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. 88486267 TWENTY2 (Stylized and/or with Design, see http://uspto.report/TM/88486267/mark.png) has been amended as follows:

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

To begin a likelihood of confusion analysis the du Pont factors must be considered. Although the weight given to the relevant du Pont factors may vary, the following two factors are key considerations in any likelihood of confusion determination: the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression and the relatedness of the goods or services as described in the application and registration(s). See, e.g., Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976); In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1244 (TTAB 2010); In re Thor Tech, Inc., 90 USPQ2d 1634, 1635 (TTAB 2009). Turning to the first du Pont factor, the similarity of the marks. The applied-for mark is ?TWENTY2? in a stylized form. The Cited Registration is ?22? where one two is backwards, and the numbers appear in a circle. The Office Action alleges that the meanings are similar and the marks sound similar. The Applicant respectfully disagees. The Office Action alleges that consumers would use the wording in the marks to call for the relevant goods and/or services. At the outset, the Applicant respectfully submits that ?call for goods and/or services? is not a relevant part of the requisite du Pont analysis. The Office Action goes on to admit that the marks appear different but further alleges that ?TWENTY2? and ?22? are two ways of writing the same number. The Applicant respectfully disagrees. The Cited Registration can be pronounced ?two-two? or ?twenty two.? There is no indication how the Cited Registration should be pronounced. Accordingly, the Applicant respectfully submits that the marks do not necessarily sound similar and the overall impressions are not similar and accordingly consumers would not be confused as to the origin of Applicant?s goods and/or services. In addition, the Applicant submits that the differences in appearance of the marks give consumers the ability to distinguish between the marks. As alleged in the Office Action, each mark is advertised on the internet and accordingly, the appearances of the marks are more relevant in the eyes of the consumers than the ways the marks would be pronounced. The applied-for mark has ?TWENTY2? in stylized form, further distinguishing the two marks. Not only does the stylistic aspect of each mark distinguish the marks from each other, it also distinguishes them in terms of the goods and services provided using each. The second du Pont factor looks at the relatedness of the goods or services described in the application and registration. The Office Action alleges that the services are related to give rise to the mistaken believe that the goods and/or services emanate from the same source. The Applicant respectfully disagrees. Specifically, the Applicant?s services are ?Advertising and marketing services provided by means of indirect methods of marketing communications, namely, social media, search engine marketing, inquiry marketing, internet marketing, mobile marketing, blogging and other forms of passive, sharable or viral communications channels; Media relations services; Social media strategy and marketing consultancy focusing on helping clients create and extend their product and brand strategies by building virally engaging marketing solutions.? The Registrant?s services are ?promoting the goods and services of others by providing a website allowing users to view, sort, rank, and share the goods and services of others for purposes of creating a gift registry for shopping, e- commerce and social networking purposes.? At the outset, the services offered under each mark are distinctly different. The Applicant?s services are advertising and marketing services and brand strategies. The Registrant?s services are directed to a website for creating a gift registry. The Registrant states that the registry may promote the goods and services of others, but this is through the use of a gift registry, whereas the Applicant provides advertising and marketing services through social media strategy and marketing solutions. These services are entirely different, and would be used by businesses in an entirely different manner. The Office Action attached internet evidence that allegedly establishes many entities provide a variety of marketing, advertising and promotion services in the same trade channels and accordingly Applicant?s and Registrant?s services are considered related for likelihood of confusion purposes. The Office Action appears to be alleging that the entire internet is the same trade channel, which is not the case. See e.g. Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC (Holding that the internet is not one trade channel. ?[Louis Vuitton] also sells its products on the Internet through an LVM-authorized website. In contrast, ?Chewy Vuiton? products are sold primarily through traditional and Internet pet stores, although they might also be sold in some department stores.?) Accordingly, since the services offered are entirely different, and the appearance and potentially sound of the applied-for mark and the cited registration are different, there would be no likelihood of confusion between the two marks. The Applicant respectfully requests that the applied-for mark proceed to publication.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 035 for On-line wholesale and retail store services featuring Media relations services, social media strategy and marketing consultancy, advertising and marketing 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: On-line wholesale and retail store services featuring Media relations services, social media strategy and marketing consultancy, advertising and marketing services; Advertising and marketing services provided by means of indirect methods of marketing communications, namely, social media, search engine marketing, inquiry marketing, internet marketing, mobile marketing, blogging and other forms of passive, sharable or viral communications channels; Media relations services; Social media strategy and marketing consultancy focusing on helping clients create and extend their product and brand strategies by building virally engaging marketing solutionsClass 035 for Advertising and marketing services provided by means of indirect methods of marketing communications, namely, social media, search engine marketing, inquiry marketing, internet marketing, mobile marketing, blogging and other forms of passive, sharable or viral communications channels; Media relations services; Social media strategy and marketing consultancy focusing on helping clients create and extend their product and brand strategies by building virally engaging marketing solutions
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.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Twenty2 Media, LLC, a limited liability company legally organized under the laws of Delaware, having an address of
      1338 Chestnut Street
      Philadelphia, Pennsylvania 19107
      United States

Proposed: Twenty2 Media, LLC, a limited liability company legally organized under the laws of Delaware, having an address of
      1338 Chestnut Street
      Philadelphia, Pennsylvania 19107
      United States
      Email Address: trademarks@goodwin.com

The owner's/holder's current attorney information: Taylor M. Curtis. Taylor M. Curtis of SHIPMAN & GOODWIN LLP, is located at

      ONE CONSTITUTION PLAZA
      HARTFORD, Connecticut 06103-1919
      United States
The docket/reference number is 103128-02.
      The phone number is 860-251-5057.
      The fax number is 860-251-5099.
      The email address is trademarks@goodwin.com

The owner's/holder's proposed attorney information: Taylor M. Curtis. Other appointed attorneys are Glenn M. Cunningham. Taylor M. Curtis of Shipman & Goodwin LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      One Constitution Plaza
      Hartford, Connecticut 06103-1919
      United States
The docket/reference number is 103128-02.
      The phone number is 860-251-5057.
      The fax number is 860-251-5099.
      The email address is tcurtis@goodwin.com

Taylor M. Curtis 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):
      TAYLOR M. CURTIS
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@goodwin.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): tcurtis@goodwin.com

The docket/reference number is 103128-02.
Correspondence Information (proposed):
      Taylor M. Curtis
      PRIMARY EMAIL FOR CORRESPONDENCE: tcurtis@goodwin.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): trademarks@goodwin.com

The docket/reference number is 103128-02.

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: /Taylor M. Curtis/     Date: 03/19/2020
Signatory's Name: Taylor M. Curtis
Signatory's Position: Attorney of record, Connecticut Bar Member

Signatory's Phone Number: 8602515057

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:    TAYLOR M. CURTIS
   SHIPMAN & GOODWIN LLP
   
   ONE CONSTITUTION PLAZA
   HARTFORD, Connecticut 06103-1919
Mailing Address:    Taylor M. Curtis
   Shipman & Goodwin LLP
   One Constitution Plaza
   Hartford, Connecticut 06103-1919
        
Serial Number: 88486267
Internet Transmission Date: Thu Mar 19 12:49:31 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2020031912493112
9392-88486267-71045806e2724ec964c77c15b7
d11bd79c22671c88c3cbe488454b4183e5139caf
8-N/A-N/A-20200319124456630922