Response to Office Action

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)

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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)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 87329235 MYPATH(Standard Characters, see http://uspto.report/TM/87329235/mark.png) has been amended as follows:

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

Likelihood of Confusion

             In the Official Action dated March 23, 2017, the Examining Attorney refused the subject application 87329235 under Section 2(d) based on U.S. Registration 4816102 and 4507610.  There is no likelihood of confusion based on the  Applicant’s exiting registration for similar services that  has priority over the two cited registrations.    

 

I.                    Applicant is the Registrant of an Identical Prior Registration 3702498 for MYPATH on Substantially Similar Services, Currently Co-Existing on the Register With the Cited Trademarks. 

            In support of the refusal, the Examining Attorney has alleged a  “similarity of the marks, similarity and nature of the services, and similarity of the trade channels of the services…”   However, in the present case, determining likelihood of confusion also requires consideration of the ”thirteenth” Du Pont factor, which calls for consideration of “any other established fact probative of the effect of use”.  In re E.I. Du Pont de Nemours & Co., 476 F.2d 1357, 1360-62 (CCPA 1973).

Applicant is the owner of the substantially similar prior registration No. 3702498 for the identical trademark MYPATH, which has already co-existed with the cited marks for a number of years, leaving room for the present application as well.  Attached here as Exhibit A is a printout from the USPTO’s TSDR database showing the current status and title of the registration. 

The Applicant’s older registration 3702498 was originally filed March 3, 2008 claiming priority of December 18, 2007 based on an EU registration,  and granted registration on October 27, 2009, claiming use at least as early as August 3, 2009.  The registration was granted for the following services

 

Class 35:  Providing a web site featuring on-line information in the fields of employment, recruitment, careers, job resources, job listings and resumes; providing on-line interactive employment recruitment services; providing a database featuring employment and job related information

Class 42

Providing temporary use of online non-downloadable software for accessing, inputting, entering, storing, retrieving, processing, modifying and managing employment and career related information; providing temporary use of online non-downloadable software for evaluating job and career skills

 

In 2016, the Registration was restricted to the class 35 services listed above, which are the relevant services for the current analysis.

The coexistence of Applicant’s existing substantially similar registration for MYPATH with the cited registrations for MYPATH INSURANCE. IT’S LIMITLESS. and MYPATH101 is a significant fact to consider in the likelihood of confusion analysis.  That existing registration is evidence that the newer application for MYPATH should be allowed as well and there is no adverse effect of its registration and use. With MYPATH being an identical mark to the Applicant’s existing registration, and on substantially similar services in the same field, one must reach the conclusion that the new application, too, should be approved for registration.    

            Applicant is not invoking the so-called “Morehouse defense”, recognizing that the rule is only applicable as an affirmative defense in an inter partes proceedings.  Rather, as noted in the case of In re Strategic Partners, a decision that is precedent of the TTAB, “the present case involves the unique situation presented by the coexistence of applicant’s existing registration with the cited registration…when applicant’s applied-for mark is substantially similar to its existing registered mark, both for identical goods.” In re Strategic Partners, Inc., 102 USPQ2d 1397 (TTAB 2012).    As in that case, it is necessary to “balance the similarities between the marks and goods against the facts that applicant already owns a registration for a substantially similar mark”.   As established above, Applicant’s prior registration for an identical trademark on substantially similar services has the priority over, and has co-existed with, the cited registrations, just as in the case of In re Strategic Partners.  With the analogous facts, the analysis and outcome should remain the same in the present case as well.   

The trademark in Applicant’s existing application is identical to its earlier registration 3702498.  Both marks are word marks in standard print for only the word MYPATH.   

The identification in both marks involves services and information in the fields of employment, recruitment, careers, job resources and the like, and services for evaluating job and career skills. There is no limitation on the job or career field, therefore encompassing all possible careers, consumers, and channels. While slightly broader, the relevant services in the present application have a similar focus as those in the earlier registration.  They are both services involving employment and recruitment, and provide resources to assist with employment, jobs, and skills.   

With respect to the cited registration 4507610 for MYPATH101, the registration issued April 1, 2014, for services in class 35, including “Career planning and marketing services for high school and college students” with first use June 1, 2013.  The registration for MYPATH101 has a later priority date than the Applicant’s registration.  Nonetheless, it was granted for career planning services in class 35 despite the existence of the Applicant’s older registration for MYPATH on similar career planning related services in class 35.  Applicant’s older registration was not even cited during examination. 

