Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA604705
`ESTTA Tracking number:
`05/16/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`79122787
`One Zero Pty Limited
`PAIN AWAY PAIN RELIEF THERAPY
`Aaron J. Wong
`PRICE HENEVELD LLP
`695 KENMOOR SEPO BOX 2567
`GRAND RAPIDS, MI 49501
`UNITED STATES
`ptomail@priceheneveld.com
`Appeal Brief
`Appeal Brief SPR004 T301.pdf(86256 bytes )
`Exhibit 1.pdf(360966 bytes )
`Exhibit 2.pdf(54672 bytes )
`Aaron J. Wong
`awong@priceheneveld.com, ptomail@priceheneveld.com,
`csd@priceheneveld.com
`/Aaron J. Wong/
`05/16/2014
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`Proceeding
`Applicant
`Applied for Mark
`Correspondence
`Address
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`Submission
`Attachments
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`Filer's Name
`Filer's e-mail
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`Signature
`Date
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`Attorney Docket No. SPR004 T301
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`: 107
`: Kevin A. Mittler
`: One Zero Pty Limited
`: 79/122,787
`: March 13, 2008
`: PAIN AWAY PAIN RELIEF THERAPY (and design)
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`Law Office
`TM Attorney
`Applicant
`Serial No.
`Filed
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`Mark
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`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, VA 22313-1451
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`Dear Sir:
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`BRIEF ON APPEAL
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`This brief is in furtherance of the Notice of Appeal filed in this case on March 17, 2014.
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`This brief contains the following headings in the order set forth below:
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`1. Table of Contents
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`2. Index of Cases
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`3. Description of the Record
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`4. Statement of the Issues
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`5. Recitation of Facts
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`6. Argument
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`7. Summary
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`1.
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`TABLE OF CONTENTS
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`2. Index of Cases .............................................................................................. 3
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`3. Description of the Record ........................................................................... 4
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`4. Statement of the Issues ................................................................................ 5
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`5. Recitation of Facts ....................................................................................... 5
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`6. Argument ..................................................................................................... 5
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`7. Summary ..................................................................................................... 15
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`2.
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`INDEX OF CASES
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`Accu Personal, Inc., v. Acuu Staff, Inc., 823 F. Supp 1161, 1166 (Del. 1993)
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`In re British Bulldog, Ltd., 224 U.S.P.Q. 854 (TTAB 1984)
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`Carefirst of Maryland Inc., v. Firsthealth of the Carolinas, Inc., 77 USPQ 2d 1492 (TTAB 2005)
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`In re Coors Brewing Company, 343 F.3d 140 (Fed Cir. 2003)
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`In re Cotter and Co., 179 USPQ 828 (TTAB 1973)
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`Eclipse Assocs., Ltd., v. Data Gen. Corp., 894 F.2d 114, 116 (9th Cir. 1990)
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`Electronic Data Systems Corp. v. EDSA Micro Corp., 23 USPQ2d 1460 (TTAB 1992)
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`Estate of P.D. Beckwith, Inc. v. Commissioner of Patents, 252 U.S. 538 (1920)
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`General Mills, Inc. v. Kellogg Co., 824 F.2d 622, 627 (8th Cir. 1987)
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`Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 395 (Fed. Cir. 1983)
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`Lever Bros. Co. v. Winzer Co. of Dallas, 51 CCPA 930 (CCPA 1964)
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`Miss. World (UK) Ltd., v. Mrs. America Pageants, Inc., 856 S.2d 1445, 1449 (9th Cir. 1988)
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`In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751-52 (Fed. Cir. 1985)
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`National Distillers & Chemical Corp. v. William Grant & Sons, Inc., 505 F.2d 719 (CCPA 1974)
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`Plough, Inc. v. Kreis Laboratories, 314 F.2d 635 (9th Cir. 1963)
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`In re Sears, Roebuck and Co., 2 U.S.P.Q.2d 1312 (T.T.A.B. 1987)
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`Stouffer Corp., v. Health Valley Natural Foods, Inc., 1 USPQ 2d 1900 (TTAB 1986)
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`In re Sydel Lingerie Co., Inc.,197 U.S.P.Q. 629 (T.T.A.B. 1977)
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`V-M Corp. v. Mayfair Sound Prod., Inc., 480 F.2d 898, 178 USPQ 477, 477-78 (CCPA 1973)
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`3.
