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
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
88465361 |
LAW OFFICE ASSIGNED |
LAW OFFICE 122 |
MARK SECTION |
MARK |
http://uspto.report/TM/88465361/mark.png |
LITERAL ELEMENT |
HARDCORE HUMANISM |
STANDARD CHARACTERS |
YES |
USPTO-GENERATED IMAGE |
YES |
MARK STATEMENT |
The mark consists of standard characters, without claim to any particular font style, size or color. |
ARGUMENT(S) |
Arguments in Support of Registration of Applied-for-Mark, HARDCORE HUMANISM, Serial #88465361, In Response to USPTO Office Action Letter Dated
9/4/19 I. Arguments Against Likelihood of Confusion under Section 2(d) The Applicant?s registration of HARDCORE HUMANISM is refused on the ground that the mark is similar to and likely to be confused
with the mark, INNER HUMANISM, Registration No. 3671754, in Class 44. In rejecting Applicant?s registration of HARDCORE HUMANISM, the Examining Attorney states that both Applicant?s mark and
Registrant?s mark share the word, HUMANISM, and that HUMANISM is the dominant element of both marks. The Examining Attorney finds that this similarity creates the same overall commercial impression
in the mind of the consumer, resulting in a likelihood of confusion. Applicant respectfully disagrees with this finding and requests that the Examining Attorney reconsider the refusal and allow
Applicant?s mark to be registered. The compared marks are not similar, and consumers would not be confused, mistaken or deceived as to the commercial source of the compared marks under Section 2(d),
because the essential characteristics of the services of the compared marks are unrelated and dissimilar in their cumulative effect as set forth below. A. Dominant Element of Applicant?s Mark and
Registrant?s Mark are Different The Examining Attorney determined that the shared term, HUMANISM, is the dominant element of the marks and, having the dominant element in common, Applicant and
Registrant?s marks are confusingly similar. However, it is the first word of a mark that is usually considered the dominant element. Consumers are more inclined to focus on the first word in any
trademark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1372 (Fed. Cir. 2005); Mattel Inc. v. Funline Merch. Co., 81 USPQ2d 1372, 1374-75 (TTAB 2006).
In fact, ?it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered? when making purchasing decisions. Presto Prods., Inc. v. Nice-Pak
Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988). In both marks in question, the word, HUMANISM, is the second and non-dominant term; thus, consumers will not focus on this shared term. Rather, in this
case, consumers will focus on the terms that the compared marks do not share in common. HARDCORE is the first word of Applicant?s mark, making it the term that consumers will remember and, therefore,
the dominant element of the mark. Further, since HARDCORE, the dominant element of Applicant?s mark, is not a term in Registrant?s mark, a reasonable consumer would not confuse the two marks as to
source and sponsorship. Here, consumers are more likely to perceive the dominant term, HARDCORE, as the source-indicating feature of the mark. In addition to being the second term in the compared
marks, the shared term, HUMANISM, is merely descriptive of the services provided by Applicant. See 396 F.3d at 1372. In fact, the word, HUMANISM, is not a fanciful or arbitrary term. Rather, it is
descriptive of the type of mental health therapy provided in the field of psychotherapy. According to the American Psychological Association, Humanism is one of five main categories of psychotherapy.
