Generated on: This page was generated by TSDR on 2017-02-02 10:29:47 EST
`
`Mark: THRIVEST LEGAL FUNDING
`
`US Serial Number: 86740893
`
`Filed as TEAS RF: Yes
`
`Register: Principal
`
`Mark Type: Service Mark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`Aug. 28, 2015
`
`Currently TEAS RF: Yes
`
`LIVE/APPLICATION/Appeal of Refusal Pending
`
`An appeal of the Office's final refusal to register a pending trademark
`application is currently pending.
`
`Status: An appeal of a final refusal to register the mark is pending before the Trademark Trial and Appeal Board. For further information, see
`TTABVUE on the Trademark Trial and Appeal Board web page.
`
`Status Date: Jan. 23, 2017
`
`Mark Information
`
`Mark Literal
`Elements:
`
`Standard Character
`Claim:
`
`Mark Drawing
`Type:
`
`THRIVEST LEGAL FUNDING
`
`Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
`
`4 - STANDARD CHARACTER MARK
`
`Disclaimer: "LEGAL FUNDING"
`
`Goods and Services
`
`Note: The following symbols indicate that the registrant/owner has amended the goods/services:
`
`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: Financing and loan services in the area of lawsuit funding; process financing services, namely, facilitating and arranging financing of
`litigation; financing services in the legal field, namely, litigation financing, plaintiff funding, and attorney funding; financial services for
`lawsuit plaintiffs in the litigation field, namely, litigation financing for lawsuit plaintiffs, plaintiff funding, lawsuit settlement funding for
`plaintiffs, and pre-settlement lawsuit funding for lawsuit plaintiffs
`
`International
`Class(es):
`
`036 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(b)
`
`Filed Use: No
`
`Filed ITU: Yes
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Filed No Basis: No
`
`U.S Class(es): 100, 101, 102
`
`Basis Information (Case Level)
`
`Currently Use: No
`
`Currently ITU: Yes
`
`Currently 44D: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Amended Use: No
`
`Amended ITU: No
`
`Amended 44D: No
`
`Amended 44E: No
`
`Currently No Basis: No
`Current Owner(s) Information
`
`Owner Name: LawSuit Funding Solutions, LLC
`
` 
`

`

`Owner Address: P.O. Box 472
`Valley Forge, PENNSYLVANIA UNITED STATES 194810472
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`State or Country
`Where Organized:
`Attorney/Correspondence Information
`
`PENNSYLVANIA
`
`Attorney Name: John P. Sullivan
`
`Attorney of Record
`Docket Number: TVL-TM001
`
`Attorney Primary
`Email Address:
`
`john@wertmanlaw.com jsullivan@vklaw.com lhen
`nessey@vklaw.com
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`Name/Address:
`
`JOHN P SULLIVAN
`WERTMAN LAW LLC
`230 S BROAD STREET
`SUITE 1700
`PHILADELPHIA, PENNSYLVANIA UNITED STATES 19102
`
`Correspondent
`
`Phone: 9415248886
`
`Fax: 9415248886
`
`Correspondent e-
`mail:
`
`john@wertmanlaw.com ryan@wertmanlaw.com al
`@wertmanlaw.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`Prosecution History
`
`Date
`
`Description