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`DESCRIPTION OF THE RECORD
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`The present application was originally filed on January 3, 2013, as a request for extension of
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`protection based on an Australian registration (Reg. No. 1141862 registered October 25, 2012),
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`thereby giving the present application an effective filing date of October 25, 2012 for the mark
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`PAIN AWAY PAIN RELIEF THERAPY (and design) for use in conjunction with pharmaceutical
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`preparations in the form of tablets and capsules for the treatment of arthritis, pain, circulation and
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`inflammation; pharmaceutical preparations for topical use being herbal creams and sprays for the
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`treatment of arthritis, pain, circulation and inflammation in International Class 5.
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`In an Office Action dated March 1, 2013, the above-identified application was rejected
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`under a Section 2(d) likelihood of confusion refusal based upon Registration No. 1,881,813 for the
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`mark PAIN-AWAY (and design) (the ‘813 registration) as registered for use in conjunction with
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`oral analgesics in International Class 5.
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`On July 26, 2013, Applicant conducted a telephone interview with the Examining Attorney.
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`In a response to the March 1, 2013, Office Action, Applicant argued for allowance of the
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`present application on the grounds that the applied-for mark, and the goods associated therewith,
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`were not in fact confusingly similar to the ‘813 registration in a response filed September 3, 2013.
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`Applicant argued that the marks existed in a crowded market, for which the variation in the wording
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`of the marks and the different design elements played a significant role in distinguishing the
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`applied-for mark and the ‘813 registration. Further, in this September 2013 response, Applicant
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`amended the goods to “pharmaceutical preparations for topical use being herbal creams and sprays
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`for the treatment of arthritis, pain, circulation and inflammation” in International Class 5, such that
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`the identification of goods excludes oral analgesics as sold under the ‘813 registration.
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`In a second Office Action dated September 16, 2013, the Examining Attorney finally
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`rejected the present application on previously cited grounds.
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`4.
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`On March 17, 2014, Applicant filed a Notice of Appeal to this Board.
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`STATEMENT OF THE ISSUES
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`The issue presented in this appeal is whether Applicant’s mark PAIN AWAY PAIN
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`RELIEF THERAPY (and design) should be denied registration based upon a likelihood of
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`confusion with the cited ‘813 registration for the mark PAIN-AWAY (and design).
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`5.
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`RECITATION OF FACTS
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`Applicant has applied for the trademark PAIN AWAY PAIN RELIEF THERAPY (and
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`design) for use in conjunction with pharmaceutical preparations for topical use being herbal creams
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`and sprays for the treatment of arthritis, pain, circulation and inflammation in International Class 5.
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`The goods offered under the ‘813 registration for the mark PAIN-AWAY (and design) are
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`identified as oral analgesics in International Class 5.
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`6.
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`ARGUMENT
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`Section 2(d) Refusal - Likelihood of Confusion
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`In the final rejection of the most recent Office Action September 16, 2013, the Examining
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`Attorney has refused registration of Applicant’s applied-for mark based on a likelihood of confusion
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`with the mark PAIN-AWAY (and design) (the ‘813 registration) alleging that both the applied-for
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`mark and the cited registration are similar marks, used with similar goods. Applicant respectfully
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`disagrees with the finding of the Examining Attorney and provides this Board with its reasoning as
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`detailed below.
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`A.
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`Similarity of the Marks
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`Applicant notes that a mark must be considered as a whole in its entirety for proper
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`analysis with respect to any evaluation for likelihood of confusion purposes. As explained by the
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`Supreme Court, “[t]he commercial impression of a trade-mark is derived from it as a whole, not
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`from its elements separated and considered in detail.” Estate of P.D. Beckwith, Inc. v.
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`Commissioner of Patents, 252 U.S. 538, 545-46 (1920). In this case, Applicant respectfully
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`submits that the Examining Attorney has not properly examined the applied-for mark and the
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`cited registration in their entirety.
