From: Ha, Pauline
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`Sent: 6/19/2020 11:47:59 AM
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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 - EXAMINER BRIEF
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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)
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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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`EXAMINING ATTORNEY’S APPEAL BRIEF
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`Applicant James Kelleher has appealed the trademark examining attorney’s final refusal to
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`register his proposed trademark, ASK JIM FIRST, pursuant to Trademark Act Section 2(d), 15 U.S.C.
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`§1052(d), on the basis of a likelihood of confusion with U.S. Registration No. 3289118.
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`I.
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`FACTS
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`Applicant applied to register the mark ASK JIM FIRST (in standard characters) for services, which
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`as amended, are: “Lawyer referral services provided to consumers who seek to retain an attorney to
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`represent them in personal injury matters excluding business advice, inquiries and information services”
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`in International Class 35. Registration was initially refused under Trademark Act Section 2(d), 15 U.S.C.
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`§1052(d), based on a likelihood of confusion with the marks in U.S. Registration Nos. 2151373 and
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`3289118. Following cancellation of U.S. Registration No. 2151373, the refusal as to U.S. Registration No.
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`3289118 for the mark ASK JIM (in standard characters) for “business advice, inquiries or information” in
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`International Class 35 was made final on February 8, 2019 and applicant’s first request for
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`reconsideration dated May 1, 2019 was denied. Applicant submitted a second request for
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`reconsideration on July 23, 2019 and filed the instant appeal on July 24, 2019. The instant application
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`was reassigned to the undersigned trademark examining attorney and a motion to remand dated
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`November 7, 2019 was filed by the trademark examining attorney requesting suspension of the appeal
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`and remand of the application for submission of new evidence. Following the Board’s grant of the
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`motion to remand, the trademark examining attorney issued a subsequent final refusal of the
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`applicant’s mark under Section 2(d). This appeal follows the trademark examining attorney’s
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`subsequent final refusal under Section 2(d) and denial of applicant’s third request for reconsideration
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`dated April 20, 2020.
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`II.
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`ARGUMENT
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`Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a
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`registered mark that it is likely consumers would be confused, mistaken, or deceived as to the
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`commercial source of the services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is
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`determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours &
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`Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re
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`i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Any evidence of record
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`related to those factors need be considered; however, “not all of the DuPont factors are relevant or of
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`similar weight in every case.” In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed.
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`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
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`any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the
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`relatedness of the compared services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at
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`1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380
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`(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
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`differences in the essential characteristics of the goods [or services] and differences in the marks.”);
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`TMEP §1207.01.
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`A. ASK JIM FIRST and ASK JIM are Similar Marks
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`In a likelihood of confusion determination, marks are compared in their entireties for similarities
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`in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion
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`Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc.
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`v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed.
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`Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find
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`the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In
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`re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921
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`(Fed. Cir. 2019); TMEP §1207.01(b).
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`In the present case, applicant’s mark is ASK JIM FIRST in standard characters and registrant’s
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`mark is ASK JIM in standard characters. A comparison of the marks show they are similar in appearance,
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`sound, connotation, and overall commercial impression.
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`The applied-for mark merely adds the wording “FIRST” to the end of the registrant’s mark.
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`Adding a term to a registered mark generally does not obviate the similarity between the compared
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`marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See
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`Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A.
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`1975) (finding BENGAL and BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys.
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`Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re
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`El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS
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`confusingly similar); TMEP §1207.01(b)(iii). Thus, the marks are identical in part as to the wording “ASK
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`JIM”.
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`Applicant argues that the marks are not similar because of the addition of the wording “FIRST”
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`to applicant’s mark. Although marks are compared in their entireties, one feature of a mark may be
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`more significant or dominant in creating a commercial impression. See In re Detroit Athletic Co., 903
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`F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407,
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`41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given
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`to this dominant feature when determining whether marks are confusingly similar. See In re Detroit
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`Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41
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`USPQ2d at 1533-34). In this case, the addition of the wording “FIRST” does not obviate the likelihood of
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`confusion because the additional wording appears at the end of the wording that the applied-for mark
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`shares with the registered mark, namely, “ASK JIM”. Consumers are generally more inclined to focus on
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`the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve
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`Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005)
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`(finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . .
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`remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”);
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`Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir.
