From: Ha, Pauline
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`Sent: 4/20/2020 7:03:45 PM
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`To: TTAB EFiling
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`CC:
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`Subject: U.S. Trademark Application Serial No. 87882281 - ASK JIM FIRST - 1075512 - Request for
`Reconsideration Denied - Return to TTAB
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`*************************************************
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`Attachment Information:
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`Count: 1
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`Files: 87882281.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. 87882281
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`Mark: ASK JIM FIRST
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`Correspondence Address:
` William H. Brewster
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` KILPATRICK TOWNSEND & STOCKTON LLP
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` MAILSTOP: IP DOCKETING - 22
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` 1100 Peachtree Street, Suite 2800
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` Atlanta GA 30309-4528
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`Applicant: James Kelleher
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`Reference/Docket No. 1075512
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`Correspondence Email Address:
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` tmadmin@kilpatricktownsend.com
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`REQUEST FOR RECONSIDERATION
`AFTER FINAL ACTION
`DENIED
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`Issue date: April 20, 2020
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`Applicant’s request for reconsideration is denied. See 37 C.F.R. §2.63(b)(3). In applicant’s
`January 27, 2020 request for reconsideration, applicant submitted an amended identification of
`services and attached additional evidence. The trademark examining attorney has carefully
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`reviewed applicant’s request and determined the request did not: (1) raise a new issue, (2) resolve
`the outstanding issue, (3) provide any new or compelling evidence with regard to the outstanding
`issue, or (4) present analysis and arguments that were persuasive or shed new light on the
`outstanding issue. TMEP §§715.03(a)(ii)(B), 715.04(a). Accordingly, the Trademark Act Section
`2(d) refusal made final in the Office action dated February 8, 2019, and for which a subsequent
`final Office action was issued on November 27, 2019, is maintained and continued. See TMEP
`§§715.03(a)(ii)(B), 715.04(a).
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`SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
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`Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S.
`Registration No. 3289118. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.
`See the previously attached registration.
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`Applicant’s mark is ASK JIM FIRST (in standard character form) which, per applicant’s January 27, 2020
`request for reconsideration, is amended from “Lawyer referral services provided to consumers on
`personal injury matters” to “Lawyer referral services provided to consumers who seek to retain an
`attorney to represent them in personal injury matters excluding business advice, inquiries and
`information services” in International Class 35.
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`Registrant’s mark is ASK JIM (in standard character form) for “Business advice, inquiries or information”
`in International Class 35.
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`Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered
`mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source
`of the services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-
`by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,
`1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d
`1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Any evidence of record related to those factors
`need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every
`case.” In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In
`re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).
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`Although not all du Pont factors may be relevant, there are generally two key considerations in any
`likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the
`relatedness of the compared services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at
`1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380
`(Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29
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`(C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of
`differences in the essential characteristics of the goods [or services] and differences in the marks.”);
`TMEP §1207.01.
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`Comparison of Marks
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`Applicant’s January 27, 2020 request for reconsideration does not include any new arguments regarding
`the similarity of the marks.
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`Marks are compared in their entireties for similarities in appearance, sound, connotation, and
`commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110
`USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison
`Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).
`“Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re
`Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812
`(TTAB 2014)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
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`Applicant’s mark is ASK JIM FIRST and registrant’s mark is ASK JIM. Although marks are compared in
`their entireties, one feature of a mark may be more significant or dominant in creating a commercial
`impression. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018)
`(citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP
`§1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining
`whether marks are confusingly similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at
`1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34). Consumers are generally more
`inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay
`Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689,
`1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part
`because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to
`appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d
`1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in
`part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co.,
`903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two
`initial words is particularly significant because consumers typically notice those words first”). Thus, the
`first part of applicant’s mark “ASK JIM”, is dominant for purposes of determining the mark’s commercial
`impression and identical to registrant’s mark, ASK JIM.
