`ESTTA711014
`ESTTA Tracking number:
`11/25/2015
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`86366618
`Abbott Law Chartered
`BATTLEBORNIP.COM
`ERIC L. ABBOTT
`ABBOTT LAW CHARTERED
`6900 WESTCLIFF DR STE 511
`LAS VEGAS, NV 89145-0198
`UNITED STATES
`ela@battlebornip.com
`Appeal Brief
`applicantsbriefsn86366618.pdf(427788 bytes )
`Eric L Abbott
`ela@battlebornip.com
`/Eric L Abbott/
`11/25/2015
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`Proceeding
`Applicant
`Applied for Mark
`Correspondence
`Address
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`Submission
`Attachments
`Filer's Name
`Filer's e-mail
`Signature
`Date
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`
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Serial No:
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`Mark:
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`Applicant:
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` 86366618
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` battlebornip.com
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` Abbott Law Chartered
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`Examining Attorney: Lauren E. Burke, Law Office 106
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`EX PARTE APPEAL
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`APPLICANT’S BRIEF
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`Applicant’s Brief- Ex Parte Appeal: SN 86366618 1 | P a g e
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`TABLE OF CONTENTS
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`INDEX OF CITED CASES……………………………………………………………………3
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`INDEX OF STATUTES AND OTHER AUTHORITIES…………………………………….3
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`DESCRIPTION OF THE RECORD………………………………………………………..4-6
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`A. Prosecution History……………………………………………………………….4
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`B. Examining Attorney’s Evidence………………………………………………..4-5
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`C. Applicant’s Evidence……………………………………………………………..6
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`STATEMENT OF THE ISSUES……………………………………………………………..6
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`RECITATION OF THE FACTS……………………………………………………………..7-8
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`ARGUMENT………………………………………………………………………………... 8-16
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`A. Legal Standard…………………………………………………………………...8-9
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`B. Analysis- Dissimilarity…………………………………………………………10-14
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`C. Analysis- The examiner has not met the required burden of proof in
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`concluding that the services are related……………………………………14-15
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`D. Analysis- The letters “ip” is a double entendre and is thus at a minimum
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`suggestive………………………………………………………………………15-16
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`SUMMARY…………………………………………………………………………………...16
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`Applicant’s Brief- Ex Parte Appeal: SN 86366618 2 | P a g e
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`INDEX OF CITED CASES
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`Application of E.I. DuPont DeNewmours & Co., 476 F.2d 1357, 1361; 177 U.S.P.Q 563,
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`567 (C.C.P.A. 1973)………………………………………………………………………….9
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`Armstar Corp. v. Domino’s Pizza, Inc., 615 F.2d 252, 259-260; 205 U.S.P.Q. 969, 975
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`(5th Cir. 1980)……………………………………………………………………………11-12
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`Bass Pro Trademarks LLC v. Sportsman’s Warehouse, Inc., 89 U.S.P.Q. 2d 1844, 1857
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`(TTAB 2008)………………………………………………………………………………….11
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`Champagne Louis Roderer S.A. v. Delicato Vineyards, 148 F.3d 1373, 1375; 47
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`U.S.P.Q. 1459, 1460 (Fed. Cir. 1998)……………………………………………………..9
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`In re 1st USA Realty Professionals, Inc., 84 U.S.P.Q. 2d 1581, 1586 (TTAB
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`2007)………………………………………………………………………………………….10
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`In re Broadway Chicken., Inc., 38 U.S.P.Q. 1559, 1565 (TTAB 1982)………………...11
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`In re Fox, 702 F.3d 633, 637; 105 U.S.P.Q.2d 1247, 1251 (Fed. Cir. 2012)………….15
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`In re Princeton Tectronics, Inc., 95 U.S.P.Q.2d 1509, 1512 (TTAB 2010)…………….14
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`Ocean Spray Cranberries, Inc. v. Ocean Garden Products, Inc., 223 U.S.P.Q. 1027,
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`1029- 1030 (TTAB 1984)…………………………………………………………………14-15
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`INDEX OF STATUTES AND OTHER AUTHORITIES
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`Trademark Act Section 2d, 15 U.S.C. § 1062(b)…………………………………………..4
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`TMEP 1213.05(c)……………………………………………………………………………..15
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`Applicant’s Brief- Ex Parte Appeal: SN 86366618 3 | P a g e
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`COMES NOW, the Applicant, Abbott Law Chartered, by Counsel, and hereby
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`respectfully appeals the Examining Attorney’s refusal to register the mark
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`BATTLEBORNIP.COM.