`
`Jan. 23, 2017
`Jan. 23, 2017
`Jan. 23, 2017
`Jan. 23, 2017
`Jan. 23, 2017
`Jan. 23, 2017
`Jan. 23, 2017
`Jul. 22, 2016
`Jul. 22, 2016
`Jul. 22, 2016
`Jun. 21, 2016
`Jun. 20, 2016
`Jun. 20, 2016
`Dec. 18, 2015
`Dec. 18, 2015
`Dec. 18, 2015
`Dec. 11, 2015
`Sep. 14, 2015
`Sep. 14, 2015
`Sep. 02, 2015
`Sep. 01, 2015
`
`TEAS REQUEST FOR RECONSIDERATION RECEIVED
`ATTORNEY REVOKED AND/OR APPOINTED
`TEAS REVOKE/APPOINT ATTORNEY RECEIVED
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`EX PARTE APPEAL-INSTITUTED
`JURISDICTION RESTORED TO EXAMINING ATTORNEY
`EXPARTE APPEAL RECEIVED AT TTAB
`NOTIFICATION OF FINAL REFUSAL EMAILED
`FINAL REFUSAL E-MAILED
`FINAL REFUSAL WRITTEN
`TEAS/EMAIL CORRESPONDENCE ENTERED
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`TEAS RESPONSE TO OFFICE ACTION RECEIVED
`NOTIFICATION OF NON-FINAL ACTION E-MAILED
`NON-FINAL ACTION E-MAILED
`NON-FINAL ACTION WRITTEN
`ASSIGNED TO EXAMINER
`TEAS AMENDMENT ENTERED BEFORE ATTORNEY ASSIGNED
`TEAS VOLUNTARY AMENDMENT RECEIVED
`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
`NEW APPLICATION ENTERED IN TRAM
`TM Staff and Location Information
`
`TM Attorney: MICHELI, ANGELA M
`
`Current Location: TMEG LAW OFFICE 101 - EXAMINING
`ATTORNEY ASSIGNED
`
`Summary
`
`TM Staff Information
`Law Office
`Assigned:
`
`LAW OFFICE 101
`
`File Location
`Date in Location: Jul. 22, 2016
`
`Proceedings
`
`Proceeding
`Number
`
`740893
`740893
`
`67971
`88889
`88889
`
`6325
`6325
`67971
`67971
`88889
`
`

`

`Number of
`Proceedings:
`
`1
`
`Proceeding
`Number:
`
`86740893
`
`Status: Pending
`
`Interlocutory
`Attorney:
`
`Type of Proceeding: Exparte Appeal
`Filing Date: Jan 23, 2017
`
`Status Date: Jan 23, 2017
`
`Name: LawSuit Funding Solutions, LLC
`
`Correspondent
`Address:
`
`JOHN P SULLIVAN
`WERTMAN LAW LLC
`230 S BROAD STREET, SUITE 1700
`PHILADELPHIA PA UNITED STATES , 19102
`
`Plaintiff(s)
`
`john@wertmanlaw.com , trademarks@vklaw.com , jsullivan@vklaw.com , lhennessey@vklaw.com
`
`Correspondent e-
`mail:
`
`Associated marks
`
`Mark
`
`THRIVEST LEGAL FUNDING
`
`Entry Number
`
`1
`2
`3
`
`History Text
`APPEAL TO BOARD
`Appeal Acknowledged; Case Remanded
`INSTITUTED
`
`Application Status
`
`Ex Parte Appeal Pending
`Prosecution History
`
`Serial
`Number
`86740893
`
`Registration
`Number
`
`Due Date
`
`Date
`Jan 23, 2017
`Jan 23, 2017
`Jan 23, 2017
`
` 
`

`

`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 1960 (Rev 10/2011)
`
`OMB No. 0651-0050 (Exp 07/31/2017)
`
`Request for Reconsideration after Final Action
`
`The table below presents the data as entered.
`
`Input Field
`
`Entered
`
`SERIAL NUMBER
`
`86740893
`
`LAW OFFICE ASSIGNED
`
`LAW OFFICE 101
`
`MARK SECTION
`
`MARK
`
`https://tmng-al.uspto.gov/resting2/api/img/86740893/large
`
`LITERAL ELEMENT
`
`THRIVEST LEGAL FUNDING
`
`STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`YES
`
`YES
`
`MARK STATEMENT
`
`ARGUMENT(S)
`
`The mark consists of standard characters, without claim to any particular font style, size or color.
