| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 77875736 |
| LAW OFFICE ASSIGNED | LAW OFFICE 116 |
| MARK SECTION (current) | |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| LITERAL ELEMENT | ALERT |
| COLOR(S) CLAIMED (If applicable) |
Color is not claimed as a feature of the mark. |
| DESCRIPTION OF THE MARK (and Color Location, if applicable) |
The mark consists of the word "ALERT" in which the "A" is represented by a house design. |
| MARK SECTION (proposed) | |
| MARK FILE NAME | \\TICRS\EXPORT11\IMAGEOUT 11\778\757\77875736\xml1\ ROA0002.JPG |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| LITERAL ELEMENT | ALERT |
| COLOR MARK | NO |
| DESCRIPTION OF THE MARK (and Color Location, if applicable) |
The mark consists of the word "ALERT" in which the "A" is represented by a house design. |
| PIXEL COUNT ACCEPTABLE | YES |
| PIXEL COUNT | 915 x 269 |
| ARGUMENT(S) | |
|
Applicant’s counsel acknowledges receipt of the Office Action mailed March 3, 2010. After careful consideration of its contents and correspondence with Applicant, counsel responds as follows.
REMARKS Pursuant to the Examining Attorney’s request, Applicant has amended its recitation of services in order to comply with Office requirements and to accurately reflect use of the mark. With this electronic submission, authorization was provided to debit the Deposit Account of the undersigned, No. 19-4880, in the amount of $325 for government filing fee associated with the addition of International Class 35 to the application. The Examining Attorney has objected to Applicant’s specimen in support of the education services as defined in International Class 41. The screen shot originally filed with the application references applicant’s public education campaign which promotes awareness concerning loan modification scams, and it is respectfully submitted that the specimen originally filed with the application should now apply to the Class 35 services as added to the application. With regard to applicant’s recitation of services in International Class 41, submitted herewith are two examples of applicant’s education services rendered in the context of PowerPoint presentations for applicant’s classes, seminars and workshops, etc. In support of the specimen for Class 41, submitted herewith is a Substitute Specimen Declaration executed by applicant in support of the referenced specimen. The Examining Attorney has requested an amendment to the drawing of the mark as submitted with the application. Submitted herewith is a substitute drawing that does not include the “TM” designation. Lastly, the Examining Attorney has referenced a prior pending application, Serial No. 77/602,134 for the word mark RATE ALERT pending for “mortgage information and lending services” in International Class 36. The Examiner has stated that if the application matures to registration, it could serve as a bar to the instant application. Applicant believes that in this instance, the prior pending application for the mark RATE ALERT is a distinctly different mark from applicant’s mark which is comprised of the term ALERT in a distinctive design. It is respectfully submitted that a side-by-side comparison of the marks RATE ALERT and ALERT (Design) does not create a likelihood of confusion. In order for there to be a likelihood of confusion between two marks, it must be shown that there is more than a theoretical possibility of confusion. There must be a substantial likelihood of confusion. A likelihood of confusion cannot be predicated on dissection of a mark; that is, on only part of a mark. Similarity with respect to any one element (sound, appearance or meaning) does not automatically evidence a likelihood of confusion finding. While the marks in this case share common elements, the appearance and design element connected to applicant’s mark creates an entirely distinct meaning and commercial impression, especially when taking into account the nature of applicant’s services. Applicant’s mark which includes a highly distinctive design element would assist consumers in distinguishing between the two marks. See, Steve’s Ice Cream v. Steve’s Famous Hot Dogs, 3 USPQ 2d 1477, 1478-79 (TTAB 1987). (Finding “STEVE’S” for ice cream not confusingly