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`DESCRIPTION OF THE RECORD
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`A. PROSECUTION HISTORY
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`The BATTLEBORNIP.COM Application (“Application”) was initially refused on
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`December 2, 2014 in a non-final Office Action based on the Trademark Act Section 2d,
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`15 U.S.C. § 1062(b). Applicant filed a response to the Office Action on February 6,
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`2015. On March 30, 2015, the Examining Attorney issued a final Office Action.
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`Applicant filed a Notice of Appeal on September 28, 2015.
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`B. EXAMINING ATTORNEY’S EVIDENCE
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`December 2, 2014 Office Action
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`1. BATTLE BORN INJURY LAWYERS and design U.S. Registration Number
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`4604101 (“CITED MARK”). In the registration, the CITED MARK is described as
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`follows: “[t]he mark consists of a silver and gold ram head, which can also be
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`seen as a silver ram head colliding with a gold ram head, with silver “BATTLE”
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`and gold “BORN” immediately below the ram(s); the wording “INJURY
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`LAWYERS” appears in grey below the larger wording “BATTLE BORN”; the
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`entirety of the mark appears on a black background, which is not mark of the
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`mark.”
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`2. A quotation from www.collinsdictionary.com/dictionary/english/ip showing that the
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`letters “IP” has two potential meanings: intellectual property or internet protocol.
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`Applicant’s Brief- Ex Parte Appeal: SN 86366618 4 | P a g e
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`3. The following internet sites and trademark registrations of marks related to legal
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`services (allegedly showing that the services of the Application and the CITED
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`MARK are related):
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`a. Design mark Registration No. 3246176.
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`b. M P Murphy & Powell Attorneys at Law and design mark Registration
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`No. 4349691.
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`c. Liga Legal word mark Registration No. 4486158.
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`d. Biker Chick Lawyer word mark Registration No. 4488205.
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`e. Whatever You’re Facing We Have Your Back word mark Registration
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`No. 4555574.
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`f. Website for Clark Law Firm.
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`g. Website for Francis Law Firm.
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`h. Website for Tucker IP.
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`March 30, 2015 Office Action
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`1. The following internet sites and trademark registrations of marks related to
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`legal services (allegedly showing that the services of the Application and the
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`CITED MARK are related):
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`a. I.P. Avengers word mark Registration No. 4576150.
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`b. R C P design mark Registration No. 4501155.
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`c. JetSet word mark Registration No. 4617278.
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`d. JM and design mark Registration No. 4691892.
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`e. Ardent Law Group word mark Registration No. 4695433.
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`f. Choquette and Hart website.
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`Applicant’s Brief- Ex Parte Appeal: SN 86366618 5 | P a g e
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`g. Callahan and Blaine website.
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`h. Wharton, Aldhizer and Weaver website.
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`C. APPLICANT’S EVIDENCE
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`February 6, 2015 Response to Office Action
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`1. First Declaration of Eric L. Abbott (“Applicant’s First Dec”)- Evidence of use of the
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`unregistered mark “battlebornlaw.com” for legal services from prior to the
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`use/filing date of the CITED MARK to February 4, 2015.
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`2. Second Declaration of Eric L. Abbott (“Applicant’s Second Dec”)- Evidence of
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`the fact that there are over a 100 entities in the State of Nevada with the words
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`“battle born” in their name.
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`3. Third Declaration of Eric L. Abbott (“Applicant’s Third Dec”)- Evidence of 41
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`entities in the State of Nevada with the name “battle born” in the yellow pages.
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`4. Fourth Declaration of Eric L. Abbott (“Applicant’s Fourth Dec”)- Evidence of 8
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`USPTO trademark registrations besides the CITED MARK .
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`STATEMENT OF THE ISSUES
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`A. ISSUE #1- ARE THE APPLICATION AND THE CITED MARK DISSIMILAR?
