Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA823111
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`Filing date:
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`05/25/2017
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
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`Applicant
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`86806949
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`RSRK Incorporated
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`Applied for Mark
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`EMERGENCY RELIEF SHOT THERAPY
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`Correspondence
`Address
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`Submission
`
`Attachments
`
`Filer's Name
`
`Filer's e-mail
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`Signature
`
`Date
`
`FRANCIS JOHN CIARAMELLA
`RICK RUZ PLLC
`300 SEVILLA AVENUE, SUITE 301
`CORAL GABLES, FL 33134
`UNITED STATES
`francis@ruzlaw.com, rickruz@ruzlaw.com
`
`Appeal Brief
`
`EMERGENCY RELIEF SHOT THERAPY - Brief for Applicant.pdf(142050 bytes
`)
`
`FRANCIS JOHN CIARAMELLA, ESQUIRE
`
`francis@ruzlaw.com, rickruz@ruzlaw.com
`
`/Francis John Ciaramella/
`
`05/25/2017
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Trademark Attorney:
` Siddharth Jagnnathan
`
`
`
`
`
`
`
`In re Application of
`RSRK Incorporated
`Application Serial No:
`86/806,949
`Filed: November 2, 2015
`For: EMERGENCY RELIEF
`SHOT THERAPY
`
`
`_____________________________
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`
` Law Office 114
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`BRIEF FOR APPLICANT
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`
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`Pursuant to a Notice of Appeal filed with the Trademark Trial and Appeal Board on
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`March 14, 2017, the Applicant hereby appeals from the Examining Attorney’s final refusal to
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`register the above-identified mark, dated September 14, 2016, and respectfully requests the
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`Trademark Trial and Appeal Board to reverse the Examining Attorney’s decision on the grounds
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`that the Applicant’s mark does not create a likelihood of confusion with the mark cited by the
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`Examining Attorney.
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`
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`STATEMENT OF FACTS
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`
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`Applicant seeks registration on the Principal Register of its mark, EMERGENCY
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`RELIEF SHOT THERAPY, for analgesics, in International Class 005. The trademark application
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`was filed on November 2, 2015, and received U.S. Trademark Application Serial No. 86/806,949.
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`The Examining Attorney refused registration of Appellant’s mark EMERGENCY
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`RELIEF SHOT THERAPY in an Office Action, dated February 24, 2016, contending that the
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`mark, when used on or in connection with the recited goods, is likely to be confused with U.S.
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`1
`RICK RUZ, PLLC
`300 Sevilla Avenue, Suite 301, Coral Gables, FL 33134 • Telephone (305) 921-9326 • Facsimile (888) 506-2833
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`

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`Registration No. 4,710,506, for the mark FIRST AID SHORT THERAPY for: “Clinical
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`beverages which are clinical and medicinal in nature to address acute and chronic conditions,
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`namely, upset stomach, allergies, pain, migraine headache, hangover; clinical shots which are
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`clinical and medicinal beverages in nature to address acute and chronic conditions, namely, upset
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`stomach, allergies, pain, migraine, headache, hangover; medical beverages which are intended to
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`be used to address upset stomach, allergies, pain, migraine, headache, hangover; medicinal
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`beverages which are intended to be used to address upset stomach, allergies, pain, migraine,
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`headache, hangover; medicinal shots in the nature of medicinal beverages which are intended to
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`address upset stomach, allergies, pain, migraine, headache, hangover; dietary therapeutic
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`beverages which are clinical and medicinal in nature to address acute and chronic conditions,
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`namely, upset stomach, allergies, pain, migraine, headache, hangover; therapeutic shots in the
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`nature of beverages which are clinical and medicinal in nature to address acute and chronic
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`conditions, namely, upset stomach, allergies, pain, migraine, headache, hangover; fortified
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`beverages which are fortified with herbal and other generally recognized as safe (GRAS)
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`ingredients and/or Food and Drug Administration (FDA) approved over the counter drugs,
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`nutritionally fortified beverages; vitamin fortified beverages all of which are intended to address
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`upset stomach, allergies, pain, migraine, headache, hangover; vitamin and mineral beverages,
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`dietary supplemental drinks in the nature of vitamin and mineral beverages, dietetic beverages
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`adapted for medical purposes, dietary beverage supplements for human consumption in liquid