The others are Psychoanalysis/Psychodynamic, Behavior, Cognitive and Integrative. http://www.apa.org/topics/therapy/psychotherapy-approaches (February 21, 2020). While the compared marks may share
the weak term, HUMANISM, the Registrant does not specify the nature of its services as relating to Humanistic therapy at all. The services that INNER HUMANISM provides are simply ?psychotherapy
services? in Class 44. Assuming arguendo that the Registrant does provide Humanistic therapy as part of its ?psychotherapy services?, determining likelihood of confusion is based on the description
of the services stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F. 3d 1297, 307 (Fed. Cir. 2018). Thus, Registrant
cannot claim that ?psychotherapy services? includes Humanistic therapy, nor can the USPTO consider extrinsic evidence of actual use to assume that the Registrant does provide Humanistic therapy as
part of its ?psychotherapy services? in Class 44. B. The Marks are Dissimilar in their Entireties It is well-established that in determining whether marks are confusingly similar, the USPTO must
consider the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361
(C.C.P.A.1973). When comparing HARDCORE HUMANISM in its entirety to INNER HUMANISM, a reasonable consumer would clearly observe several dissimilarities between the marks. Other than sharing the term,
HUMANISM, which is the weak element of the marks and merely descriptive of the type of therapy being provided by Applicant as discussed above, the compared marks have nothing else in common. The
first word of Applicant?s mark is HARDCORE and the first word of the Registrant?s mark is INNER. The first words of the compared marks have only two letters in common, ?e? and ?r?, which are at the
end of the words and not in the same order. When spoken, the words INNER and HARDCORE do not sound similar; thus, a reasonable consumer would not mistakenly hear INNER HUMANISM when HARDCORE HUMANISM
is said. Additionally, the alliterative quality of HARDCORE HUMANISM, in that both words of the mark begin with the letter ?H?, distinguish the Applicant?s mark even further from the Registrant?s
mark. The letter ?H? at the start of each word creates an aspirated sound that, once alliterated, places the primary accent on the first syllables of each word in Applicant?s mark, thereby creating a
rhythm when spoken. This is a stress pattern that is different from the stress pattern in INNER HUMANISM where there is no rhythm created by saying the words INNER and HUMANISM together. The marks
are also dissimilar in meaning. INNER means ?situated inside or further in; internal? while HARDCORE means ?the most active, committed or strict members of a group or movement.? Lexico.com 2020.
http://www.lexico.com/en/definition/inner (February 21, 2020); http://www.lexico.com/en/definition/hardcore (February 21, 2020). The connotations of the compared marks have opposing trajectories as
well: INNER invokes a passive state of being hidden, obscured, and not obvious as in ?one?s inner artist?, while HARDCORE invokes a state of intense and extreme action. With such distinct
appearances, sounds, and meanings, the compared marks invoke different commercial impressions within the reasonable consumer. II. Dissimilarity of Services; Compared Marks Travel in Different Trade
Channels in Entirely Different Geographic Areas to Different Class of Consumers In refusing to register the Applicant?s mark, the Examining Attorney indicates that the services provided by Applicant
and Registrant are presumed to travel in the same channels of trade to the same class of consumers. However, one factor that must be considered when comparing the Applicant and Registrant?s marks is
the distant geographic location in which the two businesses operate. Even where two marks are nearly identical, courts may find no customer confusion if the two companies operate in entirely
different geographic areas. See Weiner King, Inc. v. Wiener King Corp., 615 F.2d 512, 515-22 (C.C.P.A. 1980) (allowing concurrent use of WEINER KING as a mark for restaurants in New Jersey and WIENER
KING as a mark for restaurants in North Carolina); Pinocchio's Pizza Inc. v. Sandra Inc., 11 U.S.P.Q.2d 1227, 1228 (T.T.A.B. 1989) (allowing concurrent use of PINOCCHIO'S as a service mark for
restaurants in Maryland and PINOCCHIOS as a service mark for restaurants elsewhere in the country). A consumer who is interested in purchasing mental health services does not casually choose a
therapist without knowing where the therapist is located. INNER HUMANISM is a business that, according to Registrant?s website, is highly localized, offering psychotherapy services only in Illinois.
