`
`ESTTA Tracking number:
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`ESTTA1046524
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`Filing date:
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`04/02/2020
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`Applicant
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`87882281
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`James Kelleher
`
`Applied for Mark
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`ASK JIM FIRST
`
`Correspondence
`Address
`
`CHRISTOPHER P BUSSERT
`KILPATRICK TOWNSEND & STOCKTON LLP
`1100 PEACHTREE STREET, SUITE 2800
`ATLANTA, GA 30309-4530
`UNITED STATES
`tmadmin@kilpatricktownsend.com, cbussert@kilpatricktownsend.com
`404-815-6545
`
`Submission
`
`Attachments
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
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`Supplemental Brief
`
`ASK JIM FIRST - Supplemental Ex Parte Appeal Brief Of Applicant James
`Kelleher.PDF(53452 bytes )
`
`Christopher P. Bussert
`
`cbussert@ktslaw.com, kteilhaber@ktslaw.com, tmadmin@ktslaw.com
`
`/Christopher P. Bussert/
`
`04/02/2020
`
`
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`APPLICANT:
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`James Kelleher
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`MARK:
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`ASK JIM FIRST
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`SERIAL NO.:
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`87/882,281
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`CLASS:
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`35
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`FILING DATE:
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`April 18, 2018
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`)
`)
`)
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`)
`)
`)
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`Pauline T. Ha
`Trademark Examining Attorney
`Law Office 115
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`
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`
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`SUPPLEMENTAL EX PARTE APPEAL BRIEF OF APPLICANT JAMES KELLEHER
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`Applicant James Kelleher (“Applicant”) submits this supplemental brief in
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`support of his ex parte appeal in connection with Application Serial No. 87/882,281 (the
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`“Application”). As more fully discussed below, Applicant’s supplemental brief responds
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`specifically to the issues raised in the November 27, 2019 final refusal to register (the
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`“Subsequent Final Action”) the ASK JIM FIRST mark (“Applicant’s Mark”) shown in the
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`Application on the basis of a purported likelihood of confusion with the ASK JIM mark shown in
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`Registration No. 3,289,118 (the “Cited Registration”) owned by Small Business Network, Inc.
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`PROCEDURAL BACKGROUND
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`Applicant has previously described in detail the procedural background of this
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`matter from the filing of the Application through the initiation of this appeal. See Applicant’s
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`Opening Brief at 1-2. Since Applicant initiated that appeal and filed its Opening Brief, a new
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`Examining Attorney replaced the one originally responsible for the Application. On
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`November 7, 2019, the new Examining Attorney requested suspension of the appeal and for the
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`Application to be remanded so that she could “submit additional evidence in the record relevant
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`to the issue on appeal”, which was attached to her request. On November 23, 2019, the Board
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`granted the request for remand. In doing so, the Board instructed the new Examining Attorney
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`that “inasmuch as new issues will be raised, the refusal cannot be made final until Applicant is
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`given an opportunity to respond”. On November 27, 2019, the Examining Attorney issued the
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`Subsequent Final Action including the authority she had submitted to the Board with her request
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`for remand. In response, on January 27, 2020, Applicant submitted a Third Request for
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`Reconsideration. Therein, Applicant amended the identification of services in the Application to
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`read “Lawyer referral services provided to consumers who seek to retain an attorney to represent
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`them in personal injury matters excluding business advice, inquiries and information services”.
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`Applicant also submitted further evidence in response to the Examining Attorney’s evidentiary
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`submission in the Subsequent Final Action. On February 4, 2020, proceedings in the appeal
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`resumed and Applicant received sixty (60) days from that date in which to file a supplemental
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`brief if he so desired.
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`ARGUMENT AND CITATION OF AUTHORITY
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`Applicant’s opening brief set forth in great detail the prior Examining Attorney’s
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`repeated mischaracterizations of evidence in both her Final Office Action and subsequent Denial
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`in reaching her conclusion of confusing similarity. See Applicant’s Opening Brief at 7-16.
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`Among other things, Applicant established that the previous Examining Attorney repeatedly
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`mischaracterized the evidence upon which she was relying in support of her argument that the
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`services covered by the Application and by the Cited Registration were related. The crux of
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`those misrepresentations is that all of the evidence upon which she relied shows, at most, the
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`provision of legal information and advice in Class 41 and not general business information and
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`advice in Class 35, the latter of which are the services covered by the Cited Registration.