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`B. ISSUE #2- HAS THE EXAMINING ATTORNEY MET THEIR REQUIRED
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`BURDEN OF PROOF IN CONCLUDING THAT THE SERVICES ARE
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`RELATED BETWEEN THE APPLICATION AND THE CITED MARK?
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`C. ISSUE #3- ARE THE LETTERS “IP” A DOUBLE ENTENDRE AND THUS AT
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`A MINIMUM SUGGESTIVE?
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`Applicant’s Brief- Ex Parte Appeal: SN 86366618 6 | P a g e
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`RECITATION OF THE FACTS
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`1. The CITED MARK was filed on June 19, 2013 and first used in commerce on
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`March 16, 2013. See CITED MARK attached to the December 2, 2014 Office
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`Action.
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`2. The services for the CITED MARK are the following in Class 45: Legal consulting
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`services in the field of personal injury; Litigation services. See CITED MARK
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`attached to December 2, 2014 Office Action.
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`3. In the CITED MARK, the gold and silver rams head is approximately 1 5/16
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`inches in height while the words “Battle Born Injury Lawyers” is 13/16 inches in
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`height or 60% of the size of the gold and silver rams head. See CITED Mark
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`attached to the December 2, 2014 Office Action.
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`4. The Application’s services are for: “providing customized documentation,
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`information, counseling, advice and consultation services in all areas of business
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`law and intellectual property.” See Application filed on August 14, 2014.
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`5. The Application is for the word mark “BATTLEBORNIP.COM” and does not
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`contain any designs, including but not limited to any animals such as a ram. See
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`Application filed on August 14, 2014.
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`6. The unregistered mark BATTLEBORNLAW.COM has been used since at least
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`2007 through at least February of 2015. See Applicant’s First Dec in the
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`February 6, 2015 Response to Office Action.
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`7. There are over a 100 entities in the State of Nevada with the words “Battle Born”
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`in their company name. See Applicant’s Second Dec in the February 6, 2015
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`Response to Office Action.
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`Applicant’s Brief- Ex Parte Appeal: SN 86366618 7 | P a g e
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`8. There are 41 businesses with the words “Battle Born” in their name throughout
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`the State of Nevada listed in the yellow pages. See Applicant’s Third Dec in the
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`February 6, 2015 Response to Office Action.
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`9. “IP” has two meanings: internet protocol and intellectual property. See
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`December 2, 2014 Office Action.
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`ARGUMENT
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`A. LEGAL STANDARD
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`The thirteen factors to be considered in a likelihood of confusion analysis
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`are as follows:
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`“1. The similarity or dissimilarity of the marks in their entireties as to
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`appearance, sound, connotation and commercial impression.
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`2. The similarity or dissimilarity and nature of the goods or services as
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`described in an application or registration or in connection with which a
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`prior mark is in use.
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`3. The similarity or dissimilarity of established, likely-to-continue trade
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`channels.
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`4. The conditions under which and buyers to whom sales are made, i.e.
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`“impulse” vs. careful, sophisticated purchasing.
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` 5. The fame of the prior mark (sales, advertising, length of use).
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` 6. The number and nature of similar marks in use on similar goods.
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` 7. The nature and extent of any actual confusion.
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` 8. The length of time during and conditions under which there has been
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`concurrent use without evidence of actual confusion.
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`Applicant’s Brief- Ex Parte Appeal: SN 86366618 8 | P a g e
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` 9. The variety of goods on which a mark is or is not used (house mark, “
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`family” mark, product mark).
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`10. The market interface between applicant and the owner of a prior
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`mark:
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` (a) a mere “consent” to register or use.
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` (b) agreement provisions designed to preclude confusion, i.e. limitations
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`on continued use of the marks by each party.
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`(c) assignment of mark, application, registration and good will of the
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`related business.
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`(d) laches and estoppel attributable to owner of prior mark and indicative
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`of lack of confusion.
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`11. The extent to which applicant has a right to exclude others from use of
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`its mark on its goods.
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`12. The extent of potential confusion, i.e., whether de minimis or
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`substantial.
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` 13. Any other established fact probative of the effect of use.”