HARDCORE HUMANISM is a business located in New York and New Jersey. Not only are the compared marks different in appearance, sound, and connotation, but they are for businesses that operate from
different states that are distant geographically; thus, a consumer looking for mental health services in New York and New Jersey cannot confuse the source of the marks in question when he/she/they
sees INNER HUMANISM, a business operating in Illinois. Selecting a mental health service provider is simply not an impulse purchase. In fact, purchaser sophistication tends to minimize likelihood of
confusion. See 396 F. 3d at 1376. A consumer does not simply open the yellow pages to look for a mental health professional providing Humanistic therapy. With immediately-available information online
and/or information from a referring physician, the consumer takes great care and time to find the appropriate mental health professional providing Humanistic therapy, and a referring physician would
not refer a patient needing specialized Humanistic therapy to a general psychotherapist. Thus, the consumer of HARDCORE HUMANISM is a knowledgeable and sophisticated consumer who has exercised a
great deal of care and due diligence to research the various fields of psychotherapy and specifically select HARDCORE HUMANISM for Humanistic therapy in New York and New Jersey, as opposed to one of
the other four (4) main categories of psychotherapy services listed above or the broadly worded ?psychotherapy services? provided by INNER HUMANISM in Illinois. The compared marks simply do not
travel in the same channels of trade to the same class of consumers. Again, assuming arguendo that the consumer of the compared marks might think that the marks are commercially related and from the
same source because of the shared term, HUMANISM, the term, HARDCORE, in the Applicant?s mark and INNER in the Registrant?s mark are the actual dominant source-indicating elements in the compared
marks and represent distinct and different services. The shared word in Applicant and Registrant?s marks, HUMANISM, is, in fact, the weak element of the compared marks. Consequently, a reasonable
consumer would focus on the dominant words - HARDCORE and INNER - and understand that the sources of these services are unrelated services offered by different business entities in different trade
channels. HARDCORE HUMANISM represents a dynamic, intense, and extreme action-oriented approach to Humanistic therapy, while INNER HUMANISM implies inward-looking therapy and, more importantly,
simply does not offer Humanistic therapy according to its registration in Class 44 as ?psychotherapy services?. It would be unreasonable to argue that Registrant?s ?psychotherapy services? in Class
44 could include Humanism, because the USPTO must then examine extrinsic evidence of actual use in contravention of well-established caselaw that requires only the examination of the services stated
in the application and registration at issue and conclude that a reasonable consumer selecting Applicant?s specific type of mental health therapy - Humanism - would instead select Registrant?s
general ?psychotherapy services?. By way of example, the term, ?doctor? refers to a multitude of different medical professionals. A consumer seeking the services of a cardiologist is not going to be
confused between the services of a cardiologist and a dermatologist as providing the same type or nature of services and/or stemming from the same commercial source simply because both medical
professionals use the word, ?doctor?, or the abbreviated form, ?Dr.? before their names. A reasonable consumer knows that the term, ?doctor?, encompasses multiple disciplines. Thus, a reasonable
consumer is not likely to assume that INNER HUMANISM and HARDCORE HUMANISM provide the same services and/or come from the same commercial source simply because the compared marks share the weak and
descriptive word, HUMANISM, just like a reasonable consumer knows that the term, ?doctor?, does not mean that a cardiologist provides the same services and/or comes from the same commercial source as
a dermatologist. III. Likelihood Versus Possibility of Confusion The mere possibility that reasonable consumers might relate the compared marks does not meet the statutorily established test of
likelihood of confusion. E.g. In re Hughes Aircraft Company, 222 U.S.P.Q. 263, 264 (TTAB 1984) (holding the Trademark Act does not preclude registration of a mark where there is a possibility of
confusion as to source or origin, only where such confusion is likely). A consumer is not likely to confuse INNER HUMANISM and HARDCORE HUMANISM, because, as detailed above, the dominant elements of
the marks are different, the shared word between the marks is the weak element, the marks do not sound or appear similar, they do not mean or connote similar things, the services provided take place
in distant geographic locations, and the compared marks are completely distinct and dissimilar in the channel of trade and class of consumers. Considering the foregoing reasoned explanations and the
requirement that the Applicant?s mark create a likelihood of confusion rather than a mere possibility of confusion with Registrant?s mark, it is respectfully requested that the Examining Attorney
withdraw the refusal to register Applicant?s mark. ?The commercial impression of a trademark is derived from it as a whole, not from its elements separated and considered in detail.? Estate of P.D.
