Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 77472852 has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

The Examining Attorney believes that the present application may conflict with U.S. Registration Nos. 3181565 (GREENLEAF HOME LOANS, for "Residential and commercial real estate mortgage brokerage services, namely online real estate mortgage brokerage services") and 3395708 (GREENLEAF, for "Residential and commercial real estate mortgage brokerage services, especially online real estate mortgage brokerage services.").  Both registrations are owned by GreenLeaf Home Loans, Inc.

 

The Examining Attorney has cited In re E.I. du Pont deNemours & Co. 476 F.2d 1357 as the list of factors for determinine whether there is a likelihood of confusion under section 2(d).  These factors include (among others): (1) the types of goods and services used in connection with each mark; (2) buying conditions; (3) fame of the prior mark; (4) strength of the prior mark; (5) actual confusion; (6) potential confusion; and (7) length of concurrent use without actual confusion.

 

Types of goods and services and buying conditions.  The Applicant desires to register GREEN LEAF in connection with "Real estate rental services, namely, rental of residential housing; Rental of apartments in an apartment community."  The Applicant believes that no likelihood of confusion exists because the services described in the prior registrations and the services described in the present application are quite different.  Specifically, the services in the prior registrations are purely related to the lending of money, i.e, brokering mortgages, for residential or commercial property.  The Applicant's services are the service of renting out apartments in an an actual physical apartment complex.  The Applicant's services are not related to mortages, lending or the sale of real estate.  The Applicant's services are consumed by customers who are not seeking a mortgage in connection with the purchase of real estate, but instead are simply renting apartments. 

 

Fame and strength of the prior mark.  After thorough online searching using Google, the Applicant finds little evidence to suggest that the GreenLeaf Home Loans, Inc. marks are at all famous.  There appear to be multiple users of the name "Greenleaf Mortgage" other than the prior registrant.  No web site offering or advertising the prior registrant's services can be found. Virtually the only search results relevant to this matter is a phone book listing/address and a reference to a legal suit naming the prior registrant.

 

Actual and potential confusion and length of concurrent use without actual confusion. The Applicant has been using the Green Leaf mark since October 31, 2007 and is not aware of any actual confusion to date.  The prior registrant is identified as a California corporation.  A search of the California Secretary of State's corporate database shows that GreenLeaf Home Loans, Inc. is currently suspended . . and therefore is not legally able to conduct business.  See evidence attached.  This suggests that there is little to no chance that the prior registrant will use the mark in the future.  And since the services offered by the Applicant and the prior registrant are different, the Applicant believes that it is extremely unlikley that any future confusion can occur.

The Applicant believes that there is little likelihood for confusion between the Applicant's mark and the cited registrations and therefor submits that the present application is in condition for publication and registration, and such action is respectfully requested.

EVIDENCE
Evidence in the nature of A screen shot of the CA Secretary of State's corporation database showing that the prior registrant is suspended. has been attached.
Original PDF file:
evi_208177163234-201733254_._CA_Suspension_2009-09-25.pdf
Converted PDF file(s) (1 page)
Evidence-1

SIGNATURE(S)
Response Signature
Signature: /Mark B. James/     Date: 09/25/2009
Signatory's Name: Mark B. James
Signatory's Position: Attorney

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 77472852
Internet Transmission Date: Fri Sep 25 20:25:46 EDT 2009
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20090925202546
059823-77472852-46086947fc511bbc66f5262a
4be36fe89-N/A-N/A-20090925201733254693