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`1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because
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`“consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d
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`1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial
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`words is particularly significant because consumers typically notice those words first”). Thus, the first
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`part of applicant’s mark “ASK JIM”, is dominant for purposes of determining the mark’s commercial
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`impression. Because the dominant part of applicant’s mark is identical to registrant’s mark, ASK JIM,
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`consumers are likely to perceive the applied-for mark as an extension of the registrant’s brand.
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`Therefore, applicant’s mark and registrant’s mark share the same commercial impression and
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`are confusingly similar.
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`B. The Services Are Related
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`Applicant’s “lawyer referral services provided to consumers who seek to retain an attorney to
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`represent them in personal injury matters excluding business advice, inquiries and information services”
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`is related to registrant’s “business advice, inquiries or information.” Although applicant has added
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`language specifically excluding the registrant’s services, the compared services need not be identical or
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`even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d
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`1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54
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`USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i). They need only be “related in some manner
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`and/or if the circumstances surrounding their marketing are such that they could give rise to the
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`mistaken belief that [the services] emanate from the same source.” Coach Servs., Inc. v. Triumph
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`Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v.
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`Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
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`Further, the greater degree of similarity between the applied-for mark and the registered mark,
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`the lesser the degree of similarity between the services of the parties is required to support a finding of
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`likelihood of confusion. In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus
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`One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001)); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009).
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`As discussed above, the marks are highly similar with the only difference being that applicant has added
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`the wording “FIRST” to the end of registrant’s mark.
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`In the present case, the registrant’s services for providing business information are broadly
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`defined, as the identification includes no limitations as to the type of business information provided nor
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`as to the field of use.1 Specifically, “business” means “work relating to the production, buying, and
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`selling of goods or services,” or “an organization which produces and sells goods or which provides a
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`service”; and “information” means “information about someone or something consists of facts about
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`them.” See November 27, 2019 Final Office Action, TSDR pp. 2-3. Thus, “business information” refers to
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`facts about work relating to the production, buying, and selling of goods or services, as well as facts
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`about an organization which produces and sells goods or which provides a service. See also November
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`27, 2019 Final Office Action, TSDR p. 4 showing “business information” defined as “one of the three
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`main segments of the information industry,” and describing “primary business information formats” as
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`including “basic reference sources such as…internet resources,” “[d]irectories,” and “[e]lectronic
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`business information.” The following evidence shows that directory listings and business contact
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`information for businesses providing legal services, including law firms and solo and associated
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`attorneys, constitute “business information”:
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`• ApricotLaw Blog (November 27, 2019 Final Office Action, TSDR p. 5) stating “Online directory
`listings are websites that collect business information to make it easier for someone to find a
`business they’re looking for, and to compare businesses’ basic information to see which one will
`meet the potential client’s needs….For example, legal directors are going to be the most helpful
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`1 Applicant is mistaken regarding its assertion as to “the longstanding practice within the USPTO to categorize
`information services narrowly by field of use.” Applicant’s Appeal Brief, p. 11. Indeed, the USPTO classifies
`informational services by the subject matter of that information. Thus, for example, providing business advice,
`inquiries, or information to the legal field, which is encompassed within the registrant’s broadly set forth identification,
`would be an International Class 35 service.
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`for law firms. There are even directories that further break down the listings into practice
`areas….”
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`• AttorneyatWork (November 27, 2019 Final Office Action, TSDR pp. 6-8) highlighting the
`importance of having “Correct Business Information” in the nature of “business address and
`contact information” and “business category” on business listing sites.
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`• PaperStreet (November 27, 2019 Final Office Action, TSDR pp. 9-11) stating that business
`information for use on various online directories includes “business name, address, and phone,”
`as well as “a backlink to their website.”
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`Applicant’s lawyer referral services and registrant’s business advice and information services are
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`of a kind that may emanate from a single source under the same mark. The following is a representative
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`sample of the evidence that establishes that (i) the same entity commonly provides lawyer referral
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`services, and business advice and information services, and markets the services under the same mark;
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`and (ii) the relevant services are provided through the same trade channels and used by the same
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`classes of consumers in the same fields of use:2
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`•
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`LegalZoom (August 14, 2018 Office Action, TSDR pp. 12-19 and November 27, 2019 Final Office
`Action, TSDR pp. 24-26) showing the mark used in connection with (i) providing referrals by “Plan
`attorneys” to local attorneys in the customer’s state when the customer has a legal issue that is
`not covered by the legal services provided by the “Plan attorneys,” (ii) providing business
`information in the form of a lawyer directory that includes information such as name, bar
`admission, associated firm, practice area, and professional background, and (ii) providing business
`advice and information about topics such as business types, “doing business as” designations, and
`employer identification numbers.
