From: Fletcher, Tracy
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`Sent: 8/1/2019 1:33:00 PM
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`To: TTAB EFiling
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`CC:
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`Subject: U.S. Trademark Application Serial No. 87645025 - PURE LAW - N/A - Request for
`Reconsideration Denied - Return to TTAB - Message 1 of 3
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`*************************************************
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`Attachment Information:
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`Count: 12
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`Files: def1-1.jpg, def2-1.jpg, def2-2.jpg, web1-1.jpg, web1-2.jpg, web1-3.jpg, web1-4.jpg, web1-5.jpg,
`web2-1.jpg, web2-2.jpg, web2-3.jpg, 87645025.doc
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`United States Patent and Trademark Office (USPTO)
`Office Action (Official Letter) About Applicant’s Trademark Application
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`U.S. Application Serial No. 87645025
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`Mark: PURE LAW
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`Correspondence Address:
` DEAN W. AMBURN
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` GIROUX AMBURN PC
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` 28588 NORTHWESTERN HIGHWAY, SUITE 100
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` SOUTHFIELD, MI 48034
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`Applicant: Giroux Amburn PC
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`Reference/Docket No. N/A
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`Correspondence Email Address:
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` d.amburn@girouxamburn.com
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`REQUEST FOR RECONSIDERATION
`AFTER FINAL ACTION
`DENIED
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`Issue date: August 01, 2019
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`This Office action is in response to applicant’s communication filed on July 22, 2019.
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`

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`Applicant’s request for reconsideration is denied. See 37 C.F.R. §2.63(b)(3). The trademark
`examining attorney has carefully reviewed applicant’s request and determined the request did not:
`(1) raise a new issue, (2) resolve all the outstanding issue(s), (3) provide any new or compelling
`evidence with regard to the outstanding issue(s), or (4) present analysis and arguments that were
`persuasive or shed new light on the outstanding issue(s). TMEP §§715.03(a)(ii)(B), 715.04(a).
`
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`Specifically, applicant’s request for reconsideration consists of over three hundred third-party
`registrations without any explanation. It appears that applicant has submitted printed or electronic
`copies of third-party registrations for marks containing the wording “PURE” to support the argument
`that this wording is weak, diluted, or so widely used that it should not be afforded a broad scope of
`protection. These registrations appear to be for goods and/or services that are predominantly different
`from or unrelated to those identified in applicant’s application.
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`
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`The weakness or dilution of a particular mark is generally determined in the context of the number and
`nature of similar marks in use in the marketplace in connection with similar goods and/or services. See
`Nat’l Cable Tel. Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1579-80, 19 USPQ2d 1424, 1430
`(Fed. Cir. 1991); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A.
`1973). Evidence of widespread third-party use of similar marks with similar goods and/or services “is
`relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection” in that
`particular industry or field. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772,
`396 F.3d 1369, 1373-74, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005); see In re Coors Brewing Co., 343 F.3d
`1340, 1345, 68 USPQ2d 1059, 1062-63 (Fed. Cir. 2003).
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`
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`However, evidence comprising only a small number of third-party registrations for similar marks with
`similar goods and/or services, as in the present case, is generally entitled to little weight in determining
`the strength of a mark. See In re i.am.symbolic, llc, 866 F.3d 1315, 1328-29, 123 USPQ2d 1744, 1751-52
`(Fed. Cir. 2017); AMF Inc. v. Am. Leisure Products, Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A.
`1973). These few registrations are “not evidence of what happens in the market place or that
`customers are familiar with them.” AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d at 1406, 177 USPQ at
`269; In re I-Coat Co., 126 USPQ2d 1730, 1735 (TTAB 2018). Thus, the few similar third-party
`registrations submitted by applicant are insufficient to establish that the wording “PURE” is weak or
`diluted.
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`Further, evidence comprising third-party registrations for similar marks with different or unrelated
`goods and/or services, as in the present case, has “no bearing on the strength of the term in the context
`relevant to this case.” See Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1058 (TTAB
`2017) (citing In re i.am.symbolic, llc, 866 F.3d at 1328, 123 USPQ2d at 1751). Thus, these third-party
`registrations submitted by applicant are insufficient to establish that the wording “PURE” is weak or
`diluted.
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`In the present case, the applied-for mark “PURE LAW” is highly similar to the registered mark “PURE-IP”
`and both create the same commercial impression of the wording “PURE” combined with a legal
`reference for closely related legal services. Please see attached dictionary definitions of “IP” and web
`pages showing a variety of legal services provided by a single source under a common mark, including
`intellectual property litigation.
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`Accordingly, the following requirement(s) and/or refusal(s) made final in the Office action dated January
`21, 2019, are maintained and continued:
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`• Likelihood of confusion refusal as to U.S. Registration No. 2945955 for the mark “PURE-IP”
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`See TMEP §§715.03(a)(ii)(B), 715.04(a).
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`Please note that, upon further consideration, the following requirement(s) and/or refusal(s) made final
`in that Office action are withdrawn:
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`• Likelihood of confusion refusal as to U.S. Registration No. 5393399 for the mark “IT’S PURE”
`and design
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` •
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` The objection as to those third-party registrations previously referenced only in summary form
`that are attached to applicant’s request for reconsideration
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`See TMEP §§715.03(a)(ii)(B), 715.04(a).
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`If applicant has already filed an appeal with the Trademark Trial and Appeal Board, the Board will be
`notified to resume the appeal. See TMEP §715.04(a).
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`If applicant has not filed an appeal and time remains in the six-month response period, applicant has the
`remainder of that time to (1) file another request for reconsideration that complies with and/or
`overcomes any outstanding final requirement(s) and/or refusal(s), and/or (2) file a notice of appeal to
`the Board. TMEP §715.03(a)(ii)(B). Filing a request for reconsideration does not stay or extend the time
`for filing an appeal. 37 C.F.R. §2.63(b)(3); see TMEP §715.03(c).
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`/Tracy L. Fletcher/
`
`Trademark Attorney, Law Office 115
`
`U.S. Patent and Trademark Office
`
`Direct Dial: (571) 272-9471
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`tracy.fletcher@uspto.gov
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`

