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 09/20/2020)

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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 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 87386861 TRUE NORTH(Standard Characters, see http://uspto.report/TM/87386861/mark.png) has been amended as follows:

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

Response to office Action Applicant does not agree that its mark so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant or that there is a risk of confusion with the registered mark TRUENORTH HEALTH in International Class 42. Facts: With respect to the facts, the conclusion that: The mark in Reg. No. 3213738 is TRUENORTH HEALTH (no color claim, stylized wording, and design) for, in relevant part, ?Food preparation? in International Class 42? is, upon analysis, incomplete. Food preparation can only qualify for inclusion in Class 42 if it is tied, as it is in the recitation of services, as part of ?the implementation of medically prescribed fasting plans.? That omission is critically relevant and cannot be disregarded. It?s the difference between a ?fat farm? and a restaurant. Marks are not similar: As the preceeding argument suggests, truncation of the registered mark by disregarding HEALTH creates only an artificial confusion. The Health component may be generic for purposes of academic trademark analysis, but is essential to the understanding of the potential consumer of the services. Health is directly related to the services provided, namely medical consultation services in the field of facilitation and implementation of medically prescribed fasting plans. Unrelatedness of Services: The Office Action incorrectly asserts that ?the identification set forth in the application and registration have no restrictions as to nature, type, channels of trade, or classes of purchasers.? Class 42 is reserved for scientific and technological services, not food preparation. The channels of trade are directly identified in the description of the services provided. Food preparation can only qualify in class 42 if it is directly tied in the application to ?the facilitation and implementation of medically prescribed fasting plans.? No reasonable or average purchaser is going to ever confuse a restaurant with a supplier of medically prescribed fasting plans. No prescription is required to eat in a restaurant and people don?t go to a restaurant to fast, but rather to eat and to drink. The services are by their nature, inherently opposed and accordingly directed at very different marketing channels. The disproportion in the number of consumers of restaurant services generally as opposed to consumers of medically prescribed fasting plans further obviates any potential for consumer confusion. There is no potential for linkage between the provision of medically prescribed fasting plans and restaurants and bars. The former is individualized, requiring medical consultation services, the latter are open to all with no medical component and above all have no connection with fasting. For all the foregoing reasons, the application should be allowed to proceed to registration.

SIGNATURE(S)
Response Signature
Signature: /daniel kaylor/     Date: 11/29/2017
Signatory's Name: Daniel Kaylor
Signatory's Position: Attorney of record, CA bar member

Signatory's Phone Number: 4084978347

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: 87386861
Internet Transmission Date: Wed Nov 29 16:07:20 EST 2017
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2017112916072086
2189-87386861-510c87b946c12957226d583b79
f49e5124f7ad936a9ac7dfa9fb7c33769e6ae67-
N/A-N/A-20171129155844304112