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`2
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`When Applicant learned of the new Examining Attorney assuming responsibility
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`for the Application, Applicant hoped she would correct or otherwise “walk back” the numerous
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`mischaracterizations of the evidence in the record. Instead, it appears that she has “doubled
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`down” and has adopted those mischaracterizations, which are outlined in detail below.
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`Applicant’s supplemental brief is limited to a discussion of the Subsequent Final Action and the
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`evidence upon which the new Examining Attorney relies, as well as the evidence submitted with
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`Applicant’s Third Request for Reconsideration and, specifically, as that evidence and argument
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`relates to the alleged “relatedness of the compared services”. See Subsequent Final Action at 3.1
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`The new Examining Attorney essentially presents two arguments for why she
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`believes the services covered by the Application and by the Cited Registration are related. First,
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`she contends that “[i]n the present case, the registration’s business information services are
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`broadly defined and necessarily overlap with Applicant’s lawyer referral services”. Id. at 42
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`(emphasis added). Applicant denies the services of the Cited Registration were “broadly
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`defined” or that they “necessarily overlap[ped]” with the services covered by the Application
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`even prior to amending the identification of services in his Third Request for Reconsideration for
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`the reasons explained in detail in its Opening Brief. See Opening Brief at 7-15. However, with
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`the amendment to the identification of services, which now reads “Lawyer referral services
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`provided to consumers who seek to retain an attorney to represent them in personal injury
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`1 The new Examining Attorney has essentially repeated her predecessor’s arguments on the
`alleged similarity of the marks. See Subsequent Final Action at 3-4. As Applicant has already
`addressed this factor at length, he will not repeat his argument on that factor here. See Opening
`Brief at 16-18.
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`2 See also Subsequent Final Action at 3 (“[A]pplicant’s lawyer referral services provided to
`consumers on personal injury matters and registrant’s business ... information services are related
`because Applicant necessarily provides business information about law firms and attorneys in
`connection with its lawyer referral services.”) (emphasis added).
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`3
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`
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`matters excluding business advice, inquiries and information services” (emphasis added),
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`no reasonable argument exists that the respective services overlap as the services of the Cited
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`Registration are explicitly excluded from the identification of services in the Application.
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`Indeed, the new Examining Attorney’s “necessarily overlap” argument is ironic in
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`that on the one hand she contends that “a likelihood of confusion is based on the description of
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`the services stated in the Application and the registration at issue” and not “on its extrinsic
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`evidence of actual use”. Subsequent Final Action at 3. Yet her purported evidence of overlap
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`rests solely on extrinsic use made by parties other than Applicant. Id. If the new Examining
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`Attorney adheres to the “no extrinsic evidence” rule she has articulated, she must now concede
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`the respective services do not overlap in view of the most recent amendment to the Application’s
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`services.
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`Next, like her predecessor, the new Examining Attorney , argues that the
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`respective services are related because they are purportedly “of a kind that might emanate from a
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`single source under the same mark”. Id. The vast majority of evidence relied upon by the new
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`Examining Attorney was also relied upon by her predecessor at various stages of the prosecution
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`of the Application, and all of it has been discussed at length and discredited by Applicant. See
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`Opening Brief at 7-15. Incredibly, again like her predecessor, the new Examining Attorney
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`contends that the U.S. Chamber of Commerce, the People’s Library of Maryland and the
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`American Bar Association provide lawyer referral services. Subsequent Final Action at 5.
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`However, Applicant previously demonstrated that none of these entities provides lawyer referral
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`services. See Request for Reconsideration at 7 and Exhibits E-F thereto. Applicant requests
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`that in her response the new Examining Attorney specifically identify where in the record
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`there is any evidence that these entities provide “lawyer referral services”, particularly in
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`4
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`
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`light of the contrary evidence submitted by Applicant. If she cannot, in fairness to the
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`Board and Applicant, she should admit openly that both she and her predecessor have
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`mischaracterized the evidence upon which they have relied.