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`In the Final Office Action dated September 16, 2013, the Examining Attorney indicated
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`that the wording PAIN RELIEF THERAPY is descriptive and that the wording PAIN AWAY is
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`the dominant feature and the source identifying feature of the mark. Applicant respectfully
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`disagrees. While the wording PAIN RELIEF THERAPY has been disclaimed, as noted above,
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`disclaimed matter is not removed from a mark, and must be considered with the rest of the mark
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`as a whole in assessing similarity. As the Court of Appeals put it:
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`[i]t is well settled that the disclaimed material still forms a part of the mark and
`cannot be ignored in determining likelihood of confusion. Such disclaimers are
`not helpful in preventing likelihood of confusion in the mind of the consumer,
`because he is unaware of their existence. Therefore, the disclaimed portions of the
`mark must be considered in determining the likelihood of confusion.
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`Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 395 (Fed.
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`Cir. 1983); see also In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751-52 (Fed. Cir.
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`1985); V-M Corp. v. Mayfair Sound Prod., Inc., 480 F.2d 898, 178 USPQ 477, 477-78 (CCPA
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`1973).
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`As noted by the Federal Circuit, the disclaimer made in the present application must be
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`considered in determining a likelihood of confusion. The commercial realities dictate that
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`consumers encountering the marks would not be aware of any disclaimers, and thus, would see only
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`the marks as a whole in association with the goods sold under the marks. Applicant contends that
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`the wording PAIN RELIEF THERAPY, even though disclaimed, adds to the creation of a distinct
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`commercial impression as viewed by consumers. In the present case, the disclaimed material
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`(PAIN RELIEF THERAPY) has all but been ignored by the Examining Attorney in evaluating
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`the applied-for mark for similarity with the cited registration.
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`Further, the significant design elements of the applied-for mark have also been ignored in
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`the Examining Attorney’s similarity analysis. The applied-for mark includes a design in the
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`shape of Australia with a decorative representation of a portion of the Australian flap appearing
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`in the shape of the Australian continent. Applicant respectfully submits that these substantial
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`design features are part and parcel to the ability of the consuming public to identify the source of
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`Applicant’s goods and also for distinguishing Applicant’s goods from another source. These
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`particular and substantial design features, along with the red, white and blue coloration and bold
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`outlines found in the applied-for mark, suggest an Australian source of the products and do so in
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`a manner that is unique and just as impactful, if not more so, then the wording PAIN AWAY.
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`Thus, Applicant submits that the marks appearing below are not similar to one another when
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`properly viewed as a whole with the design elements and disclaimed features of the applied-for
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`mark being fully considered.
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`Cited Registration
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` Applied-for mark
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`Indeed, courts have found no confusing similarity even where marks that differ by a
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`single letter are applied to the same or similar goods. See, e.g., National Distillers & Chemical
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`Corp. v. William Grant & Sons, Inc., 505 F.2d 719, 721 (CCPA 1974) (no likelihood of
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`confusion between DUET for alcoholic cocktails and DUVET for liqueur: “The similarities are
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`obvious but so are the differences, and we think the latter are as important as the former.);
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`Plough, Inc. v. Kreis Laboratories, 314 F.2d 635 (9th Cir. 1963) (no likelihood of confusion
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`between COCA TAN for suntan lotion and COPA TAN for suntan lotion); Lever Bros. Co. v.
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`Winzer Co. of Dallas, 51 CCPA 930 (CCPA 1964) (no likelihood of confusion between VIE for
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`detergent and VIM for cleansing powder).
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`The mere fact that the marks at issue share elements, even dominant elements, does not
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`compel a conclusion of likely confusion. General Mills, Inc. v. Kellogg Co., 824 F.2d 622, 627
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`(8th Cir. 1987) (“OATMEAL RAISIN CRISP” not confusingly similar to “APPLE RAISIN
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`CRISP”)(emphasis added). Marks that are identical in sound or appearance used on even related
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`goods may create different commercial impressions so that no likelihood of confusion exists. See
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`e.g., In re Sears, Roebuck and Co., 2 U.S.P.Q.2d 1312 (T.T.A.B. 1987); In re British Bulldog,
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`Ltd., 224 U.S.P.Q. 854 (T.T.A.B. 1984); In re Sydel Lingerie Co., Inc.,197 U.S.P.Q. 629
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`(T.T.A.B. 1977). While the Examining Attorney has refused the applied-for mark based on the
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``813 registration, Applicant contends that, when all the relevant factors are considered and the
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`marks are properly viewed in their entireties, the marks impart different and unique commercial
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`impressions on the consuming public, such that there is no likelihood of confusion.
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`B.
