| 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) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88352642 |
| LAW OFFICE ASSIGNED | LAW OFFICE 107 |
| MARK SECTION | |
| MARK FILE NAME | http://uspto.report/TM/88352642/mark.png |
| LITERAL ELEMENT | LINK |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| ARGUMENT(S) | |
|
REMARKS
In response to the Office Action of 11 June 2019, Applicant submits the following;
Likelihood of Confusion
The Examining Attorney has initially refused registration of the mark of the subject application under Section 2(d) of the Trademark Act based on alleged likelihood of confusion, due to the presence of 14 registrations for marks incorporating the LINK term; and has noted the presence of prior pending Application No. 88/071929 for the mark YOUR LINK TO BENEFITS.
Applicant respectfully submits that there is no likelihood of confusion between the applied for [LINK] mark and the cited LINK formative marks and the noted YOUR LINK TO BENEFITS mark. As the Examining Attorney is aware, when determining whether a likelihood of confusion exists between a currently registered mark and a mark submitted by an applicant seeking registration, an Examining Attorney must consider a number of factors, including: the similarity or dissimilarity of marks in their entirety (appearance, sound, commercial impression); the similarity or dissimilarity of goods or services; similarity or dissimilarity of trade channels; the conditions of sale (impulse vs. planned i.e., sophistication of purchasers); and the number of similar marks used on similar goods. G.H. Mumm & Cie v. Desnoes & Geddes, Ltd., 16 USPQ 2d 1635, 1637-38 (Fed. Cir. 1990) (attributing the factors to In re E.I. DuPont de Nemours & Co., 177 USPQ 563, 567 (CCPA 1973)).
Applicant’s mark is [LINK] while the marks of the cited registrations and noted application all incorporate the LINK term + additional wording. Although the respective marks may share the term LINK, the Registrants’ marks are clearly different in sight, sound, and meaning, due to the inclusion of other terms, such as CORE, INCOME and FLEX, for example. Furthermore, Applicant’s inclusion of the unique bracket design element only serves to further distinguish the applied for mark from the cited LINK formative marks. Regardless of whether the respective marks share the term LINK, the cited and noted marks should not be entitled to the broad scope of protection accorded to them by the Examining Attorney, due to the existence of multiple registrations for various other LINK formative marks covering a wide variety of goods and services. In view of the foregoing, it is respectfully requested that the potential refusal of registration under Section 2(d) be withdrawn.
Request for Amendment of Description of Goods and Services
The Examining Attorney has requested that the Applicant amend the identification of goods and services asserting that the present identification is indefinite and that the identification must identify the common commercial wording for the goods and services. Applicant respectfully disagrees with the Examining Attorney's assertion and submits that the common commercial names for these goods and services are already present in the original identification.
Foreign Registration Basis
Applicant wishes to advise the Examining Attorney that its priority Canadian application has not yet matured to registration and therefore, Applicant wishes to maintain both the Section 44 basis and Section 1(b) basis of the application until such time that it is specifically indicated otherwise. Accordingly, Applicant requests that prosecution of the subject application be suspended pending disposition of the Applicant’s priority Canadian application.
Conclusion
In view of the foregoing, it is respectfully requested that the likelihood of confusion refusal be withdrawn and that prosecution of the subject application be suspended pending disposition of the Applicant’s priority Canadian Application. Further and favorable action in connection with this application is earnestly solicited.