Beckwith, Inc., v. Comm'r of Patents, 252 U.S. 538, 545?46 (1920). Here, as detailed above, the cumulative effect of differences in the essential characteristics of the services and differences in
the compared marks clearly show that the compared marks are dissimilar and commercially unrelated. Nevertheless, in order to remedy any possible likelihood of confusion under Section 2(d), the
following is the proposed amendment to the nature and description of the Applicant?s services and the type of consumer in Class 44: Psychological services, namely, providing clinical psychology
counseling services and executive and personal coaching services to adults pursuing humanistic therapy; consulting services in the field of clinical psychology relating to humanistic therapy. |
GOODS AND/OR SERVICES SECTION (044) (current) |
INTERNATIONAL CLASS |
044 |
DESCRIPTION |
clinical psychology services |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (044) (proposed) |
INTERNATIONAL CLASS |
044 |
TRACKED TEXT DESCRIPTION |
clinical psychology services; Psychological services, namely,
providing clinical psychology counseling services and executive and personal coaching services to adults pursuing humanistic therapy; consulting services in the
field of clinical psychology relating to humanistic therapy. |
FINAL DESCRIPTION |
Psychological services, namely, providing clinical psychology counseling services and executive and personal coaching services to
adults pursuing humanistic therapy; consulting services in the field of clinical psychology relating to humanistic therapy. |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (041)(class added) |
INTERNATIONAL CLASS |
041 |
DESCRIPTION |
Entertainment services featuring stories, news, information, interviews, and commentary in the nature of audio podcasts, webcasts,
videos, blogs, vlogs, and presentations in print media, social media, television, film, websites, symposia, events, concerts, and the internet in the field of entertainment relating to humanistic
therapy. |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (009)(class added) |
INTERNATIONAL CLASS |
009 |
DESCRIPTION |
Downloadable webcasts and audio podcasts featuring stories, news, information, interviews, and commentary in the field of humanistic
therapy. |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (025)(class added) |
INTERNATIONAL CLASS |
025 |
DESCRIPTION |
clothing, namely, t-shirts, sweatshirts, and hats. |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (016)(class added) |
INTERNATIONAL CLASS |
016 |
DESCRIPTION |
Posters. |
FILING BASIS |
Section 1(b) |
ATTORNEY INFORMATION (current) |
NAME |
Leila Zubi |
ATTORNEY BAR MEMBERSHIP NUMBER |
NOT SPECIFIED |
YEAR OF ADMISSION |
NOT SPECIFIED |
U.S. STATE/ COMMONWEALTH/ TERRITORY |
NOT SPECIFIED |
FIRM NAME |
ZUBI ROSNER, LLP |
INTERNAL ADDRESS |
1115 BROADWAY, 12TH FLOOR |
STREET |
1115 BROADWAY, 12TH FLOOR |
CITY |
NEW YORK |
STATE |
New York |
POSTAL CODE |
10010 |
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
United States |
PHONE |
212-202-0954 |
FAX |
212-918-9059 |
EMAIL |
lzubi@zubirosner.com |
ATTORNEY INFORMATION (proposed) |
NAME |
Leila Zubi |
ATTORNEY BAR MEMBERSHIP NUMBER |
XXX |
YEAR OF ADMISSION |
XXXX |
U.S. STATE/ COMMONWEALTH/ TERRITORY |
XX |
FIRM NAME |
ZUBI ROSNER, LLP |
INTERNAL ADDRESS |
1115 BROADWAY, 12TH FLOOR |
STREET |
1115 BROADWAY, 12TH FLOOR |
CITY |
NEW YORK |
STATE |
New York |
POSTAL CODE |
10010 |
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
United States |
PHONE |
212-202-0954 |
FAX |
212-918-9059 |
EMAIL |
Lzubi2016@gmail.com |
CORRESPONDENCE INFORMATION (current) |
NAME |
LEILA ZUBI |
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE |
lzubi@zubirosner.com |
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) |
lzubi2016@gmail.com |
CORRESPONDENCE INFORMATION (proposed) |
NAME |
Leila Zubi |
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE |
Lzubi2016@gmail.com |
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) |
Lzubi@zubirosner.com |
PAYMENT SECTION |
APPLICATION FOR REGISTRATION PER CLASS |
275 |
NUMBER OF CLASSES |
4 |
TOTAL FEES DUE |
1100 |
SIGNATURE SECTION |
DECLARATION SIGNATURE |
/Leila Zubi/ |
SIGNATORY'S NAME |
Leila Zubi |
SIGNATORY'S POSITION |
Attorney of record |
SIGNATORY'S PHONE NUMBER |
212-202-0954 |
DATE SIGNED |
02/21/2020 |
RESPONSE SIGNATURE |
/Leila Zubi/ |
SIGNATORY'S NAME |
Leila Zubi |
SIGNATORY'S POSITION |
Attorney of record |
SIGNATORY'S PHONE NUMBER |
212-202-0954 |
DATE SIGNED |
02/21/2020 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Fri Feb 21 10:16:04 ET 2020 |
TEAS STAMP |
USPTO/ROA-XXXX:XXXX:XXXX:
XXXX:XXXX:XXXX:XXXX:XXXX-
20200221101604807348-8846
5361-71089314ea137ff7dda7
ceed5373307b7fa47e8fcb4b9
34c3bd59df8aa8102c-CC-160
35880-2020022109324381915
4 |
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.