`
`Applicant writes in response to the Office Action issued in connection with the U.S. Application Serial No. 86/740,893 on July 22, 2016 and
`addresses the Examining Attorney?s objections in full as follows: I. Identification of Services The identification of services has been amended
`in order to detail Applicant?s services with a higher degree of specificity. As amended, Applicant?s services are more narrowly and concisely
`defined. As amended, the identification of services reads as follows: INTERNATIONAL CLASS 36: ?Lawsuit funding services; facilitating
`and arranging financing of litigation; litigation financing, plaintiff funding, and attorney funding; litigation financing for lawsuit plaintiffs,
`plaintiff funding, lawsuit settlement funding for plaintiffs, and pre-settlement lawsuit funding for lawsuit plaintiffs.? Applicant highlights that
`it has deleted wording or otherwise refrained from including broader wording pertaining to ?financing and loan? services or ?loan services?.
`Accordingly, Applicant contends that all services set forth in the amended identification are properly classified under International Class 36.
`Therefore, it is respectfully submitted that the identification of services, as amended, is sufficiently definite for purposes of registration and
`acceptance is respectfully urged. II. Section 2(d) Likelihood of Confusion Objection The Examining Attorney has cited to the presence of the
`following U.S. Registrations for THRIVENT-formative marks as a basis for refusing registration of Applicant?s Mark THRIVEST LEGAL
`FUNDING (?Applicant?s Mark?): U.S. Registration Nos. 4,685,760; 4,679,502; 4,329,007; 3,250,713; 2,821,568; 2,830,481; 2,813,735;
`2,821,594; and 2,815,440 (collectively referenced herein as the ?Cited Registrations?). All of the Cited Registrations are owned by Minnesota-
`based Thrivent Financial for Lutherans and are primarily directed to insurance planning and management, annuities planning and management,
`and life and retirement planning and management. None of the Cited Registrations are directed to lawsuit funding or litigation-related specialty
`funding solutions. For the reasons discussed below, Applicant respectfully requests reconsideration and withdrawal of the refusal based upon
`the Cited Registrations. A. Similarities Between the Marks Are Not Dispositive of Confusion Although the Cited Registrations incorporate the
`THRIVE* prefix, this fact alone is far from dispositive of a likelihood of confusion. "Per se" rules relating to likelihood of confusion have
`been struck down as being too inflexible and contrary to trademark law, where each case must be decided based on its own facts and
`circumstances. See In re Quadram Corporation, 228 U.S.P.Q. 863, 865 (TTAB 1985) and cases cited therein. In this case, the differences in the
`services covered by the respective marks and distinct channels of trade make confusion unlikely. As previously emphasized by Applicant, the
`fact that the marks of the Cited Registrations and Applicant?s Mark may contain the prefix THRIVE* is not a sufficient basis by itself for
`refusing registration. In fact, courts have specifically held that the use of even identical marks in connection with products or services that
`differ sufficiently from one another may prevent any likelihood of confusion between the uses of the marks. See, e.g., Taj Mahal Enterprises
`Ltd. v. Trump, 745 F. Supp. 240 (D.N.J. 1990)(no likelihood of confusion between use of TAJ MAHAL for restaurant and use for casino and
`hotel); In re Texas Instruments, Inc., 193 U.S.P.Q. 678 (T.T.A.B. 1976) (no likelihood of confusion between ?COPPER CLAD? for copper-
`coated carbon electrodes for electric arc cutting and gouging and ?COPPERCLAD & Design? for composite metal wire for use in electric
`conductors); and In re Vogue Tyre & Rubber Co., 176 U.S.P.Q. 189 (T.T.A.B. 1972) (no confusing similarity between ?CUSTOM BUILT &
`Design? for goods including storage batteries and ?CUSTOM BUILT? for tires). This is true even when the two identical marks are used for
`the same field or general category of products. See, e.g., Astra Pharmaceutical Products, Inc. v. Beckman Instruments, Inc., 718 F.2d 1201 (1st
`Cir. 1983) (no likelihood of confusion between use of ASTRA for local anesthetic preparation versus ASTRA computerized blood analyzer
`machine). A number of other cases have addressed the issue of whether trademarks are confusingly similar if they share a common term or
`terms. In General Mills, Inc. v. Kellogg Co., the court held that ?[t]he use of identical dominant words does not automatically mean that the