In 2015, the second cited registration 4816102 issued for MYPATH INSURANCE. IT'S LIMITLESS, also for services involving career opportunities in class 35 and claiming a date of first use February 12, 2014.  Again, the priority date is later than the Applicant’s earlier registration for MYPATH. Applicant’s older registration for MYPATH covering career-related services was not an obstacle to registration of MYPATH INSURANCE. IT'S LIMITLESS.     Applicant’s older registration was cited during examination, but that refusal was eventually lifted during examination

Based on the information provided in the two cited registrations, the parties have been co-existing since at least as early as 2014. 

In supporting the assertion that the cited registrations' respective services are similar to the present application, the Examining Attorney has stated in the action that “[a]bsent restrictions in an application and/or registration, the identified goods and/or services are ‘presumed to travel in the same channels of trade to the same class of purchasers.’” (citation omitted)   The career opportunities in Registration 4816102 for MYPATH INSURANCE. IT'S LIMITLESS. are focused in the insurance industry.   But, Applicant’s older registration for MYPATH does not contain any restriction on the career field.  This analysis of the similarity of services should apply to a comparison of the cited marks with the Applicant’s existing rights as well.   Absent such limitations the services in Applicants existing registration are presumed to involve all potential consumers and channels of trade, including insurance.   Yet, the registrations co-exist.      

In sum, the trademark in Applicant’s current application and the issued registration identical, and there is a substantial similarity in the services.  Yet, the present application is facing obstacles despite the fact that a virtually identical registration co-exists with the cited mark.  This co-existence establishes that there is no likelihood of confusion. 

 
 

II.                 The Co-Existence Supports a Finding that the Marks are Different in the Overall Impression and Meaning  

Applicant maintains that its application should be allowed in light of its older existing registration.  Indeed, their co-existence supports the assertion that there is no likelihood of confusion due to the overall differences in the marks.   The Examining Attorney asserts that the marks are similar because Applicant’s mark “contains the same common wording as the registered marks, and there is no other wording to distinguish it from the registered marks”.   However, there is no per se rule that a shared term will always result in a finding of a likelihood of confusion.  Rather, “[m]arks are compared in the entireties for similarities in appearance, sound, connotation, and commercial impression”.  In comparing the marks, similarity in one respect will not automatically result in a determination that confusion is likely, even if the goods or services are identical or closely related.  In re White Swan Ltd., 8 U.S.P.Q.2d 1534, 1535 (TTAB 1988); TMEP § 1207.01(b)(i). 

            Applicant’s mark is the word MYPATH in standard characters.  The two cited registrations, on the other hand, both contain additional literal elements.  As evidenced by the co-existence of the cited registrations with the Applicant’s older existing registration, the crowded field leaves room for Applicant’s new application as well.   

 

III.             Conclusion

When considering Applicant’s existing registration for MYPATH with the earliest rights among the three registrants, it is clear there is no likelihood of confusion.  If there is no such likelihood of confusion found in the context of applicant’s prior registration for MYPATH and the two cited registrations, then there can also be no such likelihood of confusion, or no further harm, stemming from issuance of the present MYPATH, an identical mark covering substantially similar goods.  The cited registrations’ co-existence on the registry with the Applicant’s earlier registration is clear recognition that a likelihood of confusion does not exist in the minds of the Trademark Office or consumers, between the respective trademarks.   Applicant request that the refusal based on a likelihood of confusion be waived, and the Application allowed to proceed on course to publication. 