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`Crowded Market Effect on the Similarity of the Marks
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`In a cursory search of the USPTO database, several marks were found indicating that the
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`term “pain” exists in a crowded market for pain relief treatments in International Class 5
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`(see Exhibit 1 submitted herewith). As specifically shown in Exhibit 1, 163 registrations exist
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`with the term “pain” contained in the mark as used on goods found in International Class 5.
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`Further, as shown in Exhibit 2 also submitted herewith, 13 registrations exist with the terms
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`“pain” and “away” as used on goods categorized in International Class 5. Even strong marks will
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`be deemed weak if they exist in a crowded field of similar marks. See Miss. World (UK) Ltd., v.
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`Mrs. America Pageants, Inc., 856 S.2d 1445, 1449 (9th Cir. 1988) (“a mark which is hemmed in
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`on all sides by similar marks on similar goods cannot be “distinctive”. It is merely one of a
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`crowd of marks. In such a crowd, “customers will not likely be confused between any of the two
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`of the crowd and may have learned to carefully pick out one from another.”), abrogated in part
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`on other grounds by Eclipse Assocs., Ltd., v. Data Gen. Corp., 894 F.2d 114, 116 (9th Cir. 1990).
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`Here, the frequency of registrations, not to mention pending applications and expired
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`registrations still in use, comprising the term “pain” and/or “pain” and “away” in the Trademark
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`Office records demonstrates the Trademark Office’s recognition that the scope of protection that
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`should be afforded these marks is narrow and should therefore extend only to the goods recited
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`in the registrations.
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`In the past, the Trademark Trial and Appeal Board has given weight to evidence of
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`widespread and significant use by third parties of marks containing elements in common with the
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`involved marks when considering claims of likelihood of confusion. This is because such
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`evidence may demonstrate that confusion is not, in reality, likely to occur in the marketplace.
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`See Carefirst of Maryland Inc., v. Firsthealth of the Carolinas, Inc., 77 USPQ 2d 1492, 1509
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`(TTAB 2005). The rationale is, of course, that the common presence in marks of elements
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`extensively used by others may cause purchasers to not rely upon such common elements as
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`source indicators, but look to other elements as a means of distinguishing the source of the
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`goods and/or services. (Id. emphasis added).
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`The mere commonality of formatives of the wording PAIN AWAY in the cited
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`registration and the pending application is an insufficient basis on which to find likelihood of
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`confusion. See Stouffer Corp., v. Health Valley Natural Foods, Inc., 1 USPQ 2d 1900 (TTAB
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`1986). In comparing marks demonstrated to be in a crowded market, the mark in question may
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`be found to have been weakened because consumers have been conditioned to distinguish
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`between different marks on the basis of minute distinctions. See Accu Personal, Inc., v. Acuu
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`Staff, Inc., 823 F. Supp 1161, 1166 (Del. 1993). Here, the differences are not minute when the
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`marks are properly considered as a whole, as shown above. In fact, clear differences exist
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`between the marks, such that consumers in a crowded market are likely able to distinguish
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`between entities based on distinctions among the marks. See Carefirst of Maryland Inc., v.
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`Firsthealth of the Carolinas, Inc., 77 USPQ2d 1492, 1510 (TTAB 2005). The unique Australian
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`design elements, bold coloration and outlines/boarders found in the applied-for mark lend
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`themselves to a unique overall commercial impression as compared to the ‘813 registration.
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`C.
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`Relatedness of the Goods
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`With regard to the similarity of goods, Applicant has previously amended the present
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`application to now identify pharmaceutical preparations for topical use being herbal creams and
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`sprays for the treatment of arthritis, pain, circulation and inflammation in International Class 5.
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`Thus, Applicant amended the description of goods to clearly define and narrowly tailor the goods
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`provided by Applicant. In the same way, the Registrant identified its goods in the ‘813 registration
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`to clearly define its oral analgesics. Thus, the registration cited by the Examining Attorney and the
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`pending application do not have broad descriptions of goods, wherein one description encompasses
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`the goods of the other. In the present case, the Examining Attorney has more or less based the
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`likelihood of confusion rejection on a finding that both the applied-for mark and the mark of the
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`cited registration are both used for pain relief. Applicant submits that treatment of pain is carried
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`out in numerous ways as further described below.