`two marks are similar.? 824 F.2d 622, 627 (8th Cir. 1987)(determining that OATMEAL RAISIN CRISP and APPLE RAISIN CRISP are not
`confusingly similar)(citing Freedom Sav. & Loan Asso. v. Way, 757 F.2d 1176, 1183 (11th Cir. Fla. 1985). In this case, Applicant?s Mark is
`
`

`

`readily distinguishable from the marks covered by the Cited Registrations. Specifically, with the inclusion of the suffix *EST after THRIVE*
`and the addition of the wording LEGAL FUNDING, Applicant?s Mark is a unique composite mark that is markedly distinct from the marks
`covered by the Cited Registrations in terms of appearance, phonetics and meaning. None of the marks covered by the Cited Registrations
`include any wording resembling the phrase ?LEGAL FUNDING? as displayed in Applicant?s Mark. Further, Applicant?s use of the *EST
`suffix after THRIV* also creates a very distinct term in THRIVEST that is also on its own distinguishable from the term THRIVENT as
`registered by Thrivent Financial for Lutherans. The Examining Attorney?s argument that Applicant?s Mark only differs from the cited
`THRIVENT marks by one letter, namely, inclusion of the letter ?s? rather than ?n? in the prefix, represents an improper and legally
`unsupported dissection of Applicant?s Mark. There is no legal principle under U.S. trademark law stating that the difference of one letter in
`term terms/marks creates a likelihood of confusion. Moreover, the Examining Attorney?s failure to factor into her assessment Applicant?s
`inclusion of the wording LEGAL FUNDING along with the term THRIVEST in its mark further renders her likelihood of confusion finding
`erroneous. To the contrary, when the marks are viewed in their entirety, it is apparent that Applicant?s Mark is readily distinguishable from the
`marks covered by the Cited Registrations. Accordingly, given the weight of such precedent, it is apparent that the fact that the marks share the
`prefix THRIVE* in this case is not controlling and does not support a finding of likelihood of confusion. B. The Services Are Readily
`Distinguishable The Examining Attorney?s likelihood of confusion refusal was also supported by an assertion that the services of the subject
`application, as filed, would likely lead consumers and potential consumers to believe that the Applicant?s services emanate from the same
`source as those provided by the Registrant under the marks covered by the Cited Registrations. It is well settled that the question of likelihood
`of confusion must be determined based on an analysis of the mark as applied to the goods and/or services recited in Applicant's application vis-
`a-vis the goods and/or services recited in the cited registration. See Canadian Imperial Bank of Commerce, N.A. v. Wells Fargo Bank, 1
`U.S.P.Q. 2d 1813 (Fed. Cir. 1987); Paula Payne Products Co. v. Johnson Publishing Co., 177 U.S.P.Q. 76 (C.C.P.A. 1973). The Examining
`Attorney's blanket assertion that the services of the respective parties are sufficiently related to cause confusion is simply not accurate. In
`particular, as amended, Applicant?s Mark covers narrowly defined services specifically directed to the provision of lawsuit funding and related
`litigation funding services for both plaintiffs and attorneys. Applicant?s website clearly shows this specific focus and expressly describes
`Applicant?s lawsuit funding services by stating that Applicant provides ?financing to attorneys and plaintiffs based on the value of future
`receivables. Legal funding is intended to be used by plaintiffs who are short on capital after experiencing physical or emotional trauma, or by
`attorneys who are lacking the financial capital necessary to adequately push business forward.? A screenshot of Applicant?s website displaying
`this statement is attached hereto as Exhibit A. As more fully detailed on Applicant?s website found at www.thrivest.com, the type of legal
`funding offered by Applicant can be more particularly defined as ?an advance available to contingency fee attorneys and plaintiffs, which is
`calculated based on the anticipated legal fee or settlement reward of the party being funded.? A screenshot captured from the portion of
`Applicant?s website titled ?An Essential Guide to Legal Funding? (https://thrivest.com/legal-funding/the- essential-guide-to-legal-funding/)
`with additional information about the unique nature of the services offered by Applicant is attached as Exhibit B. In stark contrast, the Cited
`Registrations do not cover any lawsuit funding- related services at all. To the contrary, the Cited Registrations are expressly limited in scope to
`insurance, annuity, and investment planning services, including retirement planning services. Further, a review of the Registrant?s website