88465361 HARDCORE HUMANISM(Standard Characters, see http://uspto.report/TM/88465361/mark.png) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
Arguments in Support of Registration of Applied-for-Mark, HARDCORE HUMANISM, Serial #88465361, In Response to USPTO Office Action Letter Dated 9/4/19 I. Arguments Against Likelihood of Confusion
under Section 2(d) The Applicant?s registration of HARDCORE HUMANISM is refused on the ground that the mark is similar to and likely to be confused with the mark, INNER HUMANISM, Registration No.
3671754, in Class 44. In rejecting Applicant?s registration of HARDCORE HUMANISM, the Examining Attorney states that both Applicant?s mark and Registrant?s mark share the word, HUMANISM, and that
HUMANISM is the dominant element of both marks. The Examining Attorney finds that this similarity creates the same overall commercial impression in the mind of the consumer, resulting in a likelihood
of confusion. Applicant respectfully disagrees with this finding and requests that the Examining Attorney reconsider the refusal and allow Applicant?s mark to be registered. The compared marks are
not similar, and consumers would not be confused, mistaken or deceived as to the commercial source of the compared marks under Section 2(d), because the essential characteristics of the services of
the compared marks are unrelated and dissimilar in their cumulative effect as set forth below. A. Dominant Element of Applicant?s Mark and Registrant?s Mark are Different The Examining Attorney
determined that the shared term, HUMANISM, is the dominant element of the marks and, having the dominant element in common, Applicant and Registrant?s marks are confusingly similar. However, it is
the first word of a mark that is usually considered the dominant element. Consumers are more inclined to focus on the first word in any trademark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F. 3d 1369, 1372 (Fed. Cir. 2005); Mattel Inc. v. Funline Merch. Co., 81 USPQ2d 1372, 1374-75 (TTAB 2006). In fact, ?it is often the first part of a mark which is most
likely to be impressed upon the mind of a purchaser and remembered? when making purchasing decisions. Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988). In both marks in
question, the word, HUMANISM, is the second and non-dominant term; thus, consumers will not focus on this shared term. Rather, in this case, consumers will focus on the terms that the compared marks
do not share in common. HARDCORE is the first word of Applicant?s mark, making it the term that consumers will remember and, therefore, the dominant element of the mark. Further, since HARDCORE, the
dominant element of Applicant?s mark, is not a term in Registrant?s mark, a reasonable consumer would not confuse the two marks as to source and sponsorship. Here, consumers are more likely to
perceive the dominant term, HARDCORE, as the source-indicating feature of the mark. In addition to being the second term in the compared marks, the shared term, HUMANISM, is merely descriptive of the
services provided by Applicant. See 396 F.3d at 1372. In fact, the word, HUMANISM, is not a fanciful or arbitrary term. Rather, it is descriptive of the type of mental health therapy provided in the
field of psychotherapy. According to the American Psychological Association, Humanism is one of five main categories of psychotherapy. The others are Psychoanalysis/Psychodynamic, Behavior, Cognitive
and Integrative. http://www.apa.org/topics/therapy/psychotherapy-approaches (February 21, 2020). While the compared marks may share the weak term, HUMANISM, the Registrant does not specify the
nature of its services as relating to Humanistic therapy at all. The services that INNER HUMANISM provides are simply ?psychotherapy services? in Class 44. Assuming arguendo that the Registrant does
provide Humanistic therapy as part of its ?psychotherapy services?, determining likelihood of confusion is based on the description of the services stated in the application and registration at
issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F. 3d 1297, 307 (Fed. Cir. 2018). Thus, Registrant cannot claim that ?psychotherapy services? includes Humanistic
therapy, nor can the USPTO consider extrinsic evidence of actual use to assume that the Registrant does provide Humanistic therapy as part of its ?psychotherapy services? in Class 44. B. The Marks