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`As to the new Examining Attorney’s reliance on the “previously attached
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`evidence” from the website of the Maryland State Bar Association and the New York City Bar,
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`Applicant has already demonstrated that neither provides the services identified in the Cited
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`Registration. Request for Reconsideration at 7-8. As to the Maryland State Bar Association
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`screenshots, they show that the Maryland State Bar does provide lawyer referral information but
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`the only other information provided according to the screenshots is information in the legal field
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`under the heading “Legal Information Brochures”, which provides “Guidance for Common
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`Legal Problems” as well as “Articles on Other Legal Topics”. Final Office Action at 15-16. The
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`screenshots from the New York City Bar website similarly illustrate only that it provides legal
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`advice and information under the heading “Business & Corporate Law”, which is one of a
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`number of “Legal Topics” on which advice is provided. Id. at 7.
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`The new evidence relied upon by the Examining Attorney is similarly deficient.
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`The screenshot evidence relied upon by the new Examining Attorney does not show that any of
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`the entities she has identified provide “business advisory, inquiries or information services”.
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`Instead, each provides advice or information exclusively in the field of law. For example, the
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`screenshot evidence provided as to the Erie County Bar Association (“ECBA”) is from the
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`“E-Law” and “Services and Resources Information” sections of the ECBA website. The E-Law
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`section provides information on various legal topics. In fact, each page of that section bears the
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`legend “Erie E-Law is a FREE service of the Erie County Bar Association designed to make
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`basic legal information available to you with ease” (emphasis added). See Subsequent Final
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`5
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`
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`Action at 23-24. The Services and Resources Information page indicates that the ECBA Lawyer
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`Referral and Information Service (“LRIS”) is “dedicated to helping you find a qualified
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`attorney to provide you with legal advice, guidance, counseling or representation in these
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`and other areas of the law” and then a list of those legal areas follows. Id. at 25 (emphasis
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`added). The additional ECBA screenshot evidence provided by Applicant demonstrates that
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`“E-Law” is a subject heading on the ECBA website and that the service is described by ECBA as
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`“an online service to help you understand different areas of the law” (emphasis added).
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`Third Request for Reconsideration, C001-003. Moreover, all of the identified topic choices in
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`the E-Law section are exclusively legal topics. Id. at C005. Nowhere is there any indication that
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`information or advice outside of the legal field is being provided.
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`The screenshot evidence from Indy Law Finder provides information on the
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`lawyer referral services offered as well as on certain named attorneys identified in the search
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`including their firm name and legal practice areas. Subsequent Final Action at 26-27.
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`No information, inquiries or advice outside of the legal field is provided in these screenshots.
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`The screenshot evidence from Legal Shield provides information only on its
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`lawyer referral provider network. Id. at 28. No information, inquiries or advice outside of the
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`legal field is provided in these screenshots.
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`The screenshots from Legal Zoom reflect a search of Florida personal injury
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`attorneys that are part of its referral network and provide their names and other information
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`related to their legal practice including practice areas, why they practice law, and their legal
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`experience. Id. at 30-31. The remaining screenshot provides information on the two legal plans
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`offered to its customers. Id. at 29. No advice, inquiries or information outside of the legal field
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`is provided in these screenshots.
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`6
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`The screenshots from the Oregon State Bar website provide information regarding
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`its lawyer referral service and the availability of a reduced fee arrangement for individuals of
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`modest means. Id. at 32. The next screenshot from that website reflects a search of the
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`“Business Law Index” under the “Legal Information Topics” heading and provides basic
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`information regarding starting a business in Oregon. Id. at 33. As the screenshots provided by
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`Applicant demonstrate, to get to the last screenshot, one first needs to click on the “For the
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`Public” heading of the website then select “Legal Information Topics” under a “Public Legal
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`Information” drop down screen and then select “Business Law Index” under “Legal Information
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`Topics”. Third Request for Reconsideration at B004-6.
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`The screenshots from the Palm Beach County Bar Association website include a
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`technology article clearly directed to practicing lawyers entitled “Your Law Firm Blog is
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`Terrible” and information of the lawyer referral service offered by that bar association.
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`Subsequent Final Action at 34-35. No advice, inquiries or information outside of the legal field
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`is reflected in these screenshots. Moreover, the intended audience for a technology article on
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`law firm blogs and general business information and advice is entirely different (e.g., practicing
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`lawyers v. consumers).
