| 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 |
|---|---|
| SERIAL NUMBER | 86913982 |
| LAW OFFICE ASSIGNED | LAW OFFICE 118 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/86913982/mark.png |
| LITERAL ELEMENT | YES |
| 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) | |
|
Dear Commissioner: Applicant timely responds to the Office Action dated June 13, 2016 in the above-identified application. In the Office Action, the Examining Attorney rejects the mark based on a likelihood of confusion. Applicant responds with the following amendments and remarks.
REMARKS The Examining Attorney cites Registration No. 4094169 for “YES, WE CARE!” (the “Cited Mark”), asserting that the Cited Mark will create a likelihood of confusion with Applicant’s mark, “YES” (“Applicant’s Mark”) under Trademark Act Section 2(d). Applicant respectfully traverses. Allowing Applicant’s Mark to register will not create a likelihood of confusion with the Cited Mark. The factors for determining whether there is a likelihood of confusion are set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). The following du Pont factors are relevant considerations in determining likelihood of confusion in the present application: 1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression. 2. The relatedness of the goods or services as described in an application or registration or in connection with which a prior mark is in use. In this case, the cited mark will not cause confusion based on the relevant du Pont factors set forth above.
1. Applicant’s Mark comprises a unique sight, sound, and commercial impression. The Examining Attorney asserts that there will be a likelihood of confusion between Applicant’s Mark and the Cited Mark. Applicant respectfully disagrees. First, the marks are significantly different in sight and sound. The Cited Mark contains three words, “YES, WE CARE!”, with two distinct clauses being separated by a comma, giving the Cited Mark the characteristics of a phrase or sentence. Such a phrase with punctuation would be impressed upon consumers as a whole, and is markedly different than Applicant’s Mark, which only consists of a single word: “YES.” Furthermore, the exclamation point at the end of the Cited Mark, along with the significant differences in wording, would cause consumers to recognize a different sound between the marks. The Cited Mark would be heard as a phrase with emphasis provided by the exclamation point, while Applicant’s Mark is, again, simply one word with no punctuation. Therefore, the marks significantly differ in sight and sound. The Examining Attorney further asserts that the marks “convey a similar commercial impression” because they “share the same dominant term, YES.” Applicant respectfully disagrees and asserts that the dominant portion of the Cited Mark is not “YES,” but “WE CARE!”. First, the first portion of the Cited Mark consisting of “YES,” is an introductory, dependent clause[1] of the sentence that is the Cited Mark. Therefore, the term “YES” is of less importance in the Cited Mark, and is present only to modify the principal clause of the Cited Mark, “WE CARE!”. Additionally, “WE CARE” in the Cited Mark, is followed by an exclamation point “!” to indicate “major significance, interest, or contrast” (from the definition of “exclamation point” according to http://www.merriam-webster.com/dictionary/exclamation%20point). Because the purpose of an exclamation point is to give emphasis, the portion of a trademark immediately preceding an exclamation point is given more emphasis regarding consumer recognition. See In Re Sela Prod., LLC, 107 U.S.P.Q.2d 1580, 2013 WL 2951800, at *9 (T.T.A.B. Mar. 26, 2013) (“the phrase FORZA MILAN!, with the imperative connotation of the exclamation point, will still be recognized as different from FORZA”). Accordingly, consumers will recognize the emphasis placed on “WE CARE” by the exclamation point in the Cited Mark. Furthermore, the dependent clause, “YES,” of the Cited Mark, is separated from the principal clause by a comma, indicating that the emphasis provided by the exclamation point does not apply to “YES” in the Cited Mark. For these reasons, Applicant respectfully asserts that “WE CARE!” is the dominant portion of the Cited Mark on which consumers will focus. Therefore, the dominant portions of Applicant’s Mark and the Cited Mark are drastically different, causing the marks to convey different commercial impressions.