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`form for therapeutic purposes, and dietary supplement beverages for treating acute, chronic, or
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`daily medical conditions, namely, upset stomach, allergies, pain, migraine, headache, hangover
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`herbal drinks used to aid in sleep and relaxation; and medicinal herbal drinks for treating acute,
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`chronic, or daily medical conditions; and water, namely, clinical water, medical water, medicinal
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`water, therapeutic water all used to address upset stomach, allergies, pain, migraine, headache,
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`hangover; nutritionally fortified water, nutritionally fortified water, vitamin enriched water,
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`vitamin fortified water, medicated water to address upset stomach, allergies, pain, migraine,
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`headache, hangover; and medicated water for the treatment of upset stomach, allergies, pain,
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`migraine, headache, and hangover” in International Class 005, and “Beverages, namely, energy
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`beverages, non-alcoholic energy shots, sports beverages, sports beverages containing electrolytes,
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`non-alcoholic sports shots, water beverages, flavored drinks with fruit, herbal or other natural or
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`2
`RICK RUZ, PLLC
`300 Sevilla Avenue, Suite 301, Coral Gables, FL 33134 • Telephone (305) 921-9326 • Facsimile (888) 506-2833
`
`
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`

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`artificial flavoring, isotonic drinks, and isotonic non-alcoholic drinks; and water, namely, energy
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`water, sports water, sports water containing electrolytes, flavored water, flavored bottled water,
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`drinking water, distilled drinking water, purified water, bottled water, bottled drinking water,
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`purified bottled drinking water, mineral water, and spring water” in International Class 032.
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`In the Applicant’s response to the initial refusal to register dated August 24, 2016, the
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`Applicant argued that the mark FIRST AID SHOT THERAPY was dissimilar to EMERGENCY
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`RELIEF SHOT THERAPY when compared for similarities in their appearance, sound,
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`connotation, and overall commercial impression.
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`The Examining Attorney further expounded his position in a Final Office Action, dated
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`September 14, 2016, maintaining that the Applicant’s and Registrant’s goods travel in the same
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`channels of trade, are purchased by same purchasers, and that the respective marks are similar in
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`their overall appearance, sound, and commercial impression. The Examining Attorney supported
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`his refusal by attaching as evidence, definitions of the phrase first aid, analgesics, emergency,
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`and relief.
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`In response thereto, the Applicant requested reconsideration of the Examining Attorney’s
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`final refusal on March 14, 2017, by citing multiple third party registrations as evidence of the
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`widespread use of EMERGENCY and FIRST AID for class 005 goods. The Applicant also set
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`forth the difference in appearance, sound, and overall commercial impression between FIRST
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`AID and EMERGENCY.
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`Finally, the Examining Attorney denied Applicant’s request for reconsideration on March
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`29, 2017, finding that Applicant’s additional support and arguments neither resolved all
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`outstanding issues, nor raised a new issue or provided compelling evidence as to the lack of
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`confusion between the respective marks.
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`
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`ARGUMENT
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`
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`The test for likelihood of confusion is whether a “reasonably prudent consumer” in the
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`marketplace is likely to be confused as to the origin of the goods or services bearing one of the
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`marks. In re E.I. DuPont de Nemours and Co., 177 U.S.P.Q. 563 (C.C.P.A 1973).
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`Consequently, the Federal Circuit Court of Appeals adopted multiple factors for the purpose of
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`3
`RICK RUZ, PLLC
`300 Sevilla Avenue, Suite 301, Coral Gables, FL 33134 • Telephone (305) 921-9326 • Facsimile (888) 506-2833
`
`
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`

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`deciding likelihood of confusion on a case-by-case basis, known as the DuPont factors.
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`Applicant respectfully traverses the refusal to register under Section 2(d) of the Lanham
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`Act, 15 U.S.C.A. § 1052(d), in view of the following factors. Applicant believes that by viewing
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`the overall commercial impression of the mark EMERGENCY RELIEF SHOT THERAPY in
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`relationship to the named goods, there will not be a likelihood of confusion between the marks.