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`The screenshots from Rocket Lawyer reflect a search of personal injury lawyers
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`in the state of Florida that are part of the Rocket Lawyer network of attorneys. The search
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`identified 105 lawyers practicing personal injury in the state of Florida and further information is
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`provided on one individual, which includes his legal practice areas. Id. at 35-36. No advice,
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`inquiries or information outside of the legal field is reflected in these screenshots.
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`The remaining screenshot evidence relied upon by the new Examining Attorney is
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`the same as that relied upon by her predecessor and Applicant has already previously
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`7
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`
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`demonstrated that none of the screenshot evidence reflects that any of these organizations is
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`providing information or advice outside of the legal field. See Opening Brief at 10-14.
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`There are two fatal flaws in the new Examining Attorney’s analysis, as well as
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`that of her predecessor. The first is their failure to account for the USPTO’s longstanding
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`practice in classifying “informational services” narrowly depending on the specific field of use
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`as is evidenced below:
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`Informational Service
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`Class
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`Information, news and commentary in the field of law
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`Information in the field of construction
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`Information in the field of health care
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`Information in the field of chemical manufacturing
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`Information in the field of sports
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`Information in the field of art
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`Information in the field of travel
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`Information in the field of banking
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`Information in the field of finance
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`Business advice, inquiries and information
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`45
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`37
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`44
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`40
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`41
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`41
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`39
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`36
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`36
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`35
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`See Applicant’s Third Request for Reconsideration at A001, B001-09. See In re Thor Tech, Inc.,
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`113 U.S.P.Q.2d 1546, 1551 (T.T.A.B. 2015) (longstanding practice of the USPTO and field of
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`use are important factors to consider in assessing the similarity of services). And, when the
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`USPTO categorizes particular goods or services by field of use, its practice is to allow
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`registrations to issue for the identical mark for those goods or services even in the same class so
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`long as the field of use is different. See Third Request for Reconsideration at E001-05.
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`The second flaw is that none of the evidence relied upon by the new Examining
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`Attorney or her predecessor is “focused” on general business information, advice or inquiries.
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`In re Thor Tech, 113 U.S.P.Q.2d at 1550-51 (disregarding the examining attorney’s Internet
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`8
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`
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`evidence because it failed to focus on “recreational vehicle trailers” and instead included “trailers
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`of many other types or of an unspecified nature”).
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`The record considered by the Board in In re Thor Tech, Inc. bears a number of
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`similarities to the record underlying the present appeal. There, the examining attorney refused
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`the applicant’s application to register the mark TERRAIN for “recreational vehicles, namely,
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`towable trailers” in Class 12 on the ground it was confusingly similar to a registrant’s TERRAIN
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`mark for “motor land vehicles, namely trucks” in Class 12. The Board reversed.
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`On the issue of the similarity of the marks, the Board stated:
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`The marks are identical. However, the identity of the marks alone
`is not sufficient to establish likelihood of confusion in the absence
`of probative evidence that the goods are related. If that were the
`case, then the registrant would have rights in gross, and that is
`against the principals of trademark. “In every case turning on
`likelihood of confusion, it is the duty of the Examiner, the Board
`and this court to find, upon consideration of all the evidence,
`whether or not confusion appears likely.” Electronic Design &
`Sales, Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 21
`U.S.P.Q.2d at 1388, 1392 (Fed. Cir. 1992), quoting In re
`E.I. DuPont de Nemours & Co., 177 U.S.P.Q. at 568.
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`113 U.S.P.Q.2d at 1547 (emphasis in original).
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`The Board then turned to the similarity or dissimilarity and nature of the goods.
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`The Board gave little weight to registration evidence submitted by the examining attorney that
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`purportedly showed that “trucks” and “trailers” may emanate from the same source because
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`“five of the seven registrations list trailers that are not recreational vehicle towable trailers”. Id.
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`The Board also pointed to other evidence suggesting that land motor vehicles and towable
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`recreational trailers implicated different fields of use and that fields of use conveyed the
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`boundaries of use and protection surrounding the marks and marks comprising the same word.
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`Id. at 1549.