similar to STEVE’S & Design for hot dogs where the design element established the distinctive commercial impression capable of distinguishing the marks.) Based on the comparison of the marks alone, it is believed there is no likelihood of confusion in this case. However, the second prong of any likelihood of confusion analysis includes an analysis of the goods or services connected to the respective marks. In this case, prior pending applicant’s services for mortgage information and lending services are not services relating to applicant’s ALERT & Design mark. Applicant in this case Neighborhood Reinvestment Corporation is the entity which owns and promotes the well-known NEIGHBORX AMERICA enterprise, a national non-profit organization created by the U.S. Congress to provide financial support, technical assistance and training for community-based revitalization efforts. The Examining Attorney will note on the specimen in particular submitted in support of the Class 41 services that the NEIGHBORWORX AMERICA mark is prominently displayed. Under Trademark Act Section 2(d), goods and services of the parties must be closely related to support a finding of likelihood of confusion. Amcor Inc. v. Amcor Industries, Inc., 210 USPQ 70, 78 (TTAB 1981). Even when the marks are nearly identical, which is not the case at hand, if the goods or services of the respective marks are not closely related or directly competitive, then confusion is not likely. See, Quartz Radiation Corp. v. Comm/Scope Co., 1 USPQ2d 1668 (TTAB 1986). The services in this case are not proximate to one another or closely related or marketed in such a manner as to preclude any “mistaken belief” about the origin of the services. Therefore, confusion is not likely in this instance. See, Local Trademarks Inc. v. Handy Boys, Inc., 16 USPQ2d 1156 (TTAB 1990). Even if the Examining Attorney assumes there is some overlap between the respective channels of trade of the applicant in the cited prior pending application, the primary issue for the Examining Attorney is whether there is a significant overlap between applicant’s services and those of the cited prior pending applicant such that consumers would have reason to believe that applicant’s service emanate from those of the prior pending applicant. Generally, where the channels of trade differ and do not lead to the same targeted purchaser, there is less likelihood of confusion. Even in the event there were some market overlap, the mere movement of goods or services through the same overlapping channels would not necessarily result in likelihood of confusion. If an overlap is considered de minimus, then a likelihood of confusion should be viewed as unlikely. See, Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 21 USPQ2d 1388 (Fed. Cir. 1992). Based on the foregoing, it is respectfully requested that the Examining Attorney withdrawn reference to the prior pending application and allow applicant’s mark to publish for opposition purposes at the earliest possible date. If any further amendments are required, the Examining Attorney should contact the undersigned at her earliest convenience. |
|
| GOODS AND/OR SERVICES SECTION (041)(current) | |
| INTERNATIONAL CLASS | 041 |
| DESCRIPTION | |
| Education services in the field of mortgage loans; public education campaign designed to educate homeowners about loan modification scams and how to report them | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 10/26/2009 |
| FIRST USE IN COMMERCE DATE | At least as early as 10/26/2009 |
| GOODS AND/OR SERVICES SECTION (041)(proposed) | |
| INTERNATIONAL CLASS | 041 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Education services, namely, providing classes, seminars, workshops, media interviews, exhibits in the field of mortgage loans | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 10/26/2009 |
| FIRST USE IN COMMERCE DATE | At least as early as 10/26/2009 |
| STATEMENT TYPE | "The substitute (or new, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. |
| SPECIMEN FILE NAME(S) | |
| ORIGINAL PDF FILE | SPU0-12411614-091533340_._S14286_Cl_41_-_spec_1.pdf |
| CONVERTED PDF FILE(S) (16 pages) |
\\TICRS\EXPORT11\IMAGEOUT11\778\757\77875736\xml1\ROA0003.JPG |