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`
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`1) Dissimilarity of the Marks in their Entireties as to Appearance, Sound, Connotation, and
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`Commercial Impression (The Sight, Sound, and Meaning Analysis)
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`
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`In testing for likelihood of confusion, the similarity or dissimilarity of the marks with
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`regard to appearance, sound, connotation and commercial impression are important
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`considerations. Application of E. I. DuPont DeNemours & Co., 476 F.2d 1357, 177 U.S.P.Q.
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`(BNA) 563 (C.C.P.A. 1973); TMEP Section 1207.01. Similarity of the marks in one respect—
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`sight, sound or meaning—will not automatically result in a finding of likelihood of confusion
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`even if the goods are identical or closely related. TMEP Section 1207.01(b)(i). Rather, the rule is
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`that taking into account all of the relevant facts of a particular case, similarity as to one factor
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`alone is not necessarily sufficient to support a holding that the marks are confusingly similar. In
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`re Lamson Oil Co., 6 U.S.P.Q.2d (BNA) 1041, 1042 n.4, 1987 WL 124020 (TTAB 1987). The
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`Applicant believes that by taking into account all the relevant factors in comparing the
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`Applicant’s mark to the above cited mark, including the different commercial impression when
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`comparing FIRST AID to EMERGENCY RELIEF, the Board will find that a likelihood of
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`confusion does not exist.
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`The meaning or connotation of a mark must be determined in relationship to the named
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`goods. Even marks which are identical in sound and/or appearance may create sufficiently
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`different commercial impressions when applied to the respective parties’ goods so that there is
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`no likelihood of confusion. See, e.g., In re Sears, Roebuck and Co., 2 U.S.P.Q.2d (BNA) 1312,
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`1987 WL 123813 (Trademark Trial & App. Bd. 1987) (CROSS-OVER for bras held not likely to
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`be confused with CROSSOVER for ladies’ sportswear).
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`Applicant respectfully requests that the Board take judicial notice of the following
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`differences between EMERGENCY RELIEF SHOT THERAPY and FIRST AID SHOT
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`4
`RICK RUZ, PLLC
`300 Sevilla Avenue, Suite 301, Coral Gables, FL 33134 • Telephone (305) 921-9326 • Facsimile (888) 506-2833
`
`
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`

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`THERAPY.
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`As stated in both its August 24, 2016, and March 14, 2017 responses, Applicant’s mark
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`for EMERGENCY RELIEF SHOT THERAPY immediately impresses into the minds of
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`consumers multiple and diverse images as a result of the mark’s word portion. Applicant’s mark
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`suggests multiple meanings: 1) that Applicant’s goods are to be used in an emergency; 2) that
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`Applicant’s goods are designed to relieve the consumer’s intense pain; and 3) that Applicant’s
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`goods are designed to work quickly (as they are used in the context of an emergency). In what
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`cannot be more of a stark contrast, the mark for FIRST AID SHOT THERAPY suggests: 1) that
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`the goods are designed to work over a period of time (i.e., not in an emergency situation where
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`time is of the essence); and 2) are designed to relieve minor pain as opposed to extreme pain.
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`Both FIRST AID and EMERGENCY RELIEF have completely different meanings in
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`common usage. Specifically, FIRST AID is typically rendered by the average person (e.g.,
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`applying a cold cloth to break a fever, or putting an adhesive bandage on a cut). Emergency
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`relief, however, is generally provided by a trained professional or physician (e.g., removing a
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`bullet from a gunshot victim, or stopping blood loss). EMERGENCY RELIEF implies
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`emergency room care by a trained physician (e.g., in a room or area staffed and equipped for the
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`reception and treatment of persons requiring immediate medical care). FIRST AID, by strong
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`contrast, implies treatment given to an ill or injured person before regular medical aid can be
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`obtained (i.e., such as emergency room care).