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`• NOLO (May 24, 2019 Request for Reconsideration Denied, TSDR pp. 9-19) showing the mark used
`in connection with (i) providing lawyer referral services in the field of personal injury by entering
`having the customer enter case details online in order to “have local personal injury lawyers
`contact [the customer]”, (ii) providing business information in the form of a lawyer directory that
`includes “a comprehensive profile for each attorney with information that will help you select the
`right attorney,” and (iii) providing business advice and information about starting a business.
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`• Rocket Lawyer (August 14, 2018 Office Action, TSDR pp. 32-37 and November 27, 2019 Final Office
`Action, TSDR p. 31-32) showing the mark used in connection with (i) providing referrals to “a
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`2 The excerpts attached to the February 8, 2019 Final Office action from the U.S. Chamber of Commerce, People’s
`Library of Maryland and American Bar Association are not relevant as they do not appear to clearly show legal referral
`services provided by those entities.
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`qualified lawyer” upon selecting a legal issue from a drop down menu or entering a legal question
`into an online form, (ii) providing business information in the form of a lawyer directory that
`includes information such as name, bar admission, associated firm, practice areas, and rates, and
`(ii) providing business advice and information regarding topics such as “running a business,”
`business expenses, business agreements, business expansion, and business taxes.
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`• ECBA (November 27, 2019 Final Office Action, TSDR p. 18-20) showing the mark used in
`connection with (i) providing lawyer referral services in the field of personal injury, and (ii)
`providing business advice and information about starting a business.
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`•
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`Indy Lawyer Finder (November 27, 2019 Final Office Action, TSDR p. 21-22) showing the mark used
`in connection with (i) providing lawyer referral services, and (ii) providing business information in
`the form of an online lawyer directory.
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`• Oregon State Bar (November 27, 2019 Final Office Action, TSDR p. 27-28) showing the mark used
`in connection with (i) providing lawyer referral services, and (ii) providing business advice and
`information about starting a business.
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`•
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`Lawyer Referral Service of Central Texas (May 24, 2019 Request for Reconsideration Denied, TSDR
`pp. 2-8) showing the mark used in connection with (i) providing lawyer referral services in the
`field of personal injury, and (ii) providing business advice and information on topics such as how
`a franchisee can protect its business.
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`• New York City Bar Legal Referral Service (February 8, 2019 Office Action, TSDR pp. 2-3 and May
`24, 2019 Request for Reconsideration Denied, TSDR pp. 20-23) showing the mark used in
`connection with (i) providing lawyer referral services, and (ii) providing business advice and
`information about starting a business, business forms, buying and selling a business, and raising
`capital for a business.
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`• Attorney Search Network (May 24, 2019 Request for Reconsideration Denied, TSDR pp. 24-29)
`showing the mark used in connection with (i) providing lawyer referral services in the field of
`personal injury, and (ii) providing business advice and information about various topics related to
`operating a business.
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`• The Bar Association of San Francisco (May 24, 2019 Request for Reconsideration Denied, TSDR pp.
`30-31) showing the mark used in connection with (i) providing lawyer referral services in the field
`of personal injury through the online submission of the case, and (ii) providing business advice
`and information to practitioners about operating legal businesses.
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`• Boston Bar (May 24, 2019 Request for Reconsideration Denied, TSDR pp. 32-33) showing the mark
`used in connection with (i) providing lawyer referral services in the field of personal injury, and
`(ii) providing business advice and information to practitioners about operating legal businesses.
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`• MassBar Association (May 24, 2019 Request for Reconsideration Denied, TSDR pp. 35-36) showing
`the mark used in connection with (i) providing lawyer referral services in the field of personal
`injury, and (ii) providing business advice and information to practitioners about professional and
`business development.
