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. 88489820 LOVED ONES (Stylized and/or with Design, see http://uspto.report/TM/88489820/mark.png) has been amended as follows:

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

The Examiner has refused registration of Applicant's mark because of a likelihood of confusion with U.S. Registration No. 3835532 directed to the mark LOVEDONES for "pamphlets, leaflets, brochures, newsletters, booklets, and a series of books concerning combat veterans and personal information relating to said veterans, their families, friends and family history" in Int. Class 016 and "computer services, namely, creating and maintaining web sites for others concerning biographical information relating to combat veterans and military service" in Int. Class 042. Applicant's mark includes the term "Loved" in a particular font and in the color purple followed by red colored interlocking hearts that are larger than the term "Loved" which are followed by the term "Ones" in a particular font and in the color purple where the red interlocking hearts are also larger than the term "Ones". Applicant's mark differs substantially in appearance form Registrant's mark in that the red interlocking hearts design in Applicant's mark is larger than the words "Loved" and "Ones" in Applicant's mark. In addition, the red interlocking hearts design in Applicant's mark is located between the terms "Loved" and "Ones" thereby causing a consumer to be drawn to the red interlocking hearts portion of the mark. Further, in that emojis and abbreviations are constantly used in today's written communications, one referring to Applicant's mark would likely include a reference to Applicant's red interlocking hearts portion of Applicant's mark when referring to Applicant's mark in writing. Therefore, since marks must be compared in their entireties, Applicant's mark would not be likely to be confused with Registrant's mark. With respect to Applicant's services and Registrant's services, the Examiner attached evidence from registrant's website to establish that entities that create and maintain websites for others concerning biographical information relating to combat veterans and military service also provide obituary information. However, this cannot be deemed to be relevant when considering a likelihood of confusion issue. Case law is clear that "determining likelihood of confusion is based on the description of the services stated in the application and registration at issue, not on evidence of actual use" (emphasis added). Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computer Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Therefore, the Examiner's evidence showing registrant's use of its mark is not relevant, only the description of services in registrant's trademark registration is relevant. Applicant's amended services are specifically directed to "hosting and maintaining an online website for others to memorialize the lives of others" in Class 42 and "providing obituary information, including death notices and funeral arrangements, and memorial information over a global computer network" in Class 45 while Registrant's mark is registered for "pamphlets, leaflets, brochures, newsletters, booklets, and a series of books concerning combat veterans and personal information relating to said veterans, their families, friends and family history" in Int. Class 016 and "computer services, namely, creating and maintaining web sites for others concerning biographical information relating to combat veterans and military service" in Int. Class 042. Applicant's services are distinct and different form Registrant's goods and services. In determining likelihood of confusion, "each case must be decided on its own facts. There is no litmus rule which can provide a ready guide to all cases." E.I. DuPont de Nemours & Co., 476 F.2d at 1361. Relevant factors that "must be considered," when of record, include not only the similarity of the marks but also the "similarity or dissimilarity and nature of the goods," the similarity or dissimilarity of "likely-to-continue trade channels," and the "conditions under which buyers to whom sales are made, i.e. 'impulse' vs. careful, sophisticated purchasing." TMEP 1207.01(a)(i) states "if the goods or services in question are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion is not likely. In addition to the registrant's services and the applicant's services being unrelated, the respective services do not travel in the same trade channels. Where the subject services move in distinctly different channels of trade, likelihood of confusion will be minimized. An individual looking for obituary information on the internet would not be looking for an entity that would provide them with a service for creating and maintaining their own website concerning biographical information relating to combat veterans and military services. Therefore, registrant's services and applicant's services travel in distinctly different channels of trade. Finally, sophisticated purchasers would not be misled as to the source of the respective goods. Purchasers of registrant's services are seeking an individual or entity that can create and maintain a website for them containing biographical information relating to combat veterans and military services while purchasers or users of applicant's services are looking for obituary information on a global computer network. The more sophisticated a purchaser, the less likely it is that the use of similar marks will lead to confusion. Registrant's services and applicant's services are targeted at different consumers and trade channels and therefore further negate any likelihood of confusion.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 045 for providing obituary information, including death notices and funeral arrangements, and memorial information over a global computer network; hosting and maintaining an online website for others to memorialize the lives of others
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: providing obituary information, including death notices and funeral arrangements, and memorial information over a global computer network; hosting and maintaining an online website for others to memorialize the lives of othersClass 045 for providing obituary information, including death notices and funeral arrangements, and memorial information over a global computer network
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 042 for hosting and maintaining an online website for others to memorialize the lives of others
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: Loved Ones Limited, a company legally organized under the laws of IRELAND, having an address of
      No. 3 New Road
      Galway, H91X95A
      Ireland

Proposed: Loved Ones Limited, COMPANY legally organized under the laws of Ireland, having an address of
      No. 3 New Road
      Galway, H91X95A
      Ireland
      Email Address: DHealy@hmc-ip.com

The owner's/holder's current attorney information: Laura J. Zeman-Mullen. Laura J. Zeman-Mullen of ZEMAN-MULLEN & FORD, LLP, is located at

      233 WHITE SPAR ROAD
      PRESCOTT, Arizona 86303
      United States
The docket/reference number is 593231.0200.
      The phone number is 928-776-1516.
      The email address is lzemanmullen@zmfiplaw.com

The owner's/holder's proposed attorney information: Laura J. Zeman-Mullen. Other appointed attorneys are Stuart J. Ford. Laura J. Zeman-Mullen of ZEMAN-MULLEN & FORD, 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

      233 WHITE SPAR ROAD
      PRESCOTT, Arizona 86303
      United States
The docket/reference number is 593231.0200.
      The phone number is 928-776-1516.
      The email address is lzemanmullen@zmfiplaw.com

Laura J. Zeman-Mullen 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):
      LAURA J. ZEMAN-MULLEN
      PRIMARY EMAIL FOR CORRESPONDENCE: lzemanmullen@zmfiplaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): ktopolewski@zmfiplaw.com

The docket/reference number is 593231.0200.
Correspondence Information (proposed):
      Laura J. Zeman-Mullen
      PRIMARY EMAIL FOR CORRESPONDENCE: lzemanmullen@zmfiplaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): ktopolewski@zmfiplaw.com

The docket/reference number is 593231.0200.

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 $275 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: /laura zeman-mullen/      Date: 03/17/2020
Signatory's Name: Laura J. Zeman-Mullen
Signatory's Position: Attorney of Record, AZ State Bar Member
Signatory's Phone Number: 928-776-1516


Response Signature
Signature: /laura zeman-mullen/     Date: 03/17/2020
Signatory's Name: Laura J. Zeman-Mullen
Signatory's Position: Attorney of record, AZ bar member

Signatory's Phone Number: 928-776-1516

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:    LAURA J. ZEMAN-MULLEN
   ZEMAN-MULLEN & FORD, LLP
   
   233 WHITE SPAR ROAD
   PRESCOTT, Arizona 86303
Mailing Address:    Laura J. Zeman-Mullen
   ZEMAN-MULLEN & FORD, LLP
   233 WHITE SPAR ROAD
   PRESCOTT, Arizona 86303
        
RAM Sale Number: 88489820
RAM Accounting Date: 03/17/2020
        
Serial Number: 88489820
Internet Transmission Date: Tue Mar 17 16:53:59 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XX-2020031716535997
0355-88489820-710464bd74256ffc282f7463a4
63ee659795d178adc5f15fb30efab7e9864f5f25
-CC-53580763-20200317160146171251