| \\TICRS\EXPORT11\IMAGEOUT11\778\757\77875736\xml1\ROA0004.JPG | |
| \\TICRS\EXPORT11\IMAGEOUT11\778\757\77875736\xml1\ROA0005.JPG | |
| \\TICRS\EXPORT11\IMAGEOUT11\778\757\77875736\xml1\ROA0006.JPG | |
| \\TICRS\EXPORT11\IMAGEOUT11\778\757\77875736\xml1\ROA0007.JPG | |
| \\TICRS\EXPORT11\IMAGEOUT11\778\757\77875736\xml1\ROA0008.JPG | |
| \\TICRS\EXPORT11\IMAGEOUT11\778\757\77875736\xml1\ROA0009.JPG | |
| \\TICRS\EXPORT11\IMAGEOUT11\778\757\77875736\xml1\ROA0010.JPG | |
| \\TICRS\EXPORT11\IMAGEOUT11\778\757\77875736\xml1\ROA0011.JPG | |
| \\TICRS\EXPORT11\IMAGEOUT11\778\757\77875736\xml1\ROA0012.JPG | |
| \\TICRS\EXPORT11\IMAGEOUT11\778\757\77875736\xml1\ROA0013.JPG | |
| \\TICRS\EXPORT11\IMAGEOUT11\778\757\77875736\xml1\ROA0014.JPG | |
| \\TICRS\EXPORT11\IMAGEOUT11\778\757\77875736\xml1\ROA0015.JPG | |
| \\TICRS\EXPORT11\IMAGEOUT11\778\757\77875736\xml1\ROA0016.JPG | |
| \\TICRS\EXPORT11\IMAGEOUT11\778\757\77875736\xml1\ROA0017.JPG | |
| \\TICRS\EXPORT11\IMAGEOUT11\778\757\77875736\xml1\ROA0018.JPG | |
| ORIGINAL PDF FILE | SPU0-12411614-091533340_._S14286_Cl_41_-_spec_2.pdf |
| CONVERTED PDF FILE(S) (11 pages) |
\\TICRS\EXPORT11\IMAGEOUT11\778\757\77875736\xml1\ROA0019.JPG |
| \\TICRS\EXPORT11\IMAGEOUT11\778\757\77875736\xml1\ROA0020.JPG | |
| \\TICRS\EXPORT11\IMAGEOUT11\778\757\77875736\xml1\ROA0021.JPG | |
| \\TICRS\EXPORT11\IMAGEOUT11\778\757\77875736\xml1\ROA0022.JPG | |
| \\TICRS\EXPORT11\IMAGEOUT11\778\757\77875736\xml1\ROA0023.JPG | |
| \\TICRS\EXPORT11\IMAGEOUT11\778\757\77875736\xml1\ROA0024.JPG | |
| \\TICRS\EXPORT11\IMAGEOUT11\778\757\77875736\xml1\ROA0025.JPG | |
| \\TICRS\EXPORT11\IMAGEOUT11\778\757\77875736\xml1\ROA0026.JPG | |
| \\TICRS\EXPORT11\IMAGEOUT11\778\757\77875736\xml1\ROA0027.JPG | |
| \\TICRS\EXPORT11\IMAGEOUT11\778\757\77875736\xml1\ROA0028.JPG | |
| \\TICRS\EXPORT11\IMAGEOUT11\778\757\77875736\xml1\ROA0029.JPG | |
| SPECIMEN DESCRIPTION | Photocopies of PowerPoint presentations for applicant's classes, seminars and workshops. |
| GOODS AND/OR SERVICES SECTION (035)(class added) | |
| INTERNATIONAL CLASS | 035 |
| DESCRIPTION | |
| Public education campaign to promote awareness among homeowners about loan modification scams and how to report them | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 10/26/2009 |
| FIRST USE IN COMMERCE DATE | At least as early as 10/26/2009 |
| PAYMENT SECTION | |
| NUMBER OF CLASSES | 1 |
| FEE PER CLASS | 325 |
| TOTAL FEES DUE | 325 |
| SIGNATURE SECTION | |
| ORIGINAL PDF FILE | HS_12411614-091533340_._S14286_executed_substitute_specimen_declaration.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT11\IMAGEOUT11\778\757\77875736\xml1\ROA0030.JPG |
| SIGNATORY'S NAME | Rutledge Simmons |
| SIGNATORY'S POSITION | Deputy General Counsel |
| RESPONSE SIGNATURE | /Jody H. Drake/ |
| SIGNATORY'S NAME | Jody H. Drake |
| SIGNATORY'S POSITION | Attorney for Applicant, DC bar member |
| DATE SIGNED | 09/01/2010 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Sep 01 09:30:04 EDT 2010 |
| TEAS STAMP | USPTO/ROA-XX.X.XXX.XX-201 00901093004244405-7787573 6-4707174e72cfc1f67c4fdea 942f42d450-DA-8033-201009 01091533340218 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
Applicant’s counsel acknowledges receipt of the Office Action mailed March 3, 2010. After careful consideration of its contents and correspondence with Applicant, counsel responds as follows.
REMARKS
Pursuant to the Examining Attorney’s request, Applicant has amended its recitation of services in order to comply with Office requirements and to accurately reflect use of the mark. With this electronic submission, authorization was provided to debit the Deposit Account of the undersigned, No. 19-4880, in the amount of $325 for government filing fee associated with the addition of International Class 35 to the application.
The Examining Attorney has objected to Applicant’s specimen in support of the education services as defined in International Class 41. The screen shot originally filed with the application references applicant’s public education campaign which promotes awareness concerning loan modification scams, and it is respectfully submitted that the specimen originally filed with the application should now apply to the Class 35 services as added to the application.
