| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 07/31/2017) |
| Input Field |
Entered |
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|---|---|---|---|---|---|---|---|---|---|---|---|---|---|---|---|---|---|---|---|
| SERIAL NUMBER | 86905126 | ||||||||||||||||||
| LAW OFFICE ASSIGNED | LAW OFFICE 121 | ||||||||||||||||||
| MARK SECTION | |||||||||||||||||||
| MARK | http://tmng-al.gov.uspto.report/resting2/api/img/86905126/large | ||||||||||||||||||
| LITERAL ELEMENT | GREATER GOODS | ||||||||||||||||||
| STANDARD CHARACTERS | YES | ||||||||||||||||||
| USPTO-GENERATED IMAGE | YES | ||||||||||||||||||
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. | ||||||||||||||||||
| ARGUMENT(S) | |||||||||||||||||||
|
2(d) Refusal Applicant respectfully requests reconsideration of the refusal to register its mark GREATER GOODS in view of Reg. No. 4028068 for the mark GREATER GOOD GIVING. Applicant submits, based on various factors including those recited in In re E. I. DuPont DeNemours & Co., 177 USPQ 563 (CCPA 1973), that its use of GREATER GOODS is not likely to cause confusion vis-à-vis the cited mark. In particular, confusion is not likely in view of the distinctions between applicant’s and registrant’s marks, the differences between their services and channels of trade, and the common use of the terms GREAT and GOOD in marks for Class 35 charitable fundraising-related services.
Distinction Between the Marks Applicant’s and Registrant’s marks, when viewed in their entireties, are not similar. The two marks are sufficiently different in appearance, sound, meaning, and overall commercial impression to avoid any likelihood of confusion. As stated in TMEP §1207.01 and in In re National Data Corp., 224 USPQ 749, 750-51 (Fed. Cir. 1985), "[t]he basic principle in determining confusion between marks is that marks must be compared in their entireties . . . ."
Applicant’s and registrant’s marks are distinct in appearance and pronunciation. Registrant’s mark is GREATER GOOD GIVING, while applicant’s mark is GREATER GOODS. Registrant’s mark includes the third term GIVING, which is not included in registrant’s mark, and applicant’s mark contains the plural term GOODS, unlike registrant’s mark. The distinction of these two elements in applicant’s and registrant’s marks means both the visual appearance and the pronunciation of the marks are distinct. The emphasis is different in the marks when pronouncing them: consumers encountering the marks in the marketplace are likely to emphasize the term GIVING when encountering registrant’s mark, in view of the somewhat common nature of the phrase “greater good.” In contrast, consumers are likely to emphasize the term GOODS in applicant’s mark, as it contrasts from the common phrase “greater good.”
The marks are likewise distinct in meaning. Applicant’s mark is a unique double entendre invoking both (1) a laudatory reference to the fact that its products are of high quality or better-made, i.e. “greater” than others, and (2) that purchasing its products contributes to making the world a better place, i.e. the “greater good,” because of its socially and often ecologically responsible products. Registrant’s mark is a simpler, direct reference to contributions for making the world a better place. Applicant’s mark suggests a connection to its products, whereas registrant’s mark suggests only its services.
Because of the distinctions in appearance, sound, and meaning described above, applicant’s and registrant’s marks make overall different commercial impressions such that confusion between the two is unlikely.
Distinction between the Services and Channels of Trade Any risk of likelihood of confusion between applicant’s GREATER GOODS mark and the cited GREATER GOOD GIVING mark is further dispelled by the distinctions between applicant’s services and the cited registrant’s services, and the channels of trade in which they each travel. Applicant’s services are fundraising services for non-profit organizations in general, and are not limited to charitable organizations. The cited registration covers only charitable fundraising services. Applicant raises funds for many environmental and other eco-friendly organizations that are not considered “charities,” and its services therefore travel through different channels of trade than the cited registrant’s services. Thus, it is respectfully submitted that applicant’s services are sufficiently distinct from the services in the cited registration that confusion is not likely.
Common Use of GREATER GOOD for Similar Services According to a search of the Trademark Office online database, the phrase GREATER GOOD is featured in 43 live applications and registrations, many of them covering fundraising or charitable-related services.
Here are a few coexisting registrations owned by independent owners that illustrate the common nature of the combination of terms GREATER and GOOD for marks in the fundraising / charitable field:
Consumers are accustomed to distinguishing among many GREATER GOOD marks in the fundraising and charitable fields, such that there is no likelihood of confusion between applicant’s and registrant’s marks.
Conclusion In view of the above, applicant respectfully requests withdrawal of the Section 2(d) refusal and approval of its mark for publication. |
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| SIGNATURE SECTION | |||||||||||||||||||
| RESPONSE SIGNATURE | /jcj/ | ||||||||||||||||||
| SIGNATORY'S NAME | Julie C. Jennings | ||||||||||||||||||
| SIGNATORY'S POSITION | Attorney of record, Missouri bar member | ||||||||||||||||||
| SIGNATORY'S PHONE NUMBER | 314-345-7000 | ||||||||||||||||||
| DATE SIGNED | 08/24/2016 | ||||||||||||||||||
| AUTHORIZED SIGNATORY | YES | ||||||||||||||||||
| FILING INFORMATION SECTION | |||||||||||||||||||
| SUBMIT DATE | Wed Aug 24 15:19:50 EDT 2016 | ||||||||||||||||||
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XX-2 0160824151950470336-86905 126-55042c4e93db525df6176 f11b04bc74ce2c15473ede031 191121c3ad9aa06d14f-N/A-N /A-20160824151724215038 |
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| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 07/31/2017) |
2(d) Refusal
Applicant respectfully requests reconsideration of the refusal to register its mark GREATER GOODS in view of Reg. No. 4028068 for the mark GREATER GOOD GIVING. Applicant submits, based on various factors including those recited in In re E. I. DuPont DeNemours & Co., 177 USPQ 563 (CCPA 1973), that its use of GREATER GOODS is not likely to cause confusion vis-à-vis the cited mark. In particular, confusion is not likely in view of the distinctions between applicant’s and registrant’s marks, the differences between their services and channels of trade, and the common use of the terms GREAT and GOOD in marks for Class 35 charitable fundraising-related services.
