Response to Office Action

This response will address, first, the section 2(d) refusal and, second, the objection to the identification of services.

             The section 2(d) refusal is grounded upon an assumption that the services of applicant and the registrant "are closely related and traverse similar trade channels" and are "overlapping".  This is incorrect.  The registrant identifies its services as "direct-mail services".  The plain meaning of this cryptic phrase is the service of placing communications in the mail to a group of addressees, usually a large group.  Since the registrant does not identify its services as including preparation of direct-mail communications or as advertising services, to avoid indefiniteness it must be assumed that the services provided under the mark include only the mechanical tasks of printing envelopes or mailing labels, placing a communication in the envelope or affixing a mailing label, providing postage and depositing the communication in the mail.  The communications may or may not be advertising.  The registrant's internet site indicates that they are various communications addressed to the existing customers of automobile dealerships. 

Applicant's services are completely different.  Unlike registrant, it specifies that they are advertising services.  Moreover, they are a highly specialized variety of advertising services, which involve neither distribution through the mail nor the use of mass media of communication.  Applicant provides mobile units in the nature of custom- built tractor trailers in which health related products are displayed, information about them provided, and in which the producer of the displayed products may promote them by talking directly to consumers who visit the display.  Applicant provides the further service of managing the travels of these mobile units.  It is highly unlikely that anyone contemplating the completely different activities of registrant and applicant, which serve completely different business purposes, would think that the providers are related in any way, particularly since the marks are far from strong.

Confusion is even less likely since the purchasers of the services are not casual consumers but business organizations.  Direct mail services are used by business consumers who are likely to be responding to a specific communication need and who will be familiar with communication services generally.  A tractor trailer built to display products is part of a very different marketing strategy.  Custom built mobile units and the services used to manage their travels are quite expensive.  They are purchased or leased by business consumers accustomed to this kind of major marketing project and only after extensive evaluation and negotiation at the highest level of the customer's marketing staff.  The purchase of direct-mail services, in contrast, involves no such effort.  It is a task typically carried out at a low level in the purchasing organization and involves chiefly price comparisons and some knowledge of the vendors who operate in the locality of the purchasing business.

We submit that a Section 2(d) refusal is not warranted.

In response to the objection to its identification of services, applicant amends the identification to read as follows: advertising services, namely, providing mobile locations in the nature of tractor trailers for the display of health and wellness, health and fitness and lifestyle products along with information concerning the displayed products and for direct interaction between producers and consumers of those products and managing the movement of those locations along a pre-determined route.