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`The issue of whether or not products or services are related does not revolve around the
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`question of whether a term can be used that describes them both or whether both can be classified
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`under the same general category. See In re Cotter and Co., 179 USPQ 828 (TTAB 1973). The
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`mere fact that the Applicant’s services and Registrant’s services fall under a broad category [in the
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`present case; pain relief products] is an insufficient basis upon which to find the goods and services
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`are related for purposes of making the likelihood of confusion analysis. See generally Electronic
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`Data Systems Corp. v. EDSA Micro Corp., 23 USPQ2d 1460 (TTAB 1992). In this case, the
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`Examining Attorney has grouped the marks at issue into the same general pain relief category and
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`has used this broad and general characterization to continually find that the goods at issue are
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`related goods.
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`In arguing that the goods are related, the Examining Attorney has introduced evidence
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`that oral analgesics and topical creams are sold by the same party under the same mark as
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`indicated in the USPTO X-search database printouts noted in the Office Action dated September
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`16, 2013. However, many of these registrations are for registrations containing a wide variety of
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`goods and are not limited to the goods in question. The following registrations are cited in the
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`USPTO X-search results of the Examining Attorney’s final Office Action dated September 16,
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`2013:
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`Registration No. 3,804,648 for 3-in-1 hair conditioners; 3-in-1 hair shampoos;
`after-shave gel; age retardant gel; all-purpose cotton swabs for personal use; aloe
`vera gel for cosmetic purposes; aromatherapy lotions; baby hair conditioner; baby
`lotion; baby shampoo; baby wipes; bath lotion; bath soaps in liquid, solid or gel
`form; body lotions; body spray used as a personal deodorant and as fragrance;
`cotton balls for cosmetic purposes; cotton buds for cosmetic purposes; cotton for
`cosmetic purposes; cotton puffs for cosmetic purposes; cotton swabs for cosmetic
`purposes; eye make-up remover; face and body lotions; feminine deodorant
`sprays; hair shampoos and conditioners; hair sprays and hair gels; hair wax; hand
`soaps; shaving cream; shaving foam; shaving gel; shaving lotions; skin cleansing
`lotion; skin lotions; styling lotions; sun care lotions; sun tan lotion; sun-block
`lotions; toothpaste and mouthwashes in International Class 3; acetaminophen;
`adult diapers; allergy relief medication; allergy tablets; anti-cough drops; anti-
`inflammatory ointments; anti-inflammatory sprays; anti-insect spray; anti-itch
`ointment; antibacterial hand lotions; aspirin; athletes' foot lotions; bonding and
`primer materials for dental purposes; breast-nursing pads; cough drops; cough
`expectorants; cough
`lozenges; cough syrups; decongestant nasal sprays;
`diagnostic kits consisting primarily of monoclonal antibodies, buffers, and
`reagents for use in disease testing; diarrhea medication; disposable adult diapers;
`drug testing kits comprised of medical diagnostic reagents and assays for testing
`body fluids; ear drops; eye drops; feminine hygiene pads; hemorrhoidal
`ointments; herbal topical creams, gels, salves, sprays, powder, balms, liniment
`and ointments for the relief of aches and pain; ibuprofen for use as an oral
`analgesic; in-vitro ovulation prediction test kit for home use; incontinence pads;
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`medical diagnostic reagents and assays for testing of body fluids; medicated
`diaper rash ointments and lotions; medicated sunburn lotions; medicated throat
`sprays; mentholated ointment for medical use; nursing pads; ovulation test kits;
`pain relief medication; pregnancy test kits for home use; sanitary pads; sports
`cream for relief of pain; vaccines against flu; vitamin supplements; vitamin
`tablets; vitamins in International Class 5; abdominal pads for medical use; gloves
`for use in hospitals; heating pads for medical purposes; latex medical gloves;
`medical examination gloves in International Class 10.
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`Registration No. 4,324,628 for first aid products, namely, foam adhesive
`bandages, tricot mesh adhesive bandages, cotton gauze pads, non-woven gauze
`pads, gauze rolls, medicated cotton gauze compresses, self-adhesive bandages,
`cotton applicator sticks for medical purposes, medical adhesive tape for first aid
`purposes, adhesive tape for gauze, metal detectable adhesive bandages and skin
`closure strips for use in food processing and pharmaceutical environments
`requiring quick detection in event of loss; first aid kits; medications, namely,
`ibuprofen for use as an oral analgesic, acetaminophen, aspirin; topical analgesics;
`antibiotics and antiseptics in International Class 5.
