| 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 2194 (Rev 03/2012) |
| OMB No. 0651-0054 (Exp 12/31/2020) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88334838 |
| LAW OFFICE ASSIGNED | LAW OFFICE 120 |
| DATE OF NOTICE OF ABANDONMENT | 11/14/2019 |
| PETITION | |
| PETITION STATEMENT | Applicant has firsthand knowledge that the failure to respond to the Office Action by the specified deadline was unintentional, and requests the USPTO to revive the abandoned application. |
| RESPONSE TO OFFICE ACTION | |
| MARK SECTION | |
| MARK FILE NAME | http://uspto.report/TM/88334838/mark.png |
| LITERAL ELEMENT | SAA |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| ARGUMENT(S) | |
|
In the Office Action dated April 15, 2019, the Examining Attorney has rejected the present trademark application no. 88334838 under likelihood of confusion grounds based primarily on the existence of the mark having Reg. No. 3698834 for “Student Academy of Audiology” (abbreviated SAA), “Indicating membership in an association of students of the field of audiology” in Class 200 (hereinafter, Registrant). The present application has been designated identification of “Charitable services, namely, providing a free online resource in the nature of a website for connecting people who have service needs with people who are willing to provide volunteer services” in Class 035 and “Charitable education services, namely, providing help to people who stutter in the field of stuttering; Charitable services, namely, academic mentoring of people who stutter to stop stuttering; Charitable services, namely, academic mentoring of people who stutter in the field of stuttering; Charitable services, namely, mentoring of people who stutter in the field of stuttering; Charitable services, namely, providing training in the field of helping people who stutter to stop stuttering; Charitable services, namely, providing tutoring in the field of helping people who stutter to stop stuttering” in Class 041. As such, Applicant respectfully submits that the classes AND goods/services represented by Applicant’s mark are vastly different than Registrant’s mark. Moreover, Applicant respectfully points out that although the same letters (i.e., “SAA”) are both visible in Applicant’s and Registrant’s marks, their arrangement on their respective logos are very different. Specifically, Applicant’s mark has a large S with smaller A’s above and below the large S, such that all the letters are within a “speech bubble.” On the other hand, Registrant’s mark has an “S” followed by an “A” and another “A” in horizontal and linear succession. Furthermore, Registrant’s mark actually has the word identifiers surrounding the “SAA”, specifically “Student Academy of Audiology” in a circle around the “SAA.” Additionally, Applicant is providing an example of the “H” logo for “Honda” and the “H” logo for “Hyundai,” with both classes being the same (i.e., class 011), and goods/service being the same (i.e., “headlights for vehicles”). However, as provided in the enclosed evidence, the “H” logo for “Honda” and the “H” logo for “Hyundai” use the same letter “H,” both marks have no other identifiers in their respective logos, both marks also represent car companies, and notwithstanding these facts, both marks have and have been allowed registration. In other words, people looking to purchase cars and/or headlights would be looking at both Honda and Hyundai brands, but the USPTO has still allowed registration based on the actual appearance of the “H” in the respective logos. As such, for at least the reasons that (1) Applicant’s and Registrant’s marks are in different classes, (2) Applicant’s and Registrant’s marks identify different goods and services, (3) Applicant’s and Registrant’s marks are vastly different in appearance, (4) Registrant’s mark includes an identifier of “Student Academy of Audiology” in a circle around the “SAA,” and (5) Applicant’s and Registrant’s marks would not be searched by people in the same commerce channels, Applicant respectfully requests withdrawal of all rejections and allowance of Applicant’s mark. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_260114d850232213413b42a95e94d10-20200114185252862272_._SAALogoSpecimenFinal.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\883\348\88334838\xml6\POA0002.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\883\348\88334838\xml6\POA0003.JPG | |
| ATTORNEY SECTION (current) | |
| NAME | Lev Iwashko |
| ATTORNEY BAR MEMBERSHIP NUMBER | NOT SPECIFIED |
| YEAR OF ADMISSION | NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | NOT SPECIFIED |
| FIRM NAME | THE IWASHKO LAW FIRM, PLLC |
| STREET | 1250 CONNECTICUT AVE. NW, FLOOR 7 |
| CITY | WASHINGTON |
| STATE | District of Columbia |
| POSTAL CODE | 20036 |
| COUNTRY | US |
| PHONE | 202-441-5043 |
| attorneyLev@gmail.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | Lovett-TM06 |
| ATTORNEY SECTION (proposed) | |
| NAME | Lev Iwashko |
| ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
| YEAR OF ADMISSION | XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
| FIRM NAME | THE IWASHKO LAW FIRM, PLLC |
| STREET | 1250 CONNECTICUT AVE. NW, FLOOR 7 |
| CITY | WASHINGTON |