are Dissimilar in their Entireties It is well-established that in determining whether marks are confusingly similar, the USPTO must consider the similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation, and commercial impression. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A.1973). When comparing HARDCORE HUMANISM in its
entirety to INNER HUMANISM, a reasonable consumer would clearly observe several dissimilarities between the marks. Other than sharing the term, HUMANISM, which is the weak element of the marks and
merely descriptive of the type of therapy being provided by Applicant as discussed above, the compared marks have nothing else in common. The first word of Applicant?s mark is HARDCORE and the first
word of the Registrant?s mark is INNER. The first words of the compared marks have only two letters in common, ?e? and ?r?, which are at the end of the words and not in the same order. When spoken,
the words INNER and HARDCORE do not sound similar; thus, a reasonable consumer would not mistakenly hear INNER HUMANISM when HARDCORE HUMANISM is said. Additionally, the alliterative quality of
HARDCORE HUMANISM, in that both words of the mark begin with the letter ?H?, distinguish the Applicant?s mark even further from the Registrant?s mark. The letter ?H? at the start of each word creates
an aspirated sound that, once alliterated, places the primary accent on the first syllables of each word in Applicant?s mark, thereby creating a rhythm when spoken. This is a stress pattern that is
different from the stress pattern in INNER HUMANISM where there is no rhythm created by saying the words INNER and HUMANISM together. The marks are also dissimilar in meaning. INNER means ?situated
inside or further in; internal? while HARDCORE means ?the most active, committed or strict members of a group or movement.? Lexico.com 2020. http://www.lexico.com/en/definition/inner (February 21,
2020); http://www.lexico.com/en/definition/hardcore (February 21, 2020). The connotations of the compared marks have opposing trajectories as well: INNER invokes a passive state of being hidden,
obscured, and not obvious as in ?one?s inner artist?, while HARDCORE invokes a state of intense and extreme action. With such distinct appearances, sounds, and meanings, the compared marks invoke
different commercial impressions within the reasonable consumer. II. Dissimilarity of Services; Compared Marks Travel in Different Trade Channels in Entirely Different Geographic Areas to Different
Class of Consumers In refusing to register the Applicant?s mark, the Examining Attorney indicates that the services provided by Applicant and Registrant are presumed to travel in the same channels of
trade to the same class of consumers. However, one factor that must be considered when comparing the Applicant and Registrant?s marks is the distant geographic location in which the two businesses
operate. Even where two marks are nearly identical, courts may find no customer confusion if the two companies operate in entirely different geographic areas. See Weiner King, Inc. v. Wiener King
Corp., 615 F.2d 512, 515-22 (C.C.P.A. 1980) (allowing concurrent use of WEINER KING as a mark for restaurants in New Jersey and WIENER KING as a mark for restaurants in North Carolina); Pinocchio's
Pizza Inc. v. Sandra Inc., 11 U.S.P.Q.2d 1227, 1228 (T.T.A.B. 1989) (allowing concurrent use of PINOCCHIO'S as a service mark for restaurants in Maryland and PINOCCHIOS as a service mark for
restaurants elsewhere in the country). A consumer who is interested in purchasing mental health services does not casually choose a therapist without knowing where the therapist is located. INNER
HUMANISM is a business that, according to Registrant?s website, is highly localized, offering psychotherapy services only in Illinois. HARDCORE HUMANISM is a business located in New York and New
Jersey. Not only are the compared marks different in appearance, sound, and connotation, but they are for businesses that operate from different states that are distant geographically; thus, a
consumer looking for mental health services in New York and New Jersey cannot confuse the source of the marks in question when he/she/they sees INNER HUMANISM, a business operating in Illinois.