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`Registration No. 2,061,739 for first aid antiseptics; adhesive for bandages for skin
`wounds; bandages for skin wounds; gauze; cotton for medical purposes; denture
`adhesives; anti-cavity mouth rinse; antacids; aspirin; oral analgesics; ibuprofen
`for use as an oral analgesic; rubbing alcohol; witch hazel; epsom salts; petroleum
`jelly for medical purposes; topical gel for medical and therapeutic use; topical
`analgesics and anesthetics; acne medications; wart medications; preparations for
`treating colds; cough drops, expectorants and syrups; sinus medications; allergy
`medications; laxatives; anti-diarrheal medications; hemorrhoidal medications; eye
`drops; saline solution; contact lens cleaning solutions; sanitary napkins; tampons;
`douches; incontinence garments and pads; pediatric electrolytes; and vitamin
`supplements in International Class 5.
`
`Registration No. 2,507,598 for pharmaceutical and over the counter preparations,
`namely, oral analgesics, topical analgesics, sedatives, stimulants containing
`caffeine, motion sickness preparations, antacid preparations, diarrhea medication,
`laxative preparations, cough, cold, allergy and sinus preparations, throat lozenges,
`cough drops, nasal sprays, drops and sanitary belts and briefs, medication lip
`preparations, namely, creams and lip balms, dietary and nutritional supplements,
`contact lens cleaning and storing solutions and preparations, contact lens wetting
`solutions, eye drops, ear drops, antibiotic ear ointments and antibiotic ear creams,
`pregnancy test kits for home use, sanitary napkins, tampons, antifungal vaginal
`creams and
`jellies, adhesive bandages, medical adhesive
`tape, gauze,
`hydrocortisone creams, antiseptic and anti-infection creams, medicated ointments
`and creams for treatment of diaper rash, petroleum jelly for medical use, corn,
`bunion, callus pads and plasters, athletes foot treatment preparations, medicated
`
`

`
`Applicant
`Serial No.
`Page
`
`
`: One Zero Pty Limited
`: 79/122,787
`: 14
`
`
`
`
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`
`
`
`
`
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`wart, corn and callus removing lotions and gels, epsom salts, vitamins, mineral
`supplements, herbal supplements in International Class 5.
`
`Registration No. 2,732,863 for non-medicated lip balm, skin moisturizer,
`sunscreen, topical deodorants in international class 3; eye wash, medicated lip
`balm, topical analgesics, topical decongestants, laxatives, oral anesthetics, oral
`analgesics, medicated skin lotions, eye drops, medicated bath emulsions for cold
`suffers, topical analgesics for toothache sufferers in International Class 5; cooling
`pads for migraine, fever and sinus sufferers, denture comfort pads in International
`Class 10.
`
`
`
`
`
`Thus, as noted above, the exemplary registrations taken from the Examining Attorney’s
`
`USPTO X-search results show that the marks cited therein include numerous products outside of
`
`oral analgesics and topical creams and sprays. In a similar case, the Trademark Trial and Appeal
`
`Board found that where registrations containing a wide variety of goods and services were cited
`
`by the Examining Attorney with only a few remaining registrations limited to the goods in
`
`question, such evidence was “not sufficient to convince us [the TTAB] that the goods in question
`
`(beer and wine in that case) are sufficiently related that the contemporaneous use of the involved
`
`marks thereon is likely to cause confusion”. See In re Coors Brewing Company Serial, No.
`
`75/599,304, page 23 (TTAB May 2002) (confirmed, In re Coors Brewing Company, 343 F.3d
`
`140 (Fed Cir. 2003). With regards to the present application, Applicant submits that NONE of
`
`the registrations cited by the Examining Attorney are limited to oral analgesics and topical
`
`creams and sprays alone. Thus, Applicant hereby submits that the goods as found in the ‘813
`
`registration and the goods identified in Applicant’s pending application are distinct enough such
`
`that contemporaneous use of the marks is not likely to cause confusion. This is further evidenced
`
`by the differences in the marks as described above.
`
`
`
`

`
`: One Zero Pty Limited
`: 79/122,787
`: 15
`
`
`
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`
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`
`
`Applicant
`Serial No.