With regard to applicant’s recitation of services in International Class 41, submitted herewith are two examples of applicant’s education services rendered in the context of PowerPoint presentations for applicant’s classes, seminars and workshops, etc. In support of the specimen for Class 41, submitted herewith is a Substitute Specimen Declaration executed by applicant in support of the referenced specimen.
The Examining Attorney has requested an amendment to the drawing of the mark as submitted with the application. Submitted herewith is a substitute drawing that does not include the “TM” designation.
Lastly, the Examining Attorney has referenced a prior pending application, Serial No. 77/602,134 for the word mark RATE ALERT pending for “mortgage information and lending services” in International Class 36. The Examiner has stated that if the application matures to registration, it could serve as a bar to the instant application.
Applicant believes that in this instance, the prior pending application for the mark RATE ALERT is a distinctly different mark from applicant’s mark which is comprised of the term ALERT in a distinctive design. It is respectfully submitted that a side-by-side comparison of the marks RATE ALERT and ALERT (Design) does not create a likelihood of confusion.
In order for there to be a likelihood of confusion between two marks, it must be shown that there is more than a theoretical possibility of confusion. There must be a substantial likelihood of confusion. A likelihood of confusion cannot be predicated on dissection of a mark; that is, on only part of a mark. Similarity with respect to any one element (sound, appearance or meaning) does not automatically evidence a likelihood of confusion finding.
While the marks in this case share common elements, the appearance and design element connected to applicant’s mark creates an entirely distinct meaning and commercial impression, especially when taking into account the nature of applicant’s services. Applicant’s mark which includes a highly distinctive design element would assist consumers in distinguishing between the two marks. See, Steve’s Ice Cream v. Steve’s Famous Hot Dogs, 3 USPQ 2d 1477, 1478-79 (TTAB 1987). (Finding “STEVE’S” for ice cream not confusingly similar to STEVE’S & Design for hot dogs where the design element established the distinctive commercial impression capable of distinguishing the marks.)
Based on the comparison of the marks alone, it is believed there is no likelihood of confusion in this case. However, the second prong of any likelihood of confusion analysis includes an analysis of the goods or services connected to the respective marks. In this case, prior pending applicant’s services for mortgage information and lending services are not services relating to applicant’s ALERT & Design mark. Applicant in this case Neighborhood Reinvestment Corporation is the entity which owns and promotes the well-known NEIGHBORX AMERICA enterprise, a national non-profit organization created by the U.S. Congress to provide financial support, technical assistance and training for community-based revitalization efforts. The Examining Attorney will note on the specimen in particular submitted in support of the Class 41 services that the NEIGHBORWORX AMERICA mark is prominently displayed.
Under Trademark Act Section 2(d), goods and services of the parties must be closely related to support a finding of likelihood of confusion. Amcor Inc. v. Amcor Industries, Inc., 210 USPQ 70, 78 (TTAB 1981). Even when the marks are nearly identical, which is not the case at hand, if the goods or services of the respective marks are not closely related or directly competitive, then confusion is not likely. See, Quartz Radiation Corp. v. Comm/Scope Co., 1 USPQ2d 1668 (TTAB 1986). The services in this case are not proximate to one another or closely related or marketed in such a manner as to preclude any “mistaken belief” about the origin of the services. Therefore, confusion is not likely in this instance. See, Local Trademarks Inc. v. Handy Boys, Inc., 16 USPQ2d 1156 (TTAB 1990). Even if the Examining Attorney assumes there is some overlap between the respective channels of trade of the applicant in the cited prior pending application, the primary issue for the Examining Attorney is whether there is a significant overlap between applicant’s services and those of the cited prior pending applicant such that consumers would have reason to believe that applicant’s service emanate from those of the prior pending applicant. Generally, where the channels of trade differ and do not lead to the same targeted purchaser, there is less likelihood of confusion. Even in the event there were some market overlap, the mere movement of goods or services through the same overlapping channels would not necessarily result in likelihood of confusion. If an overlap is considered de minimus, then a likelihood of confusion should be viewed as unlikely. See, Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 21 USPQ2d 1388 (Fed. Cir. 1992).
Based on the foregoing, it is respectfully requested that the Examining Attorney withdrawn reference to the prior pending application and allow applicant’s mark to publish for opposition purposes at the earliest possible date.
If any further amendments are required, the Examining Attorney should contact the undersigned at her earliest convenience.