2. Applicant’s services are not closely related to those of the cited registration. Applicant’s services are significantly different than those associated with the Cited Mark for a number of reasons. First, the services associated with the Cited Mark, that the Examining Attorney asserts are relevant, are in International Class 35, while Applicant’s services are in International Classes 39 and 45, indicating that the services are different. Second, the Registrant’s services are “charitable services, namely, providing administration and management of care facilities, housing facilities, and nursing home facilities for others.” Accordingly, the Registrant’s services involve administrative and managerial services, which are significantly different than the personal care and elderly assistance services associated with Applicant’s Mark. Also, consumers would surely be able to distinguish between Registrant’s charitable services and Applicant’s services, which are not charitable services. Finally, Applicant’s services would not be offered to the same consumers as Registrant’s services. If the goods or services in question are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion is not likely. See Local Trademarks, Inc. v. Handy Boys Inc., 16 USPQ2d 1156 (TTAB 1990) (LITTLE PLUMBER for liquid drain opener held not confusingly similar to LITTLE PLUMBER and design for advertising services, namely the formulation and preparation of advertising copy and literature in the plumbing field). A consumer class cannot be confused if it encounters only one of multiple trademarks at issue. Applicant’s service are directed to the elderly looking for assistance with personal, everyday activities, whereas the Registrant’s managerial and administrative services would be directed to operators of care facilities to satisfy their business needs, rather than their personal needs. Furthermore, a consumer looking for charitable services, such as those offered by the Registrant, would not also be seeking out Applicant’s services because Applicant’s services are not charitable services. Likewise, Applicant’s services are not directed to consumers seeking charitable services. Therefore, the same consumers would not encounter Applicant’s and Registrant’s services in circumstances which may cause a likelihood of consumer confusion. For the foregoing reasons, Applicant respectfully submits that Applicant’s services are not closely related to those associated with the Cited Mark. Overall, such dissimilar services, along with the stark differences between Applicant’s Mark and the Cited Mark in sight, sound, and commercial impression, show that there is no likelihood of confusion between the marks.
CONCLUSION In view of the foregoing, Applicant respectfully submits that all of the issues raised in the outstanding Office Action have been addressed and that Applicant’s mark should be advanced to publication. If it would be helpful in expediting the prosecution of this application, the undersigned would welcome a telephone call at the number listed below at the Examining Attorney’s convenience. [1] A dependent clause is “a clause that modifies the principal clause or some part of it.” http://www.dictionary.com/browse/dependent--clause |
|
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /jda51024/ |
| SIGNATORY'S NAME | J. Damon Ashcraft |
| SIGNATORY'S POSITION | Attorney of Record, AZ bar member |
| SIGNATORY'S PHONE NUMBER | 602-382-6389 |
| DATE SIGNED | 12/09/2016 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri Dec 09 17:29:51 EST 2016 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.XX-20 161209172951173305-869139 82-570d27192c315acf5b41cc 913f7a3bf93e6f569159abfbc 3a28f26ca1619f1329-N/A-N/ A-20161209171201517560 |
| 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) |
Dear Commissioner:
Applicant timely responds to the Office Action dated June 13, 2016 in the above-identified application. In the Office Action, the Examining Attorney rejects the mark based on a likelihood of confusion. Applicant responds with the following amendments and remarks.
REMARKS
The Examining Attorney cites Registration No. 4094169 for “YES, WE CARE!” (the “Cited Mark”), asserting that the Cited Mark will create a likelihood of confusion with Applicant’s mark, “YES” (“Applicant’s Mark”) under Trademark Act Section 2(d). Applicant respectfully traverses.
Allowing Applicant’s Mark to register will not create a likelihood of confusion with the Cited Mark. The factors for determining whether there is a likelihood of confusion are set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). The following du Pont factors are relevant considerations in determining likelihood of confusion in the present application:
1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression.
2. The relatedness of the goods or services as described in an application or registration or in connection with which a prior mark is in use.
In this case, the cited mark will not cause confusion based on the relevant du Pont factors set forth above.
1. Applicant’s Mark comprises a unique sight, sound, and commercial impression.
The Examining Attorney asserts that there will be a likelihood of confusion between Applicant’s Mark and the Cited Mark. Applicant respectfully disagrees. First, the marks are significantly different in sight and sound. The Cited Mark contains three words, “YES, WE CARE!”, with two distinct clauses being separated by a comma, giving the Cited Mark the characteristics of a phrase or sentence. Such a phrase with punctuation would be impressed upon consumers as a whole, and is markedly different than Applicant’s Mark, which only consists of a single word: “YES.” Furthermore, the exclamation point at the end of the Cited Mark, along with the significant differences in wording, would cause consumers to recognize a different sound between the marks. The Cited Mark would be heard as a phrase with emphasis provided by the exclamation point, while Applicant’s Mark is, again, simply one word with no punctuation. Therefore, the marks significantly differ in sight and sound.