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`• D.C. Bar (May 24, 2019 Request for Reconsideration Denied, TSDR pp. 37-38) showing the mark
`used in connection with (i) providing lawyer referral services in the field of personal injury through
`a pro bono advice and referral clinic, and (ii) providing business advice and information to
`practitioners about managing the practice in legal businesses.
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`• Palm Beach County Bar Association (November 27, 2019 Final Office Action, TSDR p. 29-30)
`showing the mark used in connection with (i) providing lawyer referral services, and (ii) providing
`business advice and information to practitioners about business marketing.
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`Applicant argues that the evidence is mischaracterized because advice and information about
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`topics such as starting, forming or operating a business must be categorized as legal advice and
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`information rather than business advice and information based on the Office’s classification system.
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`Relatedly, applicant also argues that third-parties such as Legal Zoom, Legal Shield, and Rocket Lawyer
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`do not provide general nonlegal business advice or responses to general nonlegal business inquiries in
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`part because these entities have not registered service marks for such services. See May 1, 2019
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`Request for Reconsideration, TSDR pp. 17-34. However, the classification system “was established for
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`the convenience of Patent and Trademark Office administration,” see TMEP §1401 et seq., and
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`applicant’s arguments ignore the fact that an applicant for real world services may be faced with a
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`choice to register a service that may be viewed by a consumer as a single product in more than one
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`class. For example, “providing lawyer referral services via a website” is classified in International Class
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`35, but “providing a website featuring technology that enables users to obtain lawyer referrals” is
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`classified in International Class 42. In this case, based on the definitions of “business” and “information”
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`discussed above, the services shown in the evidence is encompassed within business advice and
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`business information. Furthermore, as to registrations such as that of Legal Zoom, Legal Shield, and
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`Rocket Lawyer, such registrations are only evidence of the validity of the federal registration and the
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`registrant’s exclusive right to use the mark in commerce in connection with the specified services. See
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`15 U.S.C. §1057(b); TMEP §1207.01(d)(iv). It is not considered in any way a limitation on the breadth of
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`services provided by any particular entity.
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`Finally, the services of applicant and registrant are related because lawyer referral services are
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`similar or complementary in terms of purpose or function to business information services. The wording
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`“referral” means “the act of telling someone about the positive features of a person or business, or the
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`person who is being referred.” See November 27, 2019 Final Office Action, TSDR p. 12. Notwithstanding
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`applicant’s amendment to its identification of services expressly excluding the provision of business
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`information, lawyer referral services typically include providing business information about law firms
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`and attorneys to consumers. The following representative sample of evidence shows that lawyer referral
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`services are similar or complementary in terms of purpose or function to business information services
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`because lawyer referral services provide facts about law firms and attorneys who provide the relevant
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`legal services to consumers:
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`• Alameda County Bar Association (November 27, 2019 Final Office Action, TSDR pp. 13-14)
`indicating that lawyers are screened “for their experience, knowledge and professionalism” and
`that a consumer who calls the lawyer referral service will “get contact information for up to two
`attorneys.”
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`• Alaska Bar Association (November 27, 2019 Final Office Action, TSDR p. 15) stating “[w]e will give
`you the names and phone numbers of up to three (3) lawyers who handle legal problems like
`yours.”
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`• Allegheny County Bar Association (November 27, 2019 Final Office Action, TSDR pp. 6-8) stating
`“we are able to refer out one attorney practicing in the particular field you need…How is the ACBA
`Lawyer Referral Service different from other lawyer directories? The ACBA Lawyer Referral Service
`is not simply a lawyer directory. The service includes the initial consultation with the attorney…”
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`• MassLegal Services (November 27, 2019 Final Office Action, TSDR pp. 6-8) stating “What is a
`Lawyer Referral Service? A Lawyer Referral Service connects potential clients with lawyers. You
`contact the Lawyer Referral Service and give them information about your legal problem. The
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`Lawyer Referral Service will give you contact information for one or more lawyers who might be
`able to help….”
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`• Searcy Law (August 14, 2018 Office Action, TSDR p. 10) stating “[a]n 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, applicant’s and registrant’s services are considered related for likelihood of confusion
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`purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba
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`Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
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`C. Applicant’s Remaining Arguments
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`First, applicant argues that the services of applicant and registrant are not related because the
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`services “do not remotely overlap”. However, as noted above, the compared services need not be
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`identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online
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`Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322,
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`1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i). In this case, the evidence discussed
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`above shows that applicant’s lawyer referral services and registrant’s business advice and information
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`services are related.