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`See Application of E.I. DuPont DeNewmours & Co., 476 F.2d 1357, 1361
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`177 U.S.P.Q. 563, 567 (C.C.P.A. 1973).
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`“[T]hat one DuPont factor may be dispositive in a likelihood of confusion analysis,
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`especially when that single factor is the dissimilarity of the marks.” See Champagne
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`Louis Roderer S.A. v. Delicato Vineyards, 148 F3d 1373, 1375;47 U.S.P.Q. 1459, 1460
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`(Fed. Cir. 1998).
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`Applicant’s Brief- Ex Parte Appeal: SN 86366618 9 | P a g e
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`B. ANALYSIS- DISSMILARITY
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`1. Introduction
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`The Application does not have a ram’s head and does not have any reference to
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`any animal. The CITED MARK’s dominant feature is the ram’s head. Further, the use
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`in both marks of the phrase “Battle Born” does not support the Examining Attorney’s
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`conclusion of likelihood of confusion since the phrase “Battle Born” lacks distinctiveness
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`through its common use as a mark.
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`2. The CITED MARK’s Dominant Feature is the Ram’s Head
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`The Examining Attorney’s December 2, 2014 Office Action concluded that the
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`words “Battle Born” were the dominant feature of the CITED MARK (which is a
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`composite mark). To determine whether the design or the wording of a composite mark
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`is dominant, the TTAB has looked at whether: (1) The design is background material;
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`and (2) The design has a separate connotation or makes a separate impression. See In
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`re 1st USA Realty Professionals, Inc., 84 U.S.P.Q. 2d 1581, 1586 (TTAB 2007). In the
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`1st USA case, the cited mark had 1st USA imprinted over stars. The TTAB held that: “a
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`stars motif is often associated with the United States, the stars design tends to simply
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`reinforce the components USA in Application….” Id.
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`In the CITED MARK, the gold and silver ram head appears above the words and
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`is thus not background material. See CITED MARK attached to the December 2, 2014
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`Office Action. Also, in both Office Actions, the Examining Attorney failed to present any
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`evidence in any of the Office Actions that the gold and silver ram head relates to the
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`words “Battle Born”. The connection between a gold and silver ram head and “Battle
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`Born” is not clear from the cited mark. Certainly, if the design in the cited mark
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`Applicant’s Brief- Ex Parte Appeal: SN 86366618 10 | P a g e
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`contained swords or firearms, then such a hypothetical design would reinforce the
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`words “Battle Born”.
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`In this analysis, the size and placement of the design versus the words is an
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`important part of the analysis. In concluding that the Bass Pro Shops logo was the
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`dominant element of composite mark, the TTAB looked at how the words in the
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`composite mark were below the logo and smaller. See Bass Pro Trademarks LLC v.
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`Sportsman’s Warehouse, Inc., 89 U.S.P.Q. 2d 1844, 1857 (TTAB 2008).
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`Here, in the CITED MARK, the ram’s head appears above the phrase “BATTLE
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`BORN INJURY LAWYERS” and these words are smaller than the ram’s head logo.
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`See CITED MARK attached to the December 2, 2014 Office Action. The words
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`“BATTLE BORN” are approximately 13/16 inches in height, while the gold and silver
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`ram head is approximately 1 5/16 inches in height. See CITED MARK attached to the
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`December 2, 2014 Office Action. Thus, in terms of height, the words “Battle Born” is
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`approximately 60% of the size of the gold and silver ram head. Also, the gold and silver
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`ram head is at the top of the mark- the first thing that a consumer will see (most
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`consumers read from top to bottom).
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`Therefore, the dominant feature of the CITED MARK is the ram’s head.
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`3. The words “Battle Born” Lack Distinctiveness
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`As will be shown below, “Battle Born” is commonly used and weak. Where a
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`component is commonly used and weak, consumers are likely to look to “other
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`elements of the marks as a means of distinguishing the source of goods or services in
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`the field.” See In re Broadway Chicken., Inc., 38 U.S.P.Q. 1559, 1565 (TTAB 1982).