|
|
| ATTORNEY SECTION (current) | |
| NAME | Michael J. Leonard |
| ATTORNEY BAR MEMBERSHIP NUMBER | NOT SPECIFIED |
| YEAR OF ADMISSION | NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | NOT SPECIFIED |
| FIRM NAME | Fox Rothschild LLP |
| STREET | 997 Lenox Drive, Bldg. 3 |
| CITY | Lawrenceville |
| STATE | New Jersey |
| POSTAL CODE | 08648-2311 |
| COUNTRY | US |
| PHONE | 2152992085 |
| ipdocket@foxrothschild.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 186965. |
| ATTORNEY SECTION (proposed) | |
| NAME | Michael J. Leonard |
| ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
| YEAR OF ADMISSION | XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
| FIRM NAME | Fox Rothschild LLP |
| STREET | 997 Lenox Drive, Bldg. 3 |
| CITY | Lawrenceville |
| STATE | New Jersey |
| POSTAL CODE | 08648-2311 |
| COUNTRY | United States |
| PHONE | 2152992085 |
| ipdocket@foxrothschild.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 186965.00019 |
| OTHER APPOINTED ATTORNEY | Christopher D. Olszyk, Jr. |
| CORRESPONDENCE SECTION (current) | |
| NAME | Michael J. Leonard |
| FIRM NAME | Fox Rothschild LLP |
| STREET | 997 Lenox Drive, Bldg. 3 |
| CITY | Lawrenceville |
| STATE | New Jersey |
| POSTAL CODE | 08648-2311 |
| COUNTRY | US |
| PHONE | 2152992085 |
| ipdocket@foxrothschild.com; mleonard@foxrothschild.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 186965. |
| CORRESPONDENCE SECTION (proposed) | |
| NAME | Michael J. Leonard |
| FIRM NAME | Fox Rothschild LLP |
| STREET | 997 Lenox Drive, Bldg. 3 |
| CITY | Lawrenceville |
| STATE | New Jersey |
| POSTAL CODE | 08648-2311 |
| COUNTRY | United States |
| PHONE | 2152992085 |
| ipdocket@foxrothschild.com; mleonard@foxrothschild.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 186965.00019 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /mjl/ |
| SIGNATORY'S NAME | Michael J. Leonard |
| SIGNATORY'S POSITION | Attorney of Record, PA Bar Member |
| DATE SIGNED | 12/11/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Dec 11 14:33:46 EST 2019 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XXX.XX- 20191211143346303584-8835 2642-700c833ab3917e5df72c 1a29d51a3484811a9746401e1 f8e917c7fa9de9ca59116-N/A -N/A-20191211142933532694 |
| 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) |
REMARKS
In response to the Office Action of 11 June 2019, Applicant submits the following;
Likelihood of Confusion
The Examining Attorney has initially refused registration of the mark of the subject application under Section 2(d) of the Trademark Act based on alleged likelihood of confusion, due to the presence of 14 registrations for marks incorporating the LINK term; and has noted the presence of prior pending Application No. 88/071929 for the mark YOUR LINK TO BENEFITS.
Applicant respectfully submits that there is no likelihood of confusion between the applied for [LINK] mark and the cited LINK formative marks and the noted YOUR LINK TO BENEFITS mark. As the Examining Attorney is aware, when determining whether a likelihood of confusion exists between a currently registered mark and a mark submitted by an applicant seeking registration, an Examining Attorney must consider a number of factors, including: the similarity or dissimilarity of marks in their entirety (appearance, sound, commercial impression); the similarity or dissimilarity of goods or services; similarity or dissimilarity of trade channels; the conditions of sale (impulse vs. planned i.e., sophistication of purchasers); and the number of similar marks used on similar goods. G.H. Mumm & Cie v. Desnoes & Geddes, Ltd., 16 USPQ 2d 1635, 1637-38 (Fed. Cir. 1990) (attributing the factors to In re E.I. DuPont de Nemours & Co., 177 USPQ 563, 567 (CCPA 1973)).
Applicant’s mark is [LINK] while the marks of the cited registrations and noted application all incorporate the LINK term + additional wording. Although the respective marks may share the term LINK, the Registrants’ marks are clearly different in sight, sound, and meaning, due to the inclusion of other terms, such as CORE, INCOME and FLEX, for example. Furthermore, Applicant’s inclusion of the unique bracket design element only serves to further distinguish the applied for mark from the cited LINK formative marks. Regardless of whether the respective marks share the term LINK, the cited and noted marks should not be entitled to the broad scope of protection accorded to them by the Examining Attorney, due to the existence of multiple registrations for various other LINK formative marks covering a wide variety of goods and services. In view of the foregoing, it is respectfully requested that the potential refusal of registration under Section 2(d) be withdrawn.
Request for Amendment of Description of Goods and Services
The Examining Attorney has requested that the Applicant amend the identification of goods and services asserting that the present identification is indefinite and that the identification must identify the common commercial wording for the goods and services. Applicant respectfully disagrees with the Examining Attorney's assertion and submits that the common commercial names for these goods and services are already present in the original identification.
Foreign Registration Basis
Applicant wishes to advise the Examining Attorney that its priority Canadian application has not yet matured to registration and therefore, Applicant wishes to maintain both the Section 44 basis and Section 1(b) basis of the application until such time that it is specifically indicated otherwise. Accordingly, Applicant requests that prosecution of the subject application be suspended pending disposition of the Applicant’s priority Canadian application.
Conclusion
In view of the foregoing, it is respectfully requested that the likelihood of confusion refusal be withdrawn and that prosecution of the subject application be suspended pending disposition of the Applicant’s priority Canadian Application. Further and favorable action in connection with this application is earnestly solicited.