Selecting a mental health service provider is simply not an impulse purchase. In fact, purchaser sophistication tends to minimize likelihood of confusion. See 396 F. 3d at 1376. A consumer does not
simply open the yellow pages to look for a mental health professional providing Humanistic therapy. With immediately-available information online and/or information from a referring physician, the
consumer takes great care and time to find the appropriate mental health professional providing Humanistic therapy, and a referring physician would not refer a patient needing specialized Humanistic
therapy to a general psychotherapist. Thus, the consumer of HARDCORE HUMANISM is a knowledgeable and sophisticated consumer who has exercised a great deal of care and due diligence to research the
various fields of psychotherapy and specifically select HARDCORE HUMANISM for Humanistic therapy in New York and New Jersey, as opposed to one of the other four (4) main categories of psychotherapy
services listed above or the broadly worded ?psychotherapy services? provided by INNER HUMANISM in Illinois. The compared marks simply do not travel in the same channels of trade to the same class of
consumers. Again, assuming arguendo that the consumer of the compared marks might think that the marks are commercially related and from the same source because of the shared term, HUMANISM, the
term, HARDCORE, in the Applicant?s mark and INNER in the Registrant?s mark are the actual dominant source-indicating elements in the compared marks and represent distinct and different services. The
shared word in Applicant and Registrant?s marks, HUMANISM, is, in fact, the weak element of the compared marks. Consequently, a reasonable consumer would focus on the dominant words - HARDCORE and
INNER - and understand that the sources of these services are unrelated services offered by different business entities in different trade channels. HARDCORE HUMANISM represents a dynamic, intense,
and extreme action-oriented approach to Humanistic therapy, while INNER HUMANISM implies inward-looking therapy and, more importantly, simply does not offer Humanistic therapy according to its
registration in Class 44 as ?psychotherapy services?. It would be unreasonable to argue that Registrant?s ?psychotherapy services? in Class 44 could include Humanism, because the USPTO must then
examine extrinsic evidence of actual use in contravention of well-established caselaw that requires only the examination of the services stated in the application and registration at issue and
conclude that a reasonable consumer selecting Applicant?s specific type of mental health therapy - Humanism - would instead select Registrant?s general ?psychotherapy services?. By way of example,
the term, ?doctor? refers to a multitude of different medical professionals. A consumer seeking the services of a cardiologist is not going to be confused between the services of a cardiologist and a
dermatologist as providing the same type or nature of services and/or stemming from the same commercial source simply because both medical professionals use the word, ?doctor?, or the abbreviated
form, ?Dr.? before their names. A reasonable consumer knows that the term, ?doctor?, encompasses multiple disciplines. Thus, a reasonable consumer is not likely to assume that INNER HUMANISM and
HARDCORE HUMANISM provide the same services and/or come from the same commercial source simply because the compared marks share the weak and descriptive word, HUMANISM, just like a reasonable
consumer knows that the term, ?doctor?, does not mean that a cardiologist provides the same services and/or comes from the same commercial source as a dermatologist. III. Likelihood Versus
Possibility of Confusion The mere possibility that reasonable consumers might relate the compared marks does not meet the statutorily established test of likelihood of confusion. E.g. In re Hughes
Aircraft Company, 222 U.S.P.Q. 263, 264 (TTAB 1984) (holding the Trademark Act does not preclude registration of a mark where there is a possibility of confusion as to source or origin, only where
such confusion is likely). A consumer is not likely to confuse INNER HUMANISM and HARDCORE HUMANISM, because, as detailed above, the dominant elements of the marks are different, the shared word
between the marks is the weak element, the marks do not sound or appear similar, they do not mean or connote similar things, the services provided take place in distant geographic locations, and the
compared marks are completely distinct and dissimilar in the channel of trade and class of consumers. Considering the foregoing reasoned explanations and the requirement that the Applicant?s mark
create a likelihood of confusion rather than a mere possibility of confusion with Registrant?s mark, it is respectfully requested that the Examining Attorney withdraw the refusal to register
Applicant?s mark. ?The commercial impression of a trademark is derived from it as a whole, not from its elements separated and considered in detail.? Estate of P.D. Beckwith, Inc., v. Comm'r of
Patents, 252 U.S. 538, 545?46 (1920). Here, as detailed above, the cumulative effect of differences in the essential characteristics of the services and differences in the compared marks clearly show
that the compared marks are dissimilar and commercially unrelated. Nevertheless, in order to remedy any possible likelihood of confusion under Section 2(d), the following is the proposed amendment to
the nature and description of the Applicant?s services and the type of consumer in Class 44: Psychological services, namely, providing clinical psychology counseling services and executive and
personal coaching services to adults pursuing humanistic therapy; consulting services in the field of clinical psychology relating to humanistic therapy.