`shows that Registrant is a Christian-focused company offering finance services specifically in the areas of insurance, annuities, and investment
`services for retirement planning. Registrant does not offer any lawsuit funding services or any other funding solutions that are in any way
`similar to those offered by Applicant. A screenshot of Registrant?s website is attached hereto as Exhibit C for reference. Such retirement
`planning, insurance, and annuity services are readily distinguishable from the lawsuit funding services offered by Applicant under the applied-
`for mark. It is simply incorrect to classify such services as being related; blanket assertions that such services are related represents an
`improper over-simplification and gross mischaracterization of widely disparate areas of the financial world. Lawsuit funding services have
`nothing to do retirement planning, insurance, or annuity services. In support of this fact, Applicant highlights that ?lawsuit funding/financing?
`as a term of art is not a form of loan funding or financing, but is instead a unique service offering. As noted in many online resources and
`respected financial journals, people often confuse legal funding with loans. One such article discusses this misconception as follows: ?On the
`surface, legal funding appears to possess the same characteristics as an unsecured loan with a traditional lender. In actuality, litigation funding
`is generally not considered a loan, but rather as a form of an asset purchase. The funding does not have to be repaid if the plaintiff's lawsuit is
`unsuccessful. In addition, litigants generally do not have to pay monthly fees in obtaining legal financing. Instead, there are no payments of
`any kind until the case settles or judgment is obtained, which could be months or years away. Because such legal funding advances are not
`debt and not reported to the credit bureaus, the litigant's credit ratings cannot be adversely affected if a litigant obtains a legal funding
`advance.? See ? Legal Financing (definition)?, January 23, 2017, https://en.wikipedia.org/wiki/Legal_financing. A copy of this article defining
`?legal financing? and noting how it is a distinct term of art in the asset purchase industry separate and apart from common loan financing is
`attached hereto as Exhibit D. Such types of legal funding services offered by Applicant do not pertain in any way to the type of retirement
`planning, insurance, or annuity services offered by Registrant, nor are such services even targeted towards the same consumers. Further,
`consumers interested in lawsuit financing, which can include attorneys looking for litigation- related financing, are not necessarily the same
`consumers who would be looking for insurance or annuity services. As highlighted above, lawsuit financing is targeted to a very specific
`consumer demographic that is readily distinct from the consumer demographic interested in retirement planning or annuity services. To this
`end, it is extremely unlikely that such consumers would confuse the lawsuit funding related services offered under Applicant?s Mark with the
`retirement planning, insurance and annuity services offered by the Registrant of the Cited Registrations. Therefore, the services, channels of
`trade, and targeted consumers are readily distinguishable. This key distinction is readily understood by consumers, whereby lawsuit funding
`services are not marketed in the same places or targeted to the same consumers as the types of retirement planning, insurance, and annuity
`services covered by the Cited Registrations. Such distinct target markets and readily distinguishable, highly sophisticated consumer bases
`strongly support the fact that the services are in fact readily distinguishable. Further, a search of U.S. Patent & Trademark (?USPTO?) records
`revealed numerous active Registrations or Applications that have been allowed by the USPTO for THRIV*-formative marks covering a variety
`of investment or finance-related services that are identical or otherwise similar to the products covered by the Cited Registrations. For
`
`

`

`reference, noteworthy examples include the following search results: (1) U.S. Reg. No. 4,532,198 for the mark THRIVE covering ?financial
`planning for retirement?; (2) U.S. Reg. No. 3,936,504 for CU THRIVE covering various services in the financial area, including ?financial
`planning? and ?financial management?; (3) U.S. Reg. No. 3,451,434 for LET?S THRIVE covering a variety of financial services, including
`insurance brokerage, financial, and investment planning services; and (4) allowed U.S. Application Serial No. 86/289,163 for THRIVE OR