`Page
`
`
`
`
`7.
`
`SUMMARY
`
`
`
`For the reasons noted above, it is submitted that Applicant’s mark PAIN AWAY PAIN
`
`RELIEF THERAPY (and design) is entitled to registration on the Principal Register, and the
`
`Examining Attorney’s finding to the contrary should be reversed.
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: PRICE HENEVELD, LLP
`
`
`
`
`/Aaron J. Wong/
`Aaron J. Wong, Reg. 61,871
`695 Kenmoor S.E.
`P.O. Box 2567
`Grand Rapids, Michigan 49501
`Phone: (616) 949-9610
`Facsimile: (616) 957-8196
`
`
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`
`
`May 16, 2014
`
`
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`
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`
`
`
`
`Dated:
`
`
`
`
`
`
`
`
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`
`
`
`
`AJW/csd
`
`
`

`
`Exhibit 1
`
`Selected TM Records
`
`Image
`
`Citation
`
`Status
`
`Goods and Services
`
`Owner Name
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`NATURAL PAIN ADVANTAGE
`
`NEVERPAIN
`Cross References: NEVER PAIN
`
`BIOFREEZE COLD THERAPY PAIN
`RELIEF
`
`BIOFREEZE COLD THERAPY PAIN
`RELIEF
`
`X-PAIN
`Cross References: X PAIN
`
`HEALING PAIN RELIEF
`
`RELEASE RX PAIN RELIEVER
`
`Registered
`USPTO Status: Registered
`USPTO Status Date: 20-AUG-2013
`Registered
`USPTO Status: Registered
`USPTO Status Date: 14-MAY-2013
`
`Registered
`USPTO Status: Registered
`USPTO Status Date: 14-MAY-2013
`Registered
`USPTO Status: Registered
`USPTO Status Date: 14-MAY-2013
`Registered
`USPTO Status: Registered
`USPTO Status Date: 16-APR-2013
`Registered
`Supplemental Register
`USPTO Status: Registered
`USPTO Status Date: 16-APR-2013
`Registered
`USPTO Status: Registered
`USPTO Status Date: 14-MAY-2013
`
`INT. CL. 5 DIETARY AND NUTRITIONAL
`SUPPLEMENTS FOR PAIN RELIEF
`
`HEALTHY DIRECTIONS,
`LLC
`
`INT. CL. 5 HERBAL TOPICAL CREAMS, GELS,
`SALVES, SPRAYS, POWDER, BALMS, LINIMENT AND
`OINTMENTS FOR THE RELIEF OF ACHES AND PAIN
`
`ANC AMAZON NATURAL
`CORP.
`
`INT. CL. 5 ANALGESIC BALM
`
`INT. CL. 5 ANALGESIC BALM
`
`HYGENIC INTANGIBLE
`PROPERTY HOLDING CO.
`
`HYGENIC INTANGIBLE
`PROPERTY HOLDING CO.
`
`INT. CL. 5 PREPARATION FOR THE RELIEF OF PAIN FREEMAN, ANTHONY
`
`INT. CL. 5 ALCOHOL FOR TOPICAL USE; HERBAL
`TOPICAL CREAMS, GELS, SALVES, SPRAYS,
`POWDER, BALMS, LINIMENT AND OINTMENTS FOR
`THE RELIEF OF ACHES AND PAIN; NON-MEDICATED
`TOPICAL GEL FOR THE PREVENTION AND
`INT. CL. 5 HERBAL TOPICAL LOTION FOR THE
`RELIEF OF ACHES AND PAIN
`
`FOOTNICK ENTERPRISES,
`INC.
`
`RELEASE RX INC.
`
`PAINDEFENSE
`Cross References: PAIN DEFENSE
`
`Registered
`USPTO Status: Registered
`USPTO Status Date: 05-MAR-2013
`
`INT. CL. 5 ANALGESIC AND HOMEOPATHIC PAIN
`RELIEVING PREPARATIONS
`
`SAMUEL ENTERPRISES,
`INC.
`
`JUST GAME NO PAIN
`
`Registered
`USPTO Status: Registered
`USPTO Status Date: 19-FEB-2013
`
`SPEED NUMB NO PAIN IN MIND!