| STATE | District of Columbia |
| POSTAL CODE | 20036 |
| COUNTRY | United States |
| PHONE | 202-441-5043 |
| attorneyLev@gmail.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | Lovett-TM06 |
| CORRESPONDENCE SECTION (current) | |
| NAME | LEV IWASHKO |
| FIRM NAME | THE IWASHKO LAW FIRM, PLLC |
| STREET | 1250 CONNECTICUT AVE. NW, FLOOR 7 |
| CITY | WASHINGTON |
| STATE | District of Columbia |
| POSTAL CODE | 20036 |
| COUNTRY | US |
| PHONE | 202-441-5043 |
| attorneyLev@gmail.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | Lovett-TM06 |
| CORRESPONDENCE SECTION (proposed) | |
| NAME | Lev Iwashko |
| FIRM NAME | THE IWASHKO LAW FIRM, PLLC |
| STREET | 1250 CONNECTICUT AVE. NW, FLOOR 7 |
| CITY | WASHINGTON |
| STATE | District of Columbia |
| POSTAL CODE | 20036 |
| COUNTRY | United States |
| PHONE | 202-441-5043 |
| attorneyLev@gmail.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | Lovett-TM06 |
| PAYMENT SECTION | |
| TOTAL AMOUNT | 100 |
| TOTAL FEES DUE | 100 |
| SIGNATURE SECTION | |
| PETITION SIGNATURE | /Lev Iwashko/ |
| SIGNATORY'S NAME | Lev Iwashko |
| SIGNATORY'S POSITION | Attorney of Record, DC Bar Member |
| SIGNATORY'S PHONE NUMBER | 202-441-5043 |
| DATE SIGNED | 01/14/2020 |
| RESPONSE SIGNATURE | /Lev Iwashko/ |
| SIGNATORY'S NAME | Lev Iwashko |
| SIGNATORY'S POSITION | Attorney of Record, DC Bar Member |
| SIGNATORY'S PHONE NUMBER | 202-441-5043 |
| DATE SIGNED | 01/14/2020 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Jan 14 18:57:51 EST 2020 |
| TEAS STAMP | USPTO/POA-XXXX:XXX:XXXX:X XXX:XXXX:XXXX:XXXX:XXXX-2 0200114185751337587-88334 838-700ff6cf5482eb833a77c b9b25f396930a510619c75ed1 9b9bbead1ef6c39959-CC-574 97995-2020011418525286227 2 |
| 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 2194 (Rev 03/2012) |
| OMB No. 0651-0054 (Exp 12/31/2020) |
In the Office Action dated April 15, 2019, the Examining Attorney has rejected the present trademark application no. 88334838 under likelihood of confusion grounds based primarily on the existence of the mark having Reg. No. 3698834 for “Student Academy of Audiology” (abbreviated SAA), “Indicating membership in an association of students of the field of audiology” in Class 200 (hereinafter, Registrant).
The present application has been designated identification of “Charitable services, namely, providing a free online resource in the nature of a website for connecting people who have service needs with people who are willing to provide volunteer services” in Class 035 and “Charitable education services, namely, providing help to people who stutter in the field of stuttering; Charitable services, namely, academic mentoring of people who stutter to stop stuttering; Charitable services, namely, academic mentoring of people who stutter in the field of stuttering; Charitable services, namely, mentoring of people who stutter in the field of stuttering; Charitable services, namely, providing training in the field of helping people who stutter to stop stuttering; Charitable services, namely, providing tutoring in the field of helping people who stutter to stop stuttering” in Class 041.
As such, Applicant respectfully submits that the classes AND goods/services represented by Applicant’s mark are vastly different than Registrant’s mark.
Moreover, Applicant respectfully points out that although the same letters (i.e., “SAA”) are both visible in Applicant’s and Registrant’s marks, their arrangement on their respective logos are very different. Specifically, Applicant’s mark has a large S with smaller A’s above and below the large S, such that all the letters are within a “speech bubble.”
On the other hand, Registrant’s mark has an “S” followed by an “A” and another “A” in horizontal and linear succession. Furthermore, Registrant’s mark actually has the word identifiers surrounding the “SAA”, specifically “Student Academy of Audiology” in a circle around the “SAA.”
Additionally, Applicant is providing an example of the “H” logo for “Honda” and the “H” logo for “Hyundai,” with both classes being the same (i.e., class 011), and goods/service being the same (i.e., “headlights for vehicles”). However, as provided in the enclosed evidence, the “H” logo for “Honda” and the “H” logo for “Hyundai” use the same letter “H,” both marks have no other identifiers in their respective logos, both marks also represent car companies, and notwithstanding these facts, both marks have and have been allowed registration. In other words, people looking to purchase cars and/or headlights would be looking at both Honda and Hyundai brands, but the USPTO has still allowed registration based on the actual appearance of the “H” in the respective logos.
As such, for at least the reasons that (1) Applicant’s and Registrant’s marks are in different classes, (2) Applicant’s and Registrant’s marks identify different goods and services, (3) Applicant’s and Registrant’s marks are vastly different in appearance, (4) Registrant’s mark includes an identifier of “Student Academy of Audiology” in a circle around the “SAA,” and (5) Applicant’s and Registrant’s marks would not be searched by people in the same commerce channels, Applicant respectfully requests withdrawal of all rejections and allowance of Applicant’s mark.