`DIVE covering financial planning and wealth management advisory services. Copies of the USPTO?s TESS records for each of these cited
`Registrations and Applications are attached hereto collectively as Exhibit E. The existence of these marks, all of which are peacefully co-
`existing on the Trademark Register, supports the proposition that the USPTO is of the opinion that no one party can be entitled to a broad
`scope of protection in connection with the use of a THRIV*-formative mark for financial services. The number and nature of similar marks in
`use on similar goods and/or services helps determine that the cited mark is weak and entitled to a narrow scope of protection. In re Hamilton
`Bank, 222 U.S.P.Q. 174 (T.T.A.B. 1984); In re Dayco Products-Eaglemotive, Inc., 9 U.S.P.Q. 3d 1910 (T.T.A.B. 1988). A word used in
`connection with a variety of goods and services eventually loses its distinctive character and becomes ?merely one of a crowd.? 2 J. Thomas
`McCarthy, McCarthy on Trademarks and Unfair Competition ? 11.85 (4th ed. 1998). Thus, the presence of the cited THRIV*-formative
`marks, as well as the THRIVENT marks covered by the Cited Registrations, establishes the USPTO?s position of allowing marks containing
`the THRIV* prefix to register over one another for use in connection with various types of financial services. The case of In re 1776, Inc., 223
`U.S.P.Q. 186, 187-88 (T.T.A.B. 1984), is analogous to the present matter in that the Applicant sought registration of the two marks, namely,
`MAMA'S and MAMA'S PLUS DESIGN for restaurant services. Registration was refused in view of the registered marks MAMA
`VENTURA'S, MOMMA'S MONEY, MAMMA REGINA, and ROCKY ROCCOCO'S MAMA'S LASAGNA (and Design), all covering
`restaurant services. The Examining Attorney held that the term MAMA'S was the dominant portion of the Applicant's mark, and as such, was
`confusingly similar to the four registered marks. On appeal, the Trademark Trial and Appeal Board reversed the refusal to register holding that
`the registration of the four cited marks indicated that they were not confusingly similar, and thus, the Applicant's mark would not be
`confusingly similar to the registered marks. This is precisely the case in the present matter. As the USPTO has permitted other similar
`THRIV*-formative marks for finance-related services to register over one another, Applicant's Mark THRIVEST LEGAL FUNDING mark
`should also be permitted to register over the presence of the Cited Registrations. It has long been held that when determining whether one mark
`is likely to cause confusion with another, the likelihood that there will be confusion must be strong. The mere possibility that some consumers
`will be confused is not enough. Vitek Systems, Inc. v. Abbott Laboratories, 675 F.2d 190, 192 (8th Cir. 1982). See also HMH Publishing Co.,
`Inc. v. Brincat, 504 F.2d 713, 717 (9th Cir. 1974). The issue is not the mere theoretical possibility of confusion, deception or mistake, or with
`de minimis situations, but with practicalities of the commercial world. In re Massey-Ferguson Inc., 222 USPQ 367 (T.T.A.B. 1983); Witco
`Chemical Co., Inc. v. Whitfield Chemical Co., Inc., 164 USPQ 43 (CCPA 1969). As stated in Lever Brothers Co. v. American Bakeries Co.,
`693 F.2d 251, 253 (2d Cir. 1982), the ?crucial issue is whether there exists a likelihood that an appreciable number of ordinary prudent
`purchasers will be misled, or simply confused, as to the source of the goods in question.? See also General Adjustment Bureau, Inc. v. General
`Insurance Adjustment Co., Inc., 381 F.2d 991, 993 (10th Cir. 1967). Here, it is quite unlikely that an appreciable number of purchasers would
`assume that the services of the foregoing parties are related, let alone encounter and be confused by the presence of Applicant?s THRIVEST
`LEGAL FUNDING services, as they have been conditioned to see many products and services that are branded with THRIV*- formative
`names. Applicant has shown that the sophisticated purchasers of the services covered by Applicant?s Mark and Cited Registration marks are
`already used to encountering a number of THRIV*-formative marks covering a wide variety of finance, insurance, and investment-related
`services. As such, it is submitted that such sophisticated consumers will continue to be able to distinguish between the various THRIV*-
`formative marks present in the marketplace, and that the registration of Applicant's Mark THRIVEST will not result in an occurrence or
`increase in confusion. Accordingly, it is respectfully submitted that the refusal of registration under Section 2(d) should be withdrawn.
