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 11/30/2023)

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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 11/30/2023)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88477225 TILCARE (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8847722 5/large) has been amended as follows:

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

This Response is to the Office Action issued by Examiner for Applicant?s pending application, ?Tilcare? and design, serial # 88477225 (?Mark?). This Response addresses the concerns as raised by Examiner. I. Refusal Based on Alleged Confusion, Section 2(d) Examiner asserts that the Mark would cause a likelihood of confusion with the following cited mark (?Cited Mark?): U.S. Registration No. 5974615, for the word mark, ?Tillacare,? for the goods, Medical devices for the collection of urine in elderly, infirm and incontinent persons, namely, non-invasive catheters. Applicant respectfully disagrees with the refusal and submits that there is not a likelihood of confusion with the Cited Mark for the reasons set forth below. Review of 2(d) Confusion The courts have long followed the eight-part Polaroid test in determining the likelihood of confusion between marks. See Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961). This test requires analysis of several non-exclusive factors, including: (1) the strength of the mark, (2) the degree of similarity between the two marks, (3) the competitive proximity of the products, (4) actual confusion, (5) the likelihood the plaintiff will bridge the gap, (6) the defendant's good faith in adopting its mark, (7) the quality of the defendant's products, and (8) the sophistication of the purchasers. See also, Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254, 256 (2d Cir. 1987). No single factor set forth above is dispositive, nor is a court limited to consideration of only these factors. See Polaroid, 287 F.2d at 495. Further, "each factor must be evaluated in the context of how it bears on the ultimate question of likelihood of confusion as to the source of the product." Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867, 872 (2d Cir. 1986). In fact, courts have noted that the eight-factor test is a "pliant" one, in which "some factors are much more important than others." See, Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1054 (9th Cir. 1999). And when determining whether likelihood of confusion exists, it must be determined that "an appreciable number of ordinarily prudent purchasers are likely to be misled, or indeed simply confused, as to the source of the goods in question." See, Mushroom Makers, Inc. v. R.G. Barry Corp., 580 F.2d 44,47, 199 U.S.P.Q. (BNA) 65,66 (2d Cir. 1978). This concept is further solidified in Dreamwerks Prod. Group, Inc. v. SKG Studio, 142 F.3d 1127, 1129 (9th Cir. 1998) ("The test for likelihood of confusion is whether a reasonably prudent consumer in the marketplace is likely to be confused as to the origin of the good or service bearing one of the marks.") Visual Difference of Cited Mark and Mark When viewing the Mark and Cited Mark in light of the second Polaroid factor, Applicant contends that the Mark and the Cited Mark, when compared in their totality, are different in appearance and connotation. This is especially true when considering the Mark is spelled differently and includes a substantial design element and the Cited Mark is just words. The difference between the Mark and the Cited Mark is at least as great as in other analogous cases where no likelihood of confusion was found. See Moose Creek, Inc. v. Abercrombie & Fitch Co., 331 F.Supp.2d 1214 (C.D. Cal. 2004) (?Although the words ?moose? and ?Moose Creek? [for use in connection with clothing] sound similar to the extent that they contain an overlapping word, on the whole they sound different because ?Moose Creek? contains an additional word (i.e., ?Creek?). Moreover, the words ?Moose Creek? connote a particular creek, whereas the word ?moose? connotes a type of wild animal.?); see also Interstate Brands Corp. v. Celestial Seasonings, Inc., 576 F.2d 926, 928 (CCPA 1978) (RED ZINGER for herb tea is distinguishable from ZINGERS for cakes); Pure Gold, Inc. v. Syntex (USA), Inc., 739 F.2d 624 (Fed. Cir. 1984) (FERMODYL PURE GOLD is distinguishable from PURE GOLD). Using the reasonable consumer test, no confusion would occur. Sophistication of Purchasers Involved When viewed in light of the eighth Polaroid factor, courts generally hold that if a consumer can be expected to exercise a high degree of care, they will be less likely to be confused by any connection between a senior and junior trademark. A sophisticated consumer is one who is apt to spend more time, attention, or care in making a purchasing decision and who is thus deemed less likely to be confused as to the source of goods and services. Analysis of case law shows that consumer care or sophistication correlates positively with price, length, purchase research, and complexity of the purchase transaction; infrequency of purchase; and the notion that buyers of specialized goods are generally more sophisticated than an average consumer. When looking at the goods offered by the Cited Mark and the Mark, the goods sold by Applicant are not a common consumer purchase. In fact, these goods are generally purchased by a highly sophisticated purchaser, far more aware of the marketplace than a typical consumer, due to their nature. As shown in In re N.A.D., Inc., 754 F.2d 996, 999-1000, 224 USPQ 969, 971 (Fed. Cir. 1985), sophisticated purchasers who are exercising great care when purchasing the relevant goods, would not be confused due to similarity in marks (in this case, the marks were NARCO and NARKOMED). As such, a purchaser of Applicant?s goods will know exactly who they are dealing with, as they will have researched, priced, and compared such goods prior to purchase, unlike the goods offered under the Cited Mark which are clearly common consumer goods. Quite simply, there will be no likelihood of confusion as a result. Summary Given all the evidence above, Applicant contends that a reasonable consumer would not be confused by the Mark in regards to the Cited Mark, nor would the Cited Mark otherwise be damaged or diluted by registration of the Mark. As such, Applicant asserts that there are insufficient grounds to meet the requirements of a Section 2(d) rejection of the Mark when viewed in the totality of these facts. II. Conclusion In view of the foregoing arguments and evidence, Applicant respectfully submits that this application is in condition for publication. Favorable reconsideration and prompt publication of the Mark is respectfully requested. If Examiner has anything further that would be required to place this Application in better condition for publication, such as a reduction in class IDs, Examiner is encouraged to contact Applicant's attorney.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Tilen Tercelj Schweizer, a citizen of Slovenia, having an address of
      Kocenska 11
      Ljubljana, 1000
      Slovenia

Proposed: Schweizer, Tilen Tercelj, a citizen of Slovenia, having an address of
      Kocenska 11
      Ljubljana, 1000
      Slovenia
      Email Address: XXXX
Correspondence Information (current):
      Curt Handley, Esq.
      PRIMARY EMAIL FOR CORRESPONDENCE: curt@intuitlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is Tilcare Lg.
Correspondence Information (proposed):
      Curt Handley, Esq.
      PRIMARY EMAIL FOR CORRESPONDENCE: curt@intuitlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is Tilcare Lg.

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).

SIGNATURE(S)
Response Signature
Signature: /Curt Handley, Esq./     Date: 11/26/2020
Signatory's Name: Curt Handley, Esq.
Signatory's Position: Attorney of Record, IL Bar Member

Signatory's Phone Number: 888-932-5291

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:    Curt Handley, Esq.
   LAW OFFICE OF CURT HANDLEY
   
   19540 BUCKINGHAM DR. SUITE 1
   MOKENA, Illinois 60448
Mailing Address:    Curt Handley, Esq.
   LAW OFFICE OF CURT HANDLEY
   19540 BUCKINGHAM DR. SUITE 1
   MOKENA, Illinois 60448
        
Serial Number: 88477225
Internet Transmission Date: Thu Nov 26 16:46:59 ET 2020
TEAS Stamp: USPTO/ROA-XXXX:XXXX:XXXX:XXXX:XXXX:XXXX:
XXXX:XXXX-20201126164659407301-88477225-
7503abb35c71ee48c38b439b0ab7f3b96d084df1
45c70ef638e1510f24c3ecee955-N/A-N/A-2020
1126162111646940