EVIDENCE
Evidence in the nature of Exhibit A is a TSDR Status Extract for Registration 3702498 has been attached.
Original PDF file:
evi_17316717859-20170925124209574544_._Exhibit_A_MYPATH_3702498.pdf
Converted PDF file(s) ( 5 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Providing business consultation and administrative support services in the field of tuition assistance programs; Employment services, namely, providing employee skills screening and assessment tools via a website on a global information network employment related services, namely, providing job placement, career development, employment recruitment, and general employment information to others; human resources consulting on recruiting, training and testing of employees; testing to determine employment skills; employment counseling; workforce development services; providing career information via a website on a global information network; providing information on jobs via a website on a global information network; providing an on-line computer database in the fields of contract and permanent personnel staffing; employment counseling; career management and career transition services, namely, providing employment counseling information on how to successfully transition jobs
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Providing business consultation and administrative support services in the field of tuition assistance programs; Employment services, namely, providing employee skills screening and assessment tools via a website on a global information network employment related services, namely, providing job placement, career development, employment recruitment, and general employment information to others; Employment services, namely, providing employee skills screening and assessment tools in the nature of tests to determine employment skills via a website on a global information network employment related services, namely, providing job placement, career development in the nature of providing employment counseling services, employment recruitment, and general employment information to others; human resources consulting on recruiting, training and testing of employees; testing to determine employment skills; employment counseling; workforce development services; workforce development the nature of providing career planning services; providing career information via a website on a global information network; providing information on jobs via a website on a global information network; providing an on-line computer database in the fields of contract and permanent personnel staffing; employment counseling; career management and career transition services, namely, providing employment counseling information on how to successfully transition jobsClass 035 for Providing business consultation and administrative support services in the field of tuition assistance programs; Employment services, namely, providing employee skills screening and assessment tools in the nature of tests to determine employment skills via a website on a global information network employment related services, namely, providing job placement, career development in the nature of providing employment counseling services, employment recruitment, and general employment information to others; human resources consulting on recruiting, training and testing of employees; testing to determine employment skills; employment counseling; workforce development the nature of providing career planning services; providing career information via a website on a global information network; providing information on jobs via a website on a global information network; providing an on-line computer database in the fields of contract and permanent personnel staffing; employment counseling; career management and career transition services, namely, providing employment counseling information on how to successfully transition jobs
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for career counseling services; providing employee skills screening and assessment; providing continuing business education courses, providing instructional classes, seminars and workshops in the fields of improving business and job skills, training services for personnel, namely, computer education training, business training; providing on-line courses of study in the fields of information technology, software use, job and business skills, namely, providing online training courses in strategic planning relating to business operations, providing continuing business education courses to improve business skills, providing a website featuring online instructional classes in the field of business training, strategic planning relating to business operations, continuing business education, improving business and job skills; career counseling services, namely, providing advice concerning education options to pursue career opportunities; education and training being career management and career transition services, namely, providing vocational guidance to persons seeking employment; providing career development information in the nature of information regarding education options to improve one's career potential, career development and career counseling services, namely, providing instructional classes and seminars on improving job skills
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: career counseling services; career counseling services namely, providing coaching in the field of career advancement and employment skills; providing employee skills screening and assessment; providing educational assessment services in the field of career advancement and employee skills; providing continuing business education courses, providing instructional classes, seminars and workshops in the fields of improving business and job skills, training services for personnel, namely, computer education training, business training; providing on-line courses of study in the fields of information technology, software use, job and business skills, namely, providing online training courses in strategic planning relating to business operations, providing continuing business education courses to improve business skills, providing a website featuring online instructional classes in the field of business training, strategic planning relating to business operations, continuing business education, improving business and job skills; career counseling services, namely, providing advice concerning education options to pursue career opportunities; education and training being career management and career transition services, namely, providing vocational guidance to persons seeking employment; providing career development information in the nature of information regarding education options to improve one's career potential, career development and career counseling services, namely, providing instructional classes and seminars on improving job skillsClass 041 for career counseling services namely, providing coaching in the field of career advancement and employment skills; providing educational assessment services in the field of career advancement and employee skills; providing continuing business education courses, providing instructional classes, seminars and workshops in the fields of improving business and job skills, training services for personnel, namely, computer education training, business training; providing on-line courses of study in the fields of information technology, software use, job and business skills, namely, providing online training courses in strategic planning relating to business operations, providing continuing business education courses to improve business skills, providing a website featuring online instructional classes in the field of business training, strategic planning relating to business operations, continuing business education, improving business and job skills; career counseling services, namely, providing advice concerning education options to pursue career opportunities; education and training being career management and career transition services, namely, providing vocational guidance to persons seeking employment; providing career development information in the nature of information regarding education options to improve one's career potential, career development and career counseling services, namely, providing instructional classes and seminars on improving job skills
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

SIGNATURE(S)
Response Signature
Signature: /JAR/     Date: 09/25/2017
Signatory's Name: Jeannine A Rittenhouse
Signatory's Position: Attorney of Record, IL Bar Member

Signatory's Phone Number: 847 808 5500

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 owner's/holder'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 owner/holder in this matter: (1) the owner/holder 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 owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder'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: 87329235
Internet Transmission Date: Mon Sep 25 13:06:10 EDT 2017
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-201709251306101
68263-87329235-5102262dab8b9f1f7c53d8299
51e91543635ba33a44671d1ed7349174fd87b2-N
/A-N/A-20170925124209574544