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`Further, both marks are in standard characters and the only difference between the marks is that
`applicant’s mark has the additional term “FIRST” added after the wording “ASK JIM”, which is the
`entirety of registrant’s mark. This is a minor difference because adding a term to a registered mark
`generally does not obviate the similarity between the compared marks, as in the present case, nor does
`it overcome a likelihood of confusion under Section 2(d). See Coca-Cola Bottling Co. v. Jos. E. Seagram &
`Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL and BENGAL LANCER
`and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009)
`(finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004
`(TTAB 1988) (finding MACHO and MACHO COMBOS confusingly similar); TMEP §1207.01(b)(iii). In the
`present case, the marks are identical in part as to the wording “ASK JIM”. Moreover, consumers are
`likely to perceive the applied-for mark as an extension of registrant’s brand.
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`Therefore, applicant’s mark and registrant’s mark share the same commercial impression and are
`confusingly similar.
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`Comparison of Services
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`Applicant’s January 27, 2020 request for reconsideration includes an amendment of the identification of
`services from “Lawyer referral services provided to consumers on personal injury matters” to “Lawyer
`referral services provided to consumers who seek to retain an attorney to represent them in personal
`injury matters excluding business advice, inquiries and information services.” Applicant’s attached
`evidence from the USPTO’s ID Manual and third-party websites is not persuasive for the reasons stated
`below.
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`The services are compared to determine whether they are similar, commercially related, or travel in the
`same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101
`USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64
`USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi). Generally, the greater degree of
`similarity between the applied-for mark and the registered mark, the lesser the degree of similarity
`between the services of the parties is required to support a finding of likelihood of confusion. In re C.H.
`Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus One Inc., 60 USPQ2d 1812, 1815
`(TTAB 2001)); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009). As discussed above, the marks
`are highly similar with the only difference being that applicant has added the wording “FIRST” to the end
`of registrant’s mark.
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`Applicant previously argued that applicant’s services differ from and “does not remotely overlap”
`registrant’s “business advice, inquiries or information” services and the January 27, 2020 request for
`reconsideration includes a proposed amendment to applicant’s identification of services that expressly
`exclude registrant’s services. However, even with the amendment to the identification of services, the
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`compared services need not be identical or even competitive to find a likelihood of confusion. See On-
`line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot,
`Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i). They
`need only be “related in some manner and/or if the circumstances surrounding their marketing are such
`that they could give rise to the mistaken belief that [the services] emanate from the same source.”
`Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012)
`(quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
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`Further, determining likelihood of confusion is based on the description of the services stated in the
`application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic
`Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866
`F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
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`The previously attached evidence from Collins Dictionary shows that “business” means “work relating to
`the production, buying, and selling of goods or services,” or “an organization which produces and sells
`goods or which provides a service”; and “information” means “information about someone or
`something consists of facts about them.” Thus, “business information” refers to facts about work
`relating to the production, buying, and selling of goods or services, as well as facts about an organization
`which produces and sells goods or which provides a service. Indeed, the previously attached evidence
`from Wikipedia shows that “business information” is “one of the three main segments of the
`information industry,” and the “primary business information formats” include “basic reference sources
`such as…internet resources,” “[d]irectories,” and “[e]lectronic business information.” Thus, directory
`listings and business contact information for businesses providing legal services, including law firms and
`solo and associated attorneys, constitute “business information.” See also the previously attached
`evidence from ApricotLaw Blog, AttorneyatWork, and PaperStreet showing legal directory listings and
`business contact information are considered vital business information for law firms and attorneys.