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`Applicant’s Brief- Ex Parte Appeal: SN 86366618 11 | P a g e
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`“The greater the number of identical or more or less similar trade-marks already
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`in use on different kinds of goods, the less is the likelihood of confusion.” See Armstar
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`Corp. v. Domino’s Pizza, Inc., 615 F.2d 252, 259-260; 205 U.S.P.Q. 969, 975 (5th Cir.
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`1980) (quoting from comment g of the Restatement of Torts § 729 (1938)). “Another
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`indication of distinctiveness in a trademark consisting of a word singly or in conjunction
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`with another is the frequency of prior use of the word in other marks, particularly in the
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`same field of merchandise or service.” See Pizzeria Uno Corp. v. Temple, 224 U.S.P.Q
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`185, 190 (4th Cir. 1984).
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`“[B]attlebornlaw.com” has been a service mark used in the context of legal
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`services (including litigation services) in at least the State of Nevada since at least
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`2007. See Applicant’s First Dec Attached to the February 6, 2015 Response and
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`associated internet printouts related to Martin and Allison.
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`There are over a 100 entities in the State of Nevada with the words “Battle Born”
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`in their company name. See Applicant’s First Dec attached to the February 6, 2015
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`Response and the internet printout from the Nevada Secretary of State.
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`For service marks, evidence of use of marks in the yellow pages “carries the
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`presumption that the service mark is being used by third-parties in connection with the
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`offering of the advertised services.” See Lloyd’s Food Products, Inc. v. Eli’s, Inc., 987
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`F.2d 766, 768; 25 U.S.P.Q 2d 2027, 2029 (Fed. Cir. 1993).
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`On the yellowpages.com website there are the following numbers of companies
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`with the words “Battle Born” in their name: 15 companies listed as near Las Vegas, NV;
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`22 companies listed as near Reno, NV; 4 companies listed as near Ely, NV. See
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`Applicant’s Third Dec Attached to the February 6, 2015 Response and the internet
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`Applicant’s Brief- Ex Parte Appeal: SN 86366618 12 | P a g e
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`printout from yellowpages.com. The services listed in yellowpages.com include the
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`following: bird barriers; survival products and supplies; home improvements; martial arts
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`instruction; excavation contractors; trucking; electricians; real estate agents; gunsmiths;
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`handyman services; civil engineers; health clubs; sports and entertainment centers;
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`tattoos; body piercing; real estate inspection; insurance; general contractors; landscape
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`contractors; tree service; carpet and rug cleaners; and advertising agencies. See
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`Applicant’s Third Dec Attached to the February 6, 2015 Response and the internet
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`printout from yellowpages.com.
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`Excluding the CITED MARK, the following trademarks with the words “Battle
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`Born” are registered on the principal register of the United States Patent and Trademark
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`Office (not owned by the owner of the CITED MARK):
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`1.
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`2.
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`3.
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`4.
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`5.
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`6.
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`“Battle Born” in class 25. Registration No. 4674065.
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`“Battle Born Distributing” in class 35. Registration No. 2611716.
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`“Battle Born” in class 32. Registration No. 4240320.
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`“Battle Born and design” in class 13. Registration No. 4406504.
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`“BattleBorn” in class 9. Registration No. 4289161.
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`“Battle Born Guns by U.S. Firearms Academy and design” in class 40.
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`Registration No. 4112410.
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`7.
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`8.
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`“Battle Born” in classes 13 and 40. Registration No. 4112409.
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`Heli 1 Corp Battle Born in class 39. Registration No. 3334189.
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`See Applicant’s Fourth Dec attached to the February 6, 2015 Response and the
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`registration printouts from the United States Patent and Trademark Office
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`website.
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`Applicant’s Brief- Ex Parte Appeal: SN 86366618 13 | P a g e
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`Here are some of the goods and services that are listed in these “Battle Born”
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`registrations: over twenty different types of articles of clothing; wholesale distributorship
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`services; beer; guns; computers; and helicopter charter services. See Applicant’s Fourth
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`Dec attached to the February 6, 2015 Response and the registration printouts from the
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`United States Patent and Trademark Office website.
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`The mere fact that the CITTED MARK and the Application have some similarities
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`is an insufficient basis to support an allegation of likelihood of confusion when the
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`shared element is so weak. This factor clearly indicates that confusion between the
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`respective marks is not likely.
