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. 87506656 HELPING HAND(Standard Characters, see http://uspto.report/TM/87506656/mark.png) has been amended as follows:

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

The purpose of this submission is to respond to the office action issued on September 25, 2017 ("Office Action"), regarding William Richardson's ("Applicant") application to register the mark HELPING HAND, Serial No. 87506656 ("Applicant's Mark"). In the Office Action, the Examining Attorney has refused registration on the basis of a likelihood of confusion with U.S. Registrations Nos. 3054734 and 2994302 for the mark HELPING HAND ("Cited Mark"). Applicant respectfully submits that amendment to Applicant's application, and the remarks provided herein, obviate and overcome Examining Attorney's rejection. I. Likelihood of Confusion Analysis In response to Examining Attorney's remarks in the Office Action, Applicant has amended its description to more accurately describe the goods in connection with Applicant's Mark. In light of this amendment, the Applicant's Mark should be allowed because (i) it is used for distinct goods; and (ii) the channels of trade are distinct between Applicant's Mark and the Cited Mark. A. The Goods are Unrelated. In the Office Action, Examining Attorney stated that "[t]he goods of the parties are all for use with automobiles and include goods for making automobile usage more comfortable. Thus, the goods would be marketed to the same group of consumers in the same trade channels." The Office Action further provides that, "The goods and/or services of the parties need not be identical or even competitive to find a likelihood of confusion." See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) ("[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods."); TMEP ?1207.01(a)(i). The respective goods and/or services need only be "related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source." Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP ?1207.01(a)(i). In accordance with Examining Attorney's position in the Office Action, and in reference to Examining Attorney's cited authority, Applicant has appropriately amended its goods description. Applicant respectfully submits that Applicant's goods are not related in any manner to Cited Mark (i.e. accessories for infant carriers vs. automobile accessories), and there is no are no circumstances surrounding Applicant's marketing that could give rise to the mistaken belief that the services emanate from the same source. Applicant's goods are narrowly tailored to a clip that attaches to an infant carrier that helps parents balance an infant carrier on their hips via the waistline of their pants or their belts. Upon review of the Office Action, Applicant understands and appreciates how the term "car seat" caused in improper impression as to the nature of Applicant's goods. Applicant was using the term "car seat" to generically refer to infant carriers, but appreciates that such a term could be misconstrued as being related to automotive products. Applicant has accordingly amending its goods description to avoid such confusion. The Cited Mark's goods are for various automotive accessories, which differs significantly from accessories for infant carriers and baby products. In light of Applicant's clarification and amendment to its description of goods, Applicant respectfully submits that there is simply no relationship between Applicant's goods and the Cited Mark's goods. B. The Channels of Trade are Distinct. Applicant contends the trade channels for these unrelated goods do not overlap with the Cited Mark, and further, that there is such a sufficient difference in the channels of trade that confusion should not be likely to occur. When analyzing the channels of trade, the Board is to compare the "normal and usual channels of trade and methods of distribution" of the services contained in the application with those in the cited registrations. Squirtco v. Tomy Corp., 697 F.2d 1038, 1043, 216 U.S.P.Q. 937 (Fed. Cir. 1983). However, the Board is not restrained to blindly follow the identification of services and should take into account the market realities related to the applicant and registrant. Sports Auth. Mich., Inc. v. PC Auth., Inc., 2002 T.T.A.B. LEXIS 65 at **33-37 (T.T.A.B. 2002) ("We find little likelihood for confusion attributable to channels of trade employed by the parties, notwithstanding that there are no restrictions on the involved identifications."). The crucial analysis for this factor is "whether the goods are similar enough that a customer would assume they were offered by the same source". Wynn Oil Co. v. Thomas, 839 F.2d 1183, 1187 (6th Cir. 1988). If the actual or potential customers do not overlap, it is less likely that confusion will result. McCarthy on Trademarks and Unfair Competition (4th ed.) ? 24:44. Even if we were to assume that a consumer could use both goods, "the mere purchase of the goods and services of both parties by the same institution does not, by itself, establish similarity of trade channels or overlap of customers" Electronic Data Systems Corp. v. EDSA Micro Corp., 954 F.2d 713, 21 U.S.P.Q.2d 1388, 1391 (Fed. Cir. 1992) (" [A]lthough the two parties conduct business not only in the same fields but with some of the same companies, Checkpoint Systems, Inc. v. Check Point Software Technologies, Inc., 269 F.2d 270, 60 U.S.P.Q.2d 1609, 1620 (3rd Cir. 2001) ("While Checkpoint Systems' access control, closed circuit television and radio frequency products may employ similar technology, their purpose is physical article surveillance or personal access ? Because the products serve different functions, and there is only 'minimal overlap' in the product technology, it is unlikely consumers would be confused by the similar marks; Heartsprings, Inc. v. Heartspring, Inc., 143 F.3d 550, 46 U.S.P.Q.2d 1481, 1486 (10th Cir. 1998) ("Beyond . . . the fact the parties conduct business within the very broad category of products for children, there is little overlap between the parties' products, services or marketing strategies."). The channels of trade for the Cited Mark are directed to automotive product channels, while the channels of trade for the Applicant's Mark will be directed to baby products. As a result, the marketing and customers for the Cited Mark will necessarily be focused on purchasing products related to automobiles, while the marketing and customers for the Applicant's Mark will necessarily be focused on purchasing products for their infant children. In summary, there is no appreciable overlap between the Cited Mark and the intended customers of Applicant's baby carrier accessories. CONCLUSION In light of the foregoing, Applicant submits that there is no likelihood of confusion between Applicant's Mark and the Cited Mark, as Applicant's Mark is used on distinct goods, and in different channels of trade marketed to different consumers. Accordingly, Applicant respectfully requests that the refusal for registration of Applicant's Mark pursuant to Section 2(d) be withdrawn.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 012 for Car seat accessories, namely, clips to assist in carrying a car seat
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: Car seat accessories, namely, clips to assist in carrying a car seat; Accessories for infant carriers, namely, clips to temporarily secure a portion of an infant carrier to the waistband of a user's pants for support while carrying an infant.Class 012 for Accessories for infant carriers, namely, clips to temporarily secure a portion of an infant carrier to the waistband of a user's pants for support while carrying an infant.
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: /Gregory Finch/     Date: 03/26/2018
Signatory's Name: Gregory Finch
Signatory's Position: Attorney of Record, South Carolina bar member

Signatory's Phone Number: 8439062762

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: 87506656
Internet Transmission Date: Mon Mar 26 11:32:45 EDT 2018
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201803261132452
64847-87506656-5106cb1f37f25409442c182ec
b55cfcba9e8ef27232757c0f377e9a6bf7e1e44c
5-N/A-N/A-20180326112751251018