelihood of confusion.

b. Sound

The marks also differ significantly in sound. Obviously, applicant's mark, consisting of three terms, sounds different from all of the cited marks. For example, in TOWER IS THE PLACE THAT SAYS YES!, the emphasis will be on the word "yes", particularly, as it is followed by an exclamation point. TOWER LOAN certainly sounds different from TOWER RISK MANAGEMENT; there is absolutely no similarity in sound between the words "Loan" on the one hand and "Risk" or "Management", on the other hand. Finally, the terms "Services" and "Management" are quite different in sound, overcoming any similarity in the pronunciation of the common term "Tower".

Thus, overall, it cannot be denied that the applied for mark and the cited marks differ significantly in sound.

c. Connotation and Commercial Impression

The Trademark Examining Attorney does not specifically discuss the connotation and commercial impression created by the applied mark, on the one hand, and the cited marks on the other,. Rather, she appears to rely on the fact that each mark includes the term "Tower". Applicant respectfully submits that the first cited mark clearly indicate that the services rendered by the mark pertain to loans and the approval thereof. Applicant's mark, instead, suggests that it relates to services rendered by a group of related companies. Thus, these connotations are entirely distinguishable. The final mark TOWER RISK SERVICES suggests that the mark is utilized in connection with services entailing some risk (or avoidance thereof), however, applicant submits that the connotation of the word "risk" (generally defined as the chance of something going wrong), is sufficiently different from the connotation of "Risk Management" (managing risk) to avoid confusion.

Because of these significant differences in the appearance, sound, and commercial impression of the marks at issue, it is clear that an average, prudent consumer would not confuse the applied for mark with the cited ones.

2. The Services Designated in the TOWER RISK MANAGEMENT Application Are Insufficiently Related to the Services Identified

in the Cited Registrations to Create a Likelihood of Confusion

Applicant has applied for "Wholesale and retail insurance brokerages in the field of property and casualty insurance; insurance claims management services; insurance services, namely, reinsurance underwriting and brokerage services, insurance administration, insurance consultation, risk management services, claims processing, management and adjustment services in the field of reinsurance; insurance claims services, namely, providing multi-line loss adjustment services; in International Class 36". It is these services that must be compared with the services listed in the cited registrations to determine a likelihood of confusion. Both Registration No. 1,837,036 for the mark TOWER IS THE PLACE THAT SAYS YES!, and Registration No. 1,908,764 for the mark TOWER LOAN, designate primarily consumer money lending services. Even the insurance services identified refer to insurance services related to consumer credit. Thus, there is no overlap between the services offered under the applied for marks and the services offered by the owner of these registrations.

Registration No. 2,253,233 for the mark TOWER RISK SERVICES, while designating insurance service, is limited to the underwriting and administration of workers compensation claims, an insurance field quite dissimilar to the insurance brokerages and insurance services offered by applicant under its mark.

In addition, the consumers of applicant's services and the services rendered under the mark TOWER RISK SERVICES are likely to be experienced and careful business people, unlikely to select such services on an impulse. Rather, such services are likely to be chosen based on a careful analysis of all relevant factors. Similarly, concerning the "consumer loan services", it is unlikely that a consumer would take out a significant loan without careful thought and consideration. Accordingly, the sophistication of the potential consumer militates against a finding of a likelihood of confusion.

III.. Conclusion

In view of the significant differences between the applied for mark TOWER RISK MANAGEMENT and the cited marks TOWER IS THE PLACE THAT SAYS YES!, TOWER LOAN, and TOWER RISK SERVICES, coupled with the differences in the identification of services (and taking into consideration the sophistication of the consumers), it is respectfully submitted that there can be no likelihood of confusion between TOWER RISK MANAGEMENT and the cited registrations. (Moreover, there appears to be an indication that at least one of the cited registrations has expired.) Accordingly, applicant requests that the Trademark Examining Attorney withdraw her Section 2(d) refusals.