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`C. ANALYSIS- THE EXAMINER HAS NOT MET THE REQUIRED BURDEN OF
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`PROOF IN CONCLUDING THAT THE SERVICES ARE RELATED
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`The TTAB has held that the examiner has the burden to make a prima facie
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`showing that goods are related. See In re Princeton Tectronics, Inc., 95 U.S.P.Q.2d
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`1509, 1512 (TTAB 2010). Both Office Action’s analysis focused on how the services
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`listed under the Application and the services in the cited mark can be sold by the same
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`law firm or “emanate from a single source”. Just as McDonald’s sells salads, breakfast
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`burritos, fish sandwiches and hamburgers, some law firms will both sell litigation
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`services and intellectual property services. The Applicant does not dispute these facts.
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`The issue is that the Examining Attorney did not perform the proper comparison
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`between the services in the Application and the services in the CITED MARK.
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`It is common knowledge that food stores sell both seafood and cranberry juice-
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`arguably the same channels of trade. However, the TTAB, when faced with potentially
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`similar marks for these types of goods, as part of the TTAB’s finding of likely no
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`Applicant’s Brief- Ex Parte Appeal: SN 86366618 14 | P a g e
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`
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`confusion, the TTAB looked at the comparison of the goods themselves (applicant’s
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`seafood goods versus the opposer’s fruit, preserves, condiment and bakery products).
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`See Ocean Spray Cranberries, Inc. v. Ocean Garden Products, Inc., 223 U.S.P.Q.
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`1027, 1029- 1030 (TTAB 1984).
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`Both Office Actions did not perform the required comparison of the services listed
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`in the CITED MARK and the Application. The CITED MARK’s services are limited to:
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`“[l]egal consulting services in the field of personal injury; Litigation services.” The
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`Application’s services do not include services related to personal injury or litigation.
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`Therefore, the services are not related.
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`D. ANALYSIS- THE LETTERS “IP” IS A DOUBLE ENTENDRE AND IS THUS
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`AT A MINIMUM SUGGESTIVE
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`TMEP 1213.05(c) states in pertinent part:
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`“A “double entendre” is a word or expression capable of more than one
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`interpretation. For trademark purposes, a “double entendre” is an expression
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`that has a double connotation or significance as applied to the goods or
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`services. The mark that comprises the “double entendre” will not be refused
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`registration as merely descriptive if one of its meanings is not merely
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`descriptive in relation to the goods or services.”
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`A “double entendre” is entitled to a “presumption of registrability” under TMEP
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`1213.05(c). See In re Fox, 702 F.3d 633, 637; 105 U.S.P.Q.2d 1247, 1251 (Fed. Cir.
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`2012).
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`Applicant’s Brief- Ex Parte Appeal: SN 86366618 15 | P a g e
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`Here, according to the Collins Dictionary excerpt submitted with the December 2,
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`2014 Office Action, “IP” can mean intellectual property or internet protocol. “Internet
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`protocol” is clearly NOT descriptive of the legal services listed in the Applicant’s
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`application under class 45. “Internet protocol” relates to a certain type of computer
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`code. In the Office Actions, the Examining Attorney failed to provide any evidence that
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`“internet protocol” is descriptive of the Application’s mark’s services. Therefore, “IP” is
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`at minimum suggestive and not descriptive. Registrability of the Application is thus
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`presumed.
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`SUMMARY
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`In view of the foregoing, it is respectfully submitted there is no likelihood of
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`confusion between CITED MARK and the Application. The dominant feature of the
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`CITED MARK is the ram’s head design. The Application’s proposed mark does not
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`have any design nor any reference to any animals. Also, the letters “IP” added to
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`battlebornip.com makes the Application suggestive. Therefore, it is respectfully
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`requested that the Application be approved for publication.
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`Dated this 25th day of November, 2015
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`/Eric L Abbott/
`Eric L. Abbott
`Abbott Law Chartered
`6900 Westcliff Drive, Suite 511
`Las Vegas, NV 89145
`TEL: (702) 431-5800
`Attorney for Applicant
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`Applicant’s Brief- Ex Parte Appeal: SN 86366618 16 | P a g e