`
`Registered
`USPTO Status: Registered
`USPTO Status Date: 26-MAR-2013
`
`INT. CL. 5 ANALGESIC BALM; ANALGESIC
`PREPARATIONS; ANALGESICS; AROMATHERAPY
`LOTIONS FOR PAIN RELIEF; HERBAL PRODUCTS,
`NAMELY, AROMATHERAPY PACKS CONTAINING
`HERBS USED FOR RELIEF FROM HEADACHES,
`INSOMNIA AND SINUS DISCOMFORT; HERBAL
`INT. CL. 5 ANALGESICS; BONE CEMENT FOR
`SURGICAL AND ORTHOPAEDIC PURPOSES;
`COOLING SPRAYS FOR MEDICAL PURPOSES;
`MEDICATED OINTMENTS FOR TREATING
`DERMATOLOGICAL CONDITIONS; MEDICINAL
`CREAMS FOR SKIN CARE; MEDICINAL DRINKS;
`
`YOUNG, TERRY L.
`
`SHANGHAI LOWEN
`TECHNOLOGY
`DEVELOPMENT CO.,LTD
`(China)
`
`Page 1
`
`

`
`Selected TM Records
`
`NOT FOR COLDS. NOT FOR PAIN.
`JUST FOR SLEEP.
`Cross References: NOT FOR COLDS
`NOT FOR PAIN JUST FOR SLEEP
`
`Registered
`USPTO Status: Registered
`USPTO Status Date: 06-AUG-2013
`
`INT. CL. 5 SLEEP-AID PREPARATIONS
`
`THE PROCTER & GAMBLE
`COMPANY
`
`SALONPAS PAIN RELIEVING JET
`SPRAY
`
`Registered
`USPTO Status: Registered
`USPTO Status Date: 20-NOV-2012
`
`INT. CL. 5 MEDICATED SPRAYS FOR THE RELIEF OF
`ACHES AND PAINS OF MUSCLES AND JOINTS; ANTI-
`INFLAMMATORY AND ANALGESIC AGENTS
`
`HISAMITSU
`PHARMACEUTICAL CO.,
`INC. (Japan)
`
`SALONPAS PAIN RELIEVING
`MASSAGE FOAM
`
`Registered
`USPTO Status: Registered
`USPTO Status Date: 25-SEP-2012
`
`INT. CL. 5 MEDICATED SPRAYS FOR THE RELIEF OF
`ACHES AND PAINS OF MUSCLES AND JOINTS; ANTI-
`INFLAMMATORY AND ANALGESIC AGENTS
`
`HISAMITSU
`PHARMACEUTICAL CO.,
`INC. (Japan)
`
`TRIPAINRELIEF
`Cross References: TRI PAIN
`RELIEF, TRY PAIN RELIEF
`
`Registered
`USPTO Status: Registered
`USPTO Status Date: 03-JUL-2012
`
`INT. CL. 5 ANALGESIC PREPARATIONS
`
`LAMUJERDEQUIEN
`TRADING COMPANY, INC.
`
`MEDI-DERM TOPICAL PAIN RELIEF
`CREAM
`
`Registered
`USPTO Status: Registered
`USPTO Status Date: 03-JUL-2012
`
`INT. CL. 5 PREPARATION FOR THE RELIEF OF PAIN TWO HIP CONSULTING &
`SALES, LLC
`
`FOR JOINT HEALTH NOT JUST PAIN Registered
`Section 2(F)
`USPTO Status: Registered
`USPTO Status Date: 06-MAR-2012
`
`INT. CL. 5 DIETARY SUPPLEMENTS
`
`SUPPLEMENT TESTING
`INSTITUTE, INC.
`
`PRM PAIN RELIEF MIRACLE
`
`Registered
`USPTO Status: Registered
`USPTO Status Date: 24-APR-2012
`
`INT. CL. 5 TOPICAL PREPARATIONS, NAMELY,
`CREAMS, GELS, SALVES, SPRAYS, BALMS,
`LINIMENT AND OINTMENTS FOR TREATMENT OF
`SKIN IRRITATIONS, ARTHRITIS AND PAIN
`
`LOTUS HEALTH AND
`WELLNESS LLC
`
`GET PAIN RELIEF SOONER THAN
`LATER
`
`Registered
`USPTO Status: Registered
`USPTO Status Date: 10-JAN-2012
`
`INT. CL. 5