Distinction Between the Marks
Applicant’s and Registrant’s marks, when viewed in their entireties, are not similar. The two marks are sufficiently different in appearance, sound, meaning, and overall commercial impression to avoid any likelihood of confusion. As stated in TMEP §1207.01 and in In re National Data Corp., 224 USPQ 749, 750-51 (Fed. Cir. 1985), "[t]he basic principle in determining confusion between marks is that marks must be compared in their entireties . . . ."
Applicant’s and registrant’s marks are distinct in appearance and pronunciation. Registrant’s mark is GREATER GOOD GIVING, while applicant’s mark is GREATER GOODS. Registrant’s mark includes the third term GIVING, which is not included in registrant’s mark, and applicant’s mark contains the plural term GOODS, unlike registrant’s mark. The distinction of these two elements in applicant’s and registrant’s marks means both the visual appearance and the pronunciation of the marks are distinct. The emphasis is different in the marks when pronouncing them: consumers encountering the marks in the marketplace are likely to emphasize the term GIVING when encountering registrant’s mark, in view of the somewhat common nature of the phrase “greater good.” In contrast, consumers are likely to emphasize the term GOODS in applicant’s mark, as it contrasts from the common phrase “greater good.”
The marks are likewise distinct in meaning. Applicant’s mark is a unique double entendre invoking both (1) a laudatory reference to the fact that its products are of high quality or better-made, i.e. “greater” than others, and (2) that purchasing its products contributes to making the world a better place, i.e. the “greater good,” because of its socially and often ecologically responsible products. Registrant’s mark is a simpler, direct reference to contributions for making the world a better place. Applicant’s mark suggests a connection to its products, whereas registrant’s mark suggests only its services.
Because of the distinctions in appearance, sound, and meaning described above, applicant’s and registrant’s marks make overall different commercial impressions such that confusion between the two is unlikely.
Distinction between the Services and Channels of Trade
Any risk of likelihood of confusion between applicant’s GREATER GOODS mark and the cited GREATER GOOD GIVING mark is further dispelled by the distinctions between applicant’s services and the cited registrant’s services, and the channels of trade in which they each travel. Applicant’s services are fundraising services for non-profit organizations in general, and are not limited to charitable organizations. The cited registration covers only charitable fundraising services. Applicant raises funds for many environmental and other eco-friendly organizations that are not considered “charities,” and its services therefore travel through different channels of trade than the cited registrant’s services. Thus, it is respectfully submitted that applicant’s services are sufficiently distinct from the services in the cited registration that confusion is not likely.
Common Use of GREATER GOOD for Similar Services
According to a search of the Trademark Office online database, the phrase GREATER GOOD is featured in 43 live applications and registrations, many of them covering fundraising or charitable-related services.
Here are a few coexisting registrations owned by independent owners that illustrate the common nature of the combination of terms GREATER and GOOD for marks in the fundraising / charitable field:
|
Mark |
Reg. / Ser. No. |
Services |
|
POWERING THE GREATER GOOD |
86384140 |
Charitable services, namely, services to facilitate charitable giving, namely, developing and managing the charitable giving programs of others |
|
GREATERGOOD |
4935320 |
Computerized on-line retail ordering and product display merchandising services for a wide variety of consumer goods and services, all accessible on a global computer network for the facilitation of charitable contributions by the public, featuring automatic donations by the website vendors based on a percentage of proceeds from sales through selected websites |
|
GREATERGOOD.COM |
2367833 |
Computerized on-line retail ordering and merchandising services in a wide variety of fields, all accessible on a global computer network for facilitation of charitable contributions by the public, featuring automatic donations by the website vendors based on a percentage of proceeds from sales through selected websites |
|
GOODS FOR THE GREATER GOOD |
4115994 |
Charitable services, namely, coordination of the procurement and distribution of gift-in-kind product donations from manufacturers, wholesalers, retailers, and government agencies to organizations providing free products to needy people; promoting the benefits of making and receiving nonmonetary charitable donations; Administering a program of nonmonetary charitable donations for others to provide gift-in-kind product donations; consulting services in the nature of assisting others in establishing and maintaining nonmonetary charitable donation and receipt programs in the field of gift-in-kind donations |
|
HOSPICE CARS RECYCLING FOR THE GREATER GOOD |
4098545 |
Charitable fundraising to support hospice and bereavement service organizations; Philanthropic services, namely, financial endowment of hospice and bereavement service organizations |
Consumers are accustomed to distinguishing among many GREATER GOOD marks in the fundraising and charitable fields, such that there is no likelihood of confusion between applicant’s and registrant’s marks.
Conclusion
In view of the above, applicant respectfully requests withdrawal of the Section 2(d) refusal and approval of its mark for publication.