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`Moreover, the previously attached evidence from Your Dictionary shows that “referral” means “the act
`of telling someone about the positive features of a person or business, or the person who is being
`referred.” Thus, lawyer referral services necessarily includes providing business information about law
`firms and attorneys to consumers. The previously attached evidence from Alameda County Bar
`Association, Alaska Bar Association, Allegheny County Bar Association, and MassLegal Services shows
`that lawyer referral services provide facts about legal services and attorneys who provide the relevant
`legal services to consumers, such as attorney contact information and other information about relevant
`legal experience to consumers. For example, the evidence previously attached to the August 14, 2018
`Office action from Searcy Law describes “lawyer referral services” as providing business information
`regarding attorneys as follows:
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`An appropriate [lawyer referral service] should help consumers by
`providing information about what consumers can and should do in the
`event of a tragic accident. The service should provide information
`about highly qualified attorneys in the consumer’s geographic area who
`practice in the legal specialty needed by the consumer. Finally, the
`service should provide a way for consumers to get in contact with the
`service’s attorney member of the consumer’s choice.
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`Thus, although applicant’s “Lawyer referral services provided to consumers who seek to retain an
`attorney to represent them in personal injury matters excluding business advice, inquiries and
`information services” may expressly exclude the provision of “business information”, such information
`appears to be commonly provided in connection with lawyer referral services.
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`In any case, lawyer referral services and business advice, inquiries, or information services are of a kind
`that may emanate from a single course under the same mark. The previously attached Internet
`evidence from the websites of Legal Zoom, Legal Shield, and Rocket Lawyer (see the August 14, 2018
`Office action); U.S. Chamber of Commerce, Maryland State Bar Association, The People’s Law Library of
`Maryland, American Bar Association, and the New York City Bar (see the February 8, 2019 final Office
`action); and Erie County Bar Association, Indy Lawyer Finder, Legal Shield, Legal Zoom, Oregon State Bar,
`Palm Beach County Bar Association, and Rocket Lawyer (see the November 27, 2019 Office action)
`establishes that the same entity commonly provides (i) lawyer referral services; and (ii) business advice,
`inquiries or information services and markets the services under the same mark, and the relevant
`services are provided through the same trade channels and used by the same classes of consumers in
`the same fields of use.
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`Furthermore, entities that provide legal or attorney referral services in the field of personal injury also
`offer general business advice and information by way of articles, legal topics and seminars, programs or
`events. See the evidence previously attached to the May 24, 2019 denial of the request for
`reconsideration from Lawyer Referral Service of Central Texas, NOLO, New York City Bar, Attorney
`Search Network, Bar Association of San Francisco, Boston Bar Association, MassBar Association, and DC
`Bar.
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`Applicant has also submitted a number of third-party registrations for the mark GENESIS that appear to
`be for various software. Although applicant does not provide an argument with respect to this
`evidence, the evidence does not appear to be relevant to the instant refusal as these marks are
`completely different from applicant’s mark and are for goods that differ from applicant’s services. In
`any case, prior decisions and actions of other trademark examining attorneys in registering other marks
`have little evidentiary value and are not binding upon the USPTO or the Trademark Trial and Appeal
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`Board. TMEP §1207.01(d)(vi); see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793
`n.10 (TTAB 2017). Each case is decided on its own facts, and each mark stands on its own merits. In re
`USA Warriors Ice Hockey Program, Inc., 122 USPQ2d at 1793 n.10 (quoting In re Boulevard Entm’t, 334
`F.3d 1336, 1343, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003)).
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`Finally, the overriding concern is not only to prevent buyer confusion as to the source of the services,
`but to protect the registrant from adverse commercial impact due to use of a similar mark by a
`newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).
`Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the
`registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62
`USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d
`1025, 1026 (Fed. Cir. 1988).
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`Thus, applicant’s and registrant’s services are considered related for likelihood of confusion purposes.
`See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys.
`Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
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`Since the marks are similar and the services are related, there is a likelihood of confusion as to the
`source of the services. Therefore, the FINAL refusal to register applicant’s mark under Section 2(d) of
`the Trademark Act is maintained and continued.
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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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`/Pauline Ha/
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`Examining Attorney
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`Law Office 115
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`(571) 272-5005
`(571) 272—5005
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`pauline.ha@uspto.gov
`pauline.ha@uspto.gov
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