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 044 for clinical psychology services
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: clinical psychology services;
Psychological services, namely, providing clinical psychology
counseling services and executive and personal coaching services to adults pursuing humanistic therapy;
consulting services in the field of clinical psychology
relating to humanistic therapy.Class 044 for Psychological services, namely, providing clinical psychology counseling services and executive and personal coaching services to adults pursuing
humanistic therapy; consulting services in the field of clinical psychology relating to humanistic therapy.
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 hereby adds the following class of goods/services to the application:
New: Class 041 for Entertainment services featuring stories, news, information, interviews, and commentary in the nature of audio podcasts, webcasts, videos, blogs, vlogs, and presentations in
print media, social media, television, film, websites, symposia, events, concerts, and the internet in the field of entertainment relating to humanistic therapy.
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 hereby adds the following class of goods/services to the application:
New: Class 009 for Downloadable webcasts and audio podcasts featuring stories, news, information, interviews, and commentary in the field of humanistic therapy.
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 hereby adds the following class of goods/services to the application:
New: Class 025 for clothing, namely, t-shirts, sweatshirts, and hats.
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 hereby adds the following class of goods/services to the application:
New: Class 016 for Posters.
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.
The owner's/holder's current attorney information: Leila Zubi. Leila Zubi of ZUBI ROSNER, LLP, is located at
1115 BROADWAY, 12TH FLOOR
1115 BROADWAY, 12TH FLOOR
NEW YORK, New York 10010
United States
The phone number is 212-202-0954.
The fax number is 212-918-9059.
The email address is lzubi@zubirosner.com
The owner's/holder's proposed attorney information: Leila Zubi. Leila Zubi of ZUBI ROSNER, LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at
1115 BROADWAY, 12TH FLOOR
1115 BROADWAY, 12TH FLOOR
NEW YORK, New York 10010
United States
The phone number is 212-202-0954.
The fax number is 212-918-9059.
The email address is Lzubi2016@gmail.com
Leila Zubi submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S.
Commonwealth or territory.
Correspondence Information (current):
LEILA ZUBI
PRIMARY EMAIL FOR CORRESPONDENCE: lzubi@zubirosner.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): lzubi2016@gmail.com
Correspondence Information (proposed):
Leila Zubi
PRIMARY EMAIL FOR CORRESPONDENCE: Lzubi2016@gmail.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): Lzubi@zubirosner.com
Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all
official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).
FEE(S)
Fee(s) in the amount of $1100 is being submitted.
SIGNATURE(S)
Declaration Signature
DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful
false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or
allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this
submission made on information and belief are believed to be true.
STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally
believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in
connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of
the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective
membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over
the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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.
To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either
in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion
or mistake, or to deceive.
STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C.
§§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark
application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the
mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or
certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention,
and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of
the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other
persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be
likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.
Signature: /Leila Zubi/ Date: 02/21/2020
Signatory's Name: Leila Zubi
Signatory's Position: Attorney of record
Signatory's Phone Number: 212-202-0954
Response Signature
Signature: /Leila Zubi/ Date: 02/21/2020
Signatory's Name: Leila Zubi
Signatory's Position: Attorney of record
Signatory's Phone Number: 212-202-0954
The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and
any U.S. Commonwealth or territory); 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.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed
revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter;
or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.
Mailing Address: LEILA ZUBI
ZUBI ROSNER, LLP
1115 BROADWAY, 12TH FLOOR
1115 BROADWAY, 12TH FLOOR
NEW YORK, New York 10010
Mailing Address: Leila Zubi
ZUBI ROSNER, LLP
1115 BROADWAY, 12TH FLOOR
1115 BROADWAY, 12TH FLOOR
NEW YORK, New York 10010
RAM Sale Number: 88465361
RAM Accounting Date: 02/21/2020
Serial Number: 88465361
Internet Transmission Date: Fri Feb 21 10:16:04 ET 2020
TEAS Stamp: USPTO/ROA-XXXX:XXXX:XXXX:XXXX:XXXX:XXXX:
XXXX:XXXX-20200221101604807348-88465361-
71089314ea137ff7dda7ceed5373307b7fa47e8f
cb4b934c3bd59df8aa8102c-CC-16035880-2020
0221093243819154