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`EMERGENCY RELIEF SHOT THERAPY implies that time is of the essence, whereas
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`FIRST AID SHOT THERAPY implies the opposite.1
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`2) The Fame of the Prior Mark
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`All trademarks are not equal. Some are strong, some are weak and most are somewhere
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`in between. “Strong” marks are given “strong” protection—protection over a wide range of
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`related products and services and variations on visual and aural format. The stronger the mark,
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`the more likely it is that encroachment on it will produce confusion. Conversely, relatively weak
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`marks are given a relatively narrow range of protection both as to products and format variations.
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`1 It is also noted that the Examining Attorney, in his February 24, 2016 refusal plainly acknowledged that both
`marks begin with a different term.
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`5
`RICK RUZ, PLLC
`300 Sevilla Avenue, Suite 301, Coral Gables, FL 33134 • Telephone (305) 921-9326 • Facsimile (888) 506-2833
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`

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`2 McCarthy on Trademarks and Unfair Competition § 11:73 (4th ed.). Likewise, here, there is
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`no evidence that the cited registration is famous or has acquired secondary meaning within the
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`marketplace, or that consumers associate the term EMERGENCY RELIEF or FIRST AID with
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`the owner of the FIRST AID SHOT THERAPY trademark.
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`3) The Nature and Extent of Any Actual Confusion
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`There has been no documented evidence that shows that any consumers have confused
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`the respective marks in commerce. There have been no demonstrated events of confusion by
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`consumers between the respective marks.
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`Courts have long held that concurrent use of such marks without instances of actual
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`confusion is evidence of no confusion. 4 McCarthy on Trademarks and Unfair Competition §
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`23:18 (4th ed.); Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482, 490,
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`212 U.S.P.Q. 246 (1st Cir. 1981) (“[W]hen the marks have been in the same market, side by side,
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`for a substantial period of time, there is a strong presumption that there is little likelihood of
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`confusion.”); Greentree Laboratories, Inc. v. G.G. Bean, Inc., 718 F. Supp. 998, 13 U.S.P.Q.2d
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`1161 (D. Me. 1989) (concurrent use for five years without confusion where plaintiff's mark is
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`weak creates a presumption that confusion is unlikely; judgment of no infringement);
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`Aktiebolaget Electrolux v. Armatron Intern., Inc., 999 F.2d 1, 4, 27 U.S.P.Q.2d 1460 (1st Cir.
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`1993) (“[A]n absence of actual confusion, or a negligible amount of it, between two products
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`after a long period of coexistence on the market is highly probative in showing that little
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`likelihood of confusion exists.”).
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`4) Any Possible Confusion Would be De Minimis
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`Furthermore, even if there were to be evidence of actual confusion in the future, such
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`instances can be dismissed as inconsequential or de minimis. Evidence of actual confusion of a
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`very limited scope may be dismissed as de minimis. Probable confusion cannot be shown by
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`pointing out that at someplace, at some time, someone may make a false identification.
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`McGraw-Hill Pub. Co. v. American Aviation Associates, 117 F.2d 293, 295, 47 USPQ 494 (App.
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`RICK RUZ, PLLC
`300 Sevilla Avenue, Suite 301, Coral Gables, FL 33134 • Telephone (305) 921-9326 • Facsimile (888) 506-2833
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`D.C. 1940). The First Circuit observed: “Just as one tree does not constitute a forest, a
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`[potential] isolated instance of confusion does not prove probable confusion. To the contrary, the
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`law has long demanded a showing that the allegedly infringing conduct carries with it a
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`likelihood of confounding an appreciable number of reasonably prudent purchasers exercising
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`ordinary care.” International Ass’n of Machinists & Aero. Workers v. Winship Green Nursing
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`Ctr., 103 F.3d 196, 41 USPQ2d 1241 (1st Cir. 1996) (emphasis added).
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`Evidence of the number of instances of actual confusion must be placed against the
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`background of the number of opportunities for confusion before one can make an informed
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`decision as to the weight to be given the evidence. If there is a very large volume of contacts or
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`transactions which could give rise to confusion and there is only a handful of instances of actual
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`confusion, the evidence of actual confusion may receive relatively little weight.