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`9
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`
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`The examining attorney then argued that because “a towable trailer is towed by a
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`car or truck there is an overlap in the nature of the goods.” Id. The Board rejected this argument
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`as well noting that “although the complimentary nature of goods can support a conclusion that
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`they are related for likelihood of confusion purposes, the record did not support such a finding
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`here.” Id. In that regard, as noted above, the examining attorney also attempted to rely upon
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`Internet evidence of entities purportedly selling both parties’ goods. The Board found this
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`evidence unpersuasive as well noting that:
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`While trucks and recreational towable trailers may
`occasionally be sold by the same retailers, we cannot
`overlook facts that the products are, at least on this record,
`not competitive, different completely in utility, have
`nothing in common with respect to their essential
`characteristics or sales appeal. ... Accordingly, we
`cannot find on this record that the channels of trade and
`circumstances under which trucks and recreational vehicle
`towable trailers are sold are sufficiently similar so as to be
`likely to give rise to a mistaken belief that the trucks and
`trailers emanate from a single source when sold under the
`same mark.
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`Id. at 1551 (emphasis added).
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`The new Examining Attorney’s evidence here of a purported likelihood of
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`confusion between Applicant’s Mark and the Cited Registration ASK JIM mark is far less
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`compelling than that relied upon by the examining attorney in In re Thor Tech.
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`Unlike In re Thor Tech, the marks of the parties are not identical. Even if they
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`were, the new Examining Attorney is required to provide “probative evidence” that the
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`respective services are related, which both she and her predecessor have failed to do.
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`113 U.S.P.Q.2d at 1547.
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`Unlike the examining attorney in In re Thor Tech, neither the new Examining
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`Attorney nor her predecessor has produced a single federal registration containing both
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`10
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`
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`Applicant’s services and the services of the Cited Registration. Compare In re Thor Tech, Inc.,
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`113 U.S.P.Q.2d at 1547 (seven third-party registrations introduced by the examining attorney).
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`The new Examining Attorney’s contention of overlap between Applicant’s
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`services and those of the Cited Registration is far less compelling than that rejected by the Board
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`in In re Thor Tech. Here, Applicant’s services specifically exclude the services of the Cited
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`Registration.
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`The new Examining Attorney’s reliance on Internet evidence is similarly flawed,
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`and the Board also should reject it under In re Thor Tech. At the outset, that fails to account for
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`the longstanding practice within the USPTO to categorize informational services narrowly by
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`field of use, which promotes the strong USPTO policy that a single registrant should not receive
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`a monopoly on a single term or phrase. Moreover, none of that Internet evidence focuses on
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`“general business information, advice or inquiries”. Rather, all of it reflects advice or
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`information generally in the legal field. Every one of the websites relied upon by the new
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`Examining Attorney or her predecessor is a website of a legal bar association or a dedicated
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`provider of legal goods or services. And, in many cases, the topic or subject heading,
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`explanatory text and/or legends on the screenshots explicitly indicate that the information and
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`advice provided is intended to be exclusively in the legal field. Those entities reflected in the
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`screenshots that have obtained federal registrations for their names (see, e.g., Request for
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`Reconsideration, Exhibits A-C) further demonstrate that the entities believe themselves to be
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`dedicated legal goods or services providers and not in the business of providing general business
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`information or advice. If any of those entities viewed themselves as in the “general business
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`information and advice” business, they would advertise that fact and have registered their marks
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`for those services. The evidence of record also reflects that the screenshots relied upon by the
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`11
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`Examining Attorney are buried deep in the subject website and often require clicking through
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`multiple search links with legal headings to access the page subject to the screenshot. See, e.g.,
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`Third Request for Reconsideration, B004-06.
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`Like the Board’s holding in In re Thor Tech Inc., the record in this case
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`establishes that:
`
`(1)
`
`(2)
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`the respective services are not competitive;
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`the respective services are completely different in utility;
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`and
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`(3)
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`the respective services have nothing in common with
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`respect to their essential characteristics or appeal.
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`113 U.S.P.Q.2d at 1551.
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`The degree of care of consumer care between their respective services is
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`dramatically different as well. The retention of an attorney to represent a consumer in a personal
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`injury case is a significant undertaking and results in a significant financial and time commitment
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`for the consumer, whether the case is pursued on a flat fee or contingency basis. There is no
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`such commitment as to a consumer looking for general business information or advice.
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`Accordingly, the degree of care for attorney referral services is much greater than for general
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`business information and advice because far more is at stake. Id. (considering the degree of
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`consumer care in finding confusion unlikely).