`

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`Intellectual Property Litigatio
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`Greenberg Tramig‘s Intellectual Property Litigalirm attorneys prcrule clients with IP enforcement. pmteeliun. and strategic counseling
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`Comprising more than 80 patent litigators and attorneys. our Patent Litigation team is skilled in prosecuting and defending patent
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`Intellectual Property Litigation
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`We leverage our extensive technical, industry and legal experience
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`Om-Appwach —
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`Jeffrey L. Costellia
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`IP—innovative products and services. logos. social media presence
`Partner
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`Co-leader. Intellectual
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`Property
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`Phone: 20275858207
`Jason C KJ‘avitz
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`
`Representative Patent Litigation Experience
`— successfully persuaded the Pareni Trial and Appeal Board to deny
`the institution oHPRs against two separate patents directed to
`tampon applicators and owned by Edgewell Personal Care
`Brands [owner at Schick. Playtex. Hawaiian Tropic and Edge
`brands) (IPR2017-00694 and PREV-00693)
`— Detended Edgewell Personal Care Brands against patent
`infringement allegations involwng private label razors The case
`was terminated. The Gillette Co‘ v. Edgewei‘l Personal Care Co.
`(5,D.N Y.)
`- Led team that defended 29 companies. including some of the
`world‘s best known brands in a case in when 450 defendants
`were accused of patent infrlngemenl by an NPE involving a patent
`directed at online access to geographically and topically based
`information, The case was dismissed GeoTag Inc v, Frontrer
`Communications (EtD‘ Tex.)
`a Delended Pilgrim Films 8: Television a television production
`company. and other defendants, against patent infringement
`allegations tor a wheelchair-accessible motorcycle, which was
`based off of an eplsode of American Choppers where they built a
`similar vehicle. Tavantzis. etal. v. American Choppers, stat. (M D.
`Fla J
`— Represented Royal Caribbean Cruises. a global cruise company.
`in patent litigation matter involving propulsion condition
`manaoement svstern The case settled Candatrs LLC v A P
`
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`management sysiem. me case Sellleu UUHOGUS LLb 1/. HJ"
`Molier—Maersk A/S. er al. (ED. Tex.)
`u Represented Sierra Wireless. in multinationai wireiess
`communications equipment designer and manufacturer. in a patent
`litigation matter relating to claims arising from DFDM [LTE) and
`muiti-code CDMA technology. The case settled. Wi-Lan v, Sierra
`Wireless. at at. (ED. Tex.)
`— Defended Taleo Corporation and Vurv Technology, software
`companies in the taient management space. against allegations of
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`The ease settied dunng trial, Kenexa BrassRi'ng inc,
`i1, Tales Corp
`and Vurv Technology, inc. (D. Del.)
`
`
`Representative Trademark Litigation Experience
`- Represented Alteso Health Sciences, a nutritional supplements
`provider. in a trademark and breach of contract case involving a
`nutritional supplement lor migraines. The jury awarded Akeso
`Health Sciences Akeso Health Sciences, LLC v. Quantum, inc, (D,
`Or.)
`— Represented Ford Motor Company. an American multinational
`automaker. In an ex pane seizure order of counterfeit goods
`resulting in an entry ofa stipuiated permanent injunction Ford
`Motor Company v. O‘Brien Parts, trio, d/b/a Shamrock Parts, and
`Richard F. O’Brien, Jr. (D. Mass.)
`— Represented Pushpay IF. 3 company Ihatdevelups mobile
`application programs to assist organizations with financial payment
`transactions. in a trademark infringement Involving the mark
`“Fusnpay.” The case was dismissed. Pusnpay iF' Limiled and
`Pushpay Holdings Limited v, Jusi Push Pay LLC (W,D,N,C,)
`- Defended TrueX Media. a digitai advertising company. against
`allegations at trademark infringement concerning use of TRUEX
`MEDIA mark, The case settled True Media LLC v, Truex Media
`
`
`
`