`Conclusion In view of the foregoing, Applicant respectfully contends the grounds for objection outlined by the Examining Attorney have been
`traversed in full, and further and favorable action in connection with the application is earnestly solicited.
`
`EVIDENCE SECTION
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`        EVIDENCE FILE NAME(S)
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`       ORIGINAL PDF FILE
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`evi_50202133242-20170123201406151266_._Exhibit_A_re_Office_Action_Response_to_THRIVEST.pdf
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`       ORIGINAL PDF FILE
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`evi_50202133242-20170123201406151266_._Exhibit_B_re_Office_Action_Response_to_THRIVEST.pdf
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`       CONVERTED PDF FILE(S)
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`       ORIGINAL PDF FILE
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`evi_50202133242-20170123201406151266_._Exhibit_C_re_Office_Action_Response_to_THRIVEST.pdf
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`       CONVERTED PDF FILE(S)
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`       CONVERTED PDF FILE(S)
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`DESCRIPTION OF EVIDENCE FILE copies of Exhibits as cited and more fully discussed in Applicant's Arguments
`
`GOODS AND/OR SERVICES SECTION (current)
`
`INTERNATIONAL CLASS
`
`036
`
`DESCRIPTION
`
`Financing and loan services in the area of lawsuit funding; process financing services, namely, facilitating and arranging financing of
`litigation; financing services in the legal field, namely, litigation financing, plaintiff funding, and attorney funding; financial services for
`lawsuit plaintiffs in the litigation field, namely, litigation financing for lawsuit plaintiffs, plaintiff funding, lawsuit settlement funding for
`plaintiffs, and pre-settlement lawsuit funding for lawsuit plaintiffs
`
`FILING BASIS
`
`Section 1(b)
`
`GOODS AND/OR SERVICES SECTION (proposed)
`
`INTERNATIONAL CLASS
`
`036
`
`TRACKED TEXT DESCRIPTION
`
`Financing and loan services in the area of lawsuit funding; Lawsuit funding services; process financing services, namely, facilitating and
`arranging financing of litigation; facilitating and arranging financing of litigation; financing services in the legal field, namely, litigation
`financing, plaintiff funding, and attorney funding; litigation financing, plaintiff funding, and attorney funding; financial services for lawsuit
`
`       
`       
`       
`       
`       
`       
`       
`       
`       
`       
`

`

`plaintiffs in the litigation field, namely, litigation financing for lawsuit plaintiffs, plaintiff funding, lawsuit settlement funding for plaintiffs,
`and pre-settlement lawsuit funding for lawsuit plaintiffs; litigation financing for lawsuit plaintiffs, plaintiff funding, lawsuit settlement funding
`for plaintiffs, and pre-settlement lawsuit funding for lawsuit plaintiffs
`
`FINAL DESCRIPTION
`
`Lawsuit funding services; facilitating and arranging financing of litigation; litigation financing, plaintiff funding, and attorney funding;