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`The “same trade channel” argument of the new Examining Attorney and her
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`predecessor is also without merit for the reasons Applicant has already demonstrated. A legal
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`bar association website would be a reasonable place to start the process of looking to retain an
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`attorney to represent a consumer in a personal injury matter. On the other hand, neither the new
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`12
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`Examining Attorney nor her predecessor has explained why an individual seeking only “general
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`business information or advice” would even consider in the first instance looking to or consulting
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`the websites of a legal bar association or dedicated legal goods or services provider. That is not
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`advice or information that these entities provide or claim to provide. If they did, they would
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`certainly advertise, promote and provide that service. And, as the record clearly reflects, the
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`owner of the Cited Registration is neither a bar association nor a dedicated legal goods or
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`services provider and it does not provide any legal goods or services let alone the services
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`covered by the Application. See Opening Brief at 9, 15; Request for Reconsideration at 8 and
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`Exhibit G thereof.
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`Finally, despite Applicant’s having discredited the prior Examining Attorney’s
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`claim that the services of the Application and the Cited Registration are provided and used by
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`“the same consumers in the same fields of use”, the new Examining Attorney has endorsed this
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`erroneous statement. See Subsequent Final Action at 4. The evidence she relies upon to support
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`this statement is the same record evidence relied upon by her predecessor, again, consisting of
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`screenshots from legal bar association websites or websites of dedicated legal goods and services
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`providers. Applicant has previously demonstrated that many of the screenshots are from
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`“members only” sections of a bar association website or are otherwise clearly directed to legal
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`professionals. See, e.g., Denial at 35-36, 39-40, 42; Subsequent Final Action at 34;
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`Second Request for Reconsideration at C005-12; E002-10, F002-18; H001-20; I003-12, 016-21;
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`Opening Brief at 13. This is an entirely different class of consumer than consumers seeking
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`general business information. Applicant requests that the Examining Attorney explain in
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`her response how the consumers of “members only” legal practice information services are
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`the same as consumers who are seeking general business information.
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`13
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`
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`Applying all of the relevant factors, confusion of Applicant’s Mark with the
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`Cited Registration is unlikely. It is well established that “the Trademark Act does not talk in
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`terms of remote possibilities of confusion but, rather, the likelihood of confusion.” In re Chalet
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`Chocolates, Inc., 212 U.S.P.Q. 968, 969 (T.T.A.B. 1982). Consequently, “[a] showing of mere
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`possibility of confusion is not enough; a substantial likelihood that the public will be confused
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`must be shown.” Omaha Nat’l Bank v. Citibank (South Dakota), N.A., 633 F. Supp. 231, 234 (D.
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`Neb. 1986) (emphasis added). Applicant submits that all relevant factors set forth in Du Pont
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`clearly support Applicant. Under these circumstances, and absent “substantial doubt,”
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`Applicant’s application should pass to publication. In re Mars, Inc., 741 F.2d 395, 396 (Fed. Cir.
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`1984) (emphasis supplied) (finding CANYON for candy bar not likely to be confused with
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`CANYON for fruit). Like that of her predecessor, the new Examining Attorney’s response to
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`this appears focused on the contention of an overriding concern “not only to prevent buyer
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`confusion as to the source of services, but to protect registrant from adverse commercial impact
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`due to use of a similar mark by a new consumer”. Denial at 5; Subsequent Final Action at 6
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`(citation omitted). Given the differences in their respective services, and in their target customer
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`and field of use as well as the prevalence of numerous similar marks (see Opening Brief at
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`18-20), there is no evidence any such adverse commercial impact would occur here. Rather, the
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`likelihood of any confusion occurring here is de minimis.
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`14
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`CONCLUSION
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`Based on the arguments above, as well as those set forth in Applicant’s Opening Brief,
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`and the evidence in the record, the Board should reverse the refusal and order approval of the
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`ASK JIM FIRST mark shown in the Application for publication.
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`Dated: April 2, 2020
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`Respectfully submitted,
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`/Christopher P. Bussert/
`Christopher P. Bussert
`KILPATRICK TOWNSEND & STOCKTON LLP
`1100 Peachtree Street, Suite 2800
`Atlanta, Georgia 30309-4530
`Telephone: (404) 815-6545
`Facsimile: (404) 541-3144
`E-mail: cbussert@kilpatricktownsend.com
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`Attorneys for Applicant
`James Kelleher
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`15
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