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`Here, any potential confusion between EMERGENCY RELIEF SHOT THERAPY and
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`FIRST AID SHOT THERAPY would be de minimis, especially given that there have been no
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`present documented cases of actual confusion.
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`5) Applicant’s and Registrant’s Marks are Weak and Entitled to a Narrow Scope of
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`Protection
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`Applicant submitted copies of several U.S. Trademark Registrations and Applications
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`from the X-Search database and from the paper files of the U.S. Trademark Office, attached to
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`Applicant’s Request for Reconsideration as Exhibit B, for marks which include the term FIRST
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`AID or EMERGENCY for various class 005 goods (of which both Applicant and Registrant
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`occupy). Such third-party use demonstrates two important points: (1) that the term FIRST AID
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`and/or EMERGECNY is/are weak, and entitled to a limited scope of protection vis-à-vis other
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`marks which use the same term for class 005 goods; and (2) that these registrations are able to
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`co-exist on the Principal Register without causing a likelihood of confusion with each other.
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`Accordingly, Applicant maintains that use and registration of its mark EMERGENCY
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`RELIEF SHOT THERAPY is not likely to lead to confusion, mistake or deception with U.S.
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`Registration No. 4,710,506, for the mark FIRST AID SHOT THERAPY.
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`7
`RICK RUZ, PLLC
`300 Sevilla Avenue, Suite 301, Coral Gables, FL 33134 • Telephone (305) 921-9326 • Facsimile (888) 506-2833
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`

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`Applicant again cites to several third party registrations and applications, which
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`incorporate the term FIRST AID or EMERGENCY [See Exhibit B attached to Applicant’s
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`Request for Reconsideration]. These include the following marks:
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`
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`Trademark
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`Registration
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`Class
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`FIRST AID RESPONSE
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`FIRST AID INSIDE
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`FIRST AID ONLY
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`MY FIRST AID
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`MY FIRST AID COMPANY
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`ELITE FIRST AID
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`FIRSTAID EXCHANGE
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`INTELLIGENT FIRST AID
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`FIRST AID ONLY
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`FIRST AID TO GO!
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`EMERGEN-ZZZZ
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`ER TO GO
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`EMERGEN-C
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`ER EMERGENCY RATION
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`EMERGENCY ESSENCE
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`ER 911
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`5144100
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`4947133
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`4781929
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`4327506
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`4327501
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`4322859
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`3259101
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`4255657
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`3177591
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`2240644
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`4773815
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`4189395
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`2616360
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`3803107
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`2769605
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`2290161
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`005
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`005
`
`005
`
`005
`
`005
`
`005
`
`005
`
`005
`
`005
`
`005
`
`005
`
`005
`
`005
`
`005
`
`005
`
`005
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`If these marks as well, as the Registration, are able to co-exist with so many other similar
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`trademarks for analogously similar goods/services, then it can also be said that there is room for
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`Applicant’s mark for EMERGENCY RELIEF SHOT THERAPY.
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`8
`RICK RUZ, PLLC
`300 Sevilla Avenue, Suite 301, Coral Gables, FL 33134 • Telephone (305) 921-9326 • Facsimile (888) 506-2833
`
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`
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`CONCLUSION
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`For the reasons set forth above, Applicant submits that there is no likelihood of
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`confusion, mistake or deception between Applicant’s mark and the prior cited registration.
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`Accordingly, Applicant’s mark is entitled to registration.
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`The Board is therefore respectfully requested to reverse the Examining Attorney’s
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`decision refusing registration of Applicant’s mark.
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`Thank you for your consideration.
`
`
`By: /Francis J. Ciaramella/
`Francis J. Ciaramella, Esquire
`Florida Bar No. 111927
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`
`RICK RUZ, PLLC
`Counsel for the Applicant
`300 Sevilla Avenue, Suite 301
`Coral Gables, Florida 33134
`Telephone No. (305) 921-9326
`Facsimile No. (888) 506-2833
`
`9
`RICK RUZ, PLLC
`300 Sevilla Avenue, Suite 301, Coral Gables, FL 33134 • Telephone (305) 921-9326 • Facsimile (888) 506-2833
`
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