`litigation financing for lawsuit plaintiffs, plaintiff funding, lawsuit settlement funding for plaintiffs, and pre-settlement lawsuit funding for
`lawsuit plaintiffs
`
`FILING BASIS
`
`Section 1(b)
`
`NEW CORRESPONDENCE SECTION
`
`NAME
`
`FIRM NAME
`
`John P. Sullivan
`
`Wertman Law LLC
`
`INTERNAL ADDRESS
`
`230 S. Broad Street, Suite 1700
`
`STREET
`
`CITY
`
`STATE
`
`ZIP/POSTAL CODE
`
`COUNTRY
`
`PHONE
`
`FAX
`
`EMAIL
`
`230 S. Broad Street, Suite 1700
`
`Philadelphia
`
`Pennsylvania
`
`19102
`
`United States
`
`9415248886
`
`9415248886
`
`john@wertmanlaw.com;john@wertmanlaw.com;ryan@wertmanlaw.com;al@wertmanlaw.com
`
`AUTHORIZED EMAIL
`COMMUNICATION
`
`SIGNATURE SECTION
`
`RESPONSE SIGNATURE
`
`SIGNATORY'S NAME
`
`Yes
`
`/John P. Sullivan/
`
`John P. Sullivan
`
`SIGNATORY'S POSITION
`
`Attorney of Record, Pennsylvania Bar Member
`
`SIGNATORY'S PHONE NUMBER
`
`9415248886
`
`DATE SIGNED
`
`01/23/2017
`
`AUTHORIZED SIGNATORY
`
`CONCURRENT APPEAL NOTICE
`FILED
`
`YES
`
`NO
`
`FILING INFORMATION SECTION
`
`SUBMIT DATE
`
`Mon Jan 23 20:28:32 EST 2017
`
`TEAS STAMP
`
`USPTO/RFR-XX.XXX.XXX.XXX-
`20170123202832076790-8674
`0893-5804da0b57f892235ba2
`a2874cfa61891ad7a9e5451b9
`ed320a216727b68c243-N/A-N
`/A-20170123201406151266
`
`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 1960 (Rev 10/2011)
`
`OMB No. 0651-0050 (Exp 07/31/2017)
`
`Request for Reconsideration after Final Action
`To the Commissioner for Trademarks:
`
`Application serial no. 86740893 THRIVEST LEGAL FUNDING(Standard Characters, see https://tmng-
`al.uspto.gov/resting2/api/img/86740893/large) has been amended as follows:
`
`ARGUMENT(S)
`In response to the substantive refusal(s), please note the following:
`
`Applicant writes in response to the Office Action issued in connection with the U.S. Application Serial No. 86/740,893 on July 22, 2016 and
`addresses the Examining Attorney?s objections in full as follows: I. Identification of Services The identification of services has been amended in
`order to detail Applicant?s services with a higher degree of specificity. As amended, Applicant?s services are more narrowly and concisely
`defined. As amended, the identification of services reads as follows: INTERNATIONAL CLASS 36: ?Lawsuit funding services; facilitating and
`arranging financing of litigation; litigation financing, plaintiff funding, and attorney funding; litigation financing for lawsuit plaintiffs, plaintiff
`funding, lawsuit settlement funding for plaintiffs, and pre-settlement lawsuit funding for lawsuit plaintiffs.? Applicant highlights that it has
`deleted wording or otherwise refrained from including broader wording pertaining to ?financing and loan? services or ?loan services?.
`Accordingly, Applicant contends that all services set forth in the amended identification are properly classified under International Class 36.
`Therefore, it is respectfully submitted that the identification of services, as amended, is sufficiently definite for purposes of registration and
`acceptance is respectfully urged. II. Section 2(d) Likelihood of Confusion Objection The Examining Attorney has cited to the presence of the
`following U.S. Registrations for THRIVENT-formative marks as a basis for refusing registration of Applicant?s Mark THRIVEST LEGAL
`FUNDING