The Examining Attorney further asserts that the marks “convey a similar commercial impression” because they “share the same dominant term, YES.” Applicant respectfully disagrees and asserts that the dominant portion of the Cited Mark is not “YES,” but “WE CARE!”. First, the first portion of the Cited Mark consisting of “YES,” is an introductory, dependent clause[1] of the sentence that is the Cited Mark. Therefore, the term “YES” is of less importance in the Cited Mark, and is present only to modify the principal clause of the Cited Mark, “WE CARE!”. Additionally, “WE CARE” in the Cited Mark, is followed by an exclamation point “!” to indicate “major significance, interest, or contrast” (from the definition of “exclamation point” according to http://www.merriam-webster.com/dictionary/exclamation%20point). Because the purpose of an exclamation point is to give emphasis, the portion of a trademark immediately preceding an exclamation point is given more emphasis regarding consumer recognition. See In Re Sela Prod., LLC, 107 U.S.P.Q.2d 1580, 2013 WL 2951800, at *9 (T.T.A.B. Mar. 26, 2013) (“the phrase FORZA MILAN!, with the imperative connotation of the exclamation point, will still be recognized as different from FORZA”). Accordingly, consumers will recognize the emphasis placed on “WE CARE” by the exclamation point in the Cited Mark. Furthermore, the dependent clause, “YES,” of the Cited Mark, is separated from the principal clause by a comma, indicating that the emphasis provided by the exclamation point does not apply to “YES” in the Cited Mark.
For these reasons, Applicant respectfully asserts that “WE CARE!” is the dominant portion of the Cited Mark on which consumers will focus. Therefore, the dominant portions of Applicant’s Mark and the Cited Mark are drastically different, causing the marks to convey different commercial impressions.
2. Applicant’s services are not closely related to those of the cited registration.
Applicant’s services are significantly different than those associated with the Cited Mark for a number of reasons. First, the services associated with the Cited Mark, that the Examining Attorney asserts are relevant, are in International Class 35, while Applicant’s services are in International Classes 39 and 45, indicating that the services are different. Second, the Registrant’s services are “charitable services, namely, providing administration and management of care facilities, housing facilities, and nursing home facilities for others.” Accordingly, the Registrant’s services involve administrative and managerial services, which are significantly different than the personal care and elderly assistance services associated with Applicant’s Mark. Also, consumers would surely be able to distinguish between Registrant’s charitable services and Applicant’s services, which are not charitable services.
Finally, Applicant’s services would not be offered to the same consumers as Registrant’s services. If the goods or services in question are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion is not likely. See Local Trademarks, Inc. v. Handy Boys Inc., 16 USPQ2d 1156 (TTAB 1990) (LITTLE PLUMBER for liquid drain opener held not confusingly similar to LITTLE PLUMBER and design for advertising services, namely the formulation and preparation of advertising copy and literature in the plumbing field). A consumer class cannot be confused if it encounters only one of multiple trademarks at issue.
Applicant’s service are directed to the elderly looking for assistance with personal, everyday activities, whereas the Registrant’s managerial and administrative services would be directed to operators of care facilities to satisfy their business needs, rather than their personal needs. Furthermore, a consumer looking for charitable services, such as those offered by the Registrant, would not also be seeking out Applicant’s services because Applicant’s services are not charitable services. Likewise, Applicant’s services are not directed to consumers seeking charitable services. Therefore, the same consumers would not encounter Applicant’s and Registrant’s services in circumstances which may cause a likelihood of consumer confusion.
For the foregoing reasons, Applicant respectfully submits that Applicant’s services are not closely related to those associated with the Cited Mark. Overall, such dissimilar services, along with the stark differences between Applicant’s Mark and the Cited Mark in sight, sound, and commercial impression, show that there is no likelihood of confusion between the marks.
CONCLUSION
In view of the foregoing, Applicant respectfully submits that all of the issues raised in the outstanding Office Action have been addressed and that Applicant’s mark should be advanced to publication. If it would be helpful in expediting the prosecution of this application, the undersigned would welcome a telephone call at the number listed below at the Examining Attorney’s convenience.
[1] A dependent clause is “a clause that modifies the principal clause or some part of it.” http://www.dictionary.com/browse/dependent--clause