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`Second, applicant argues that there is no likelihood of confusion because there is no evidence
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`that the registrant is a legal services organization or a bar association that provides lawyer referral
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`services, legal advice or legal information. However, the determination of likelihood of confusion is
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`based on the description of the services stated in the application and registration at issue, not on
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`extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047,
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`1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed.
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`Cir. 2017)). The question is whether there is a likelihood of confusion as the source of the services.
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`Thus, applicant’s extrinsic evidence and arguments regarding registrant’s actual use of its mark are not
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`relevant to the instant ex parte proceeding. In any case, “‘a showing of actual confusion is not necessary
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`to establish a likelihood of confusion.’” In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744,
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`1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d
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`1375, 1380 (Fed. Cir. 2002)); TMEP §1207.01(d)(ii). “[T]he relevant test is likelihood of confusion, not
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`actual confusion.” In re Detroit Athletic Co., 903 F.3d 1297, 1309, 128 USPQ2d 1047, 1053 (Fed. Cir.
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`2018) (emphasis in original). “Uncorroborated statements of no known instances of actual confusion . . .
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`are of little evidentiary value,” especially in ex parte examination. In re Majestic Distilling Co., 315 F.3d
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`1311, 1317, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003).
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`Third, applicant argues that the registrant’s mark is entitled to limited protection because (i) the
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`Office previously allowed the registered mark to register over the now cancelled mark ASK FIRST (U.S.
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`Registration No. 2151373) for “physician referral services”; (ii) other registered marks having the word
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`“ASK” have been registered for related services, see May 1, 2019 Request for Reconsideration, TSDR pp.
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`66-82, and unrelated services, see May 1, 2019 Request for Reconsideration, TSDR pp. 84-87; and (iii)
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`other registered marks having the word “FIRST” have been registered for related services. See May 1,
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`2019 Request for Reconsideration, TSDR pp. 89-94.
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`In this case, applicant’s evidence fails to show that registrant’s mark is weak or diluted because
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`applicant has pointed to no other registrants of a mark combining the terms “ASK” and “JIM”. The
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`weakness or dilution of a particular mark is generally determined in the context of the number and
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`nature of similar marks in use in the marketplace in connection with similar services. See Nat’l Cable Tel.
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`Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1579-80, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991); In
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`re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). Evidence of
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`widespread third-party use of similar marks with similar services “is relevant to show that a mark is
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`relatively weak and entitled to only a narrow scope of protection” in that particular industry or
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`

`

`field. Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 1324, 128 USPQ2d 1686,
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`1693 (Fed. Cir. 2018) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772,
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`396 F.3d 1369, 1373, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005)).
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`As to U.S. Registration No. 2151373 for the mark ASK FIRST, this also shows only that a cancelled
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`registration shared the wording “ASK” with the registered mark. Additionally, a cancelled or expired
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`registration is “only evidence that the registration issued and does not afford [an applicant] any legal
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`presumptions under Trademark Act Section 7(b),” including the presumption that the registration is
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`valid, owned by the registrant, and the registrant has the exclusive right to use the mark in commerce in
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`connection with the services specified in the registration certificate. Bond v. Taylor, 119 USPQ2d 1049,
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`1054-55 (TTAB 2016) (citing In re Pedersen, 109 USPQ2d 1185, 1197 (TTAB 2013)); see Anderson, Clayton
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`& Co. v. Krier, 478 F.2d 1246, 1248, 178 USPQ 46, 47 (C.C.P.A. 1973) (statutory benefits of registration
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`disappear when the registration is cancelled); TBMP §704.03(b)(1)(A); TMEP §1207.01(d)(iii), (d)(iv). Nor
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`does a cancelled or expired registration provide constructive notice under Section 22, in which
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`registration serves as constructive notice to the public of a registrant’s ownership of a mark. See Action
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`Temp. Servs. Inc. v. Labor Force Inc., 870 F.2d 1563, 1566, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989) (“[A]
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`canceled registration does not provide constructive notice of anything.”). Thus, U.S. Registration No.
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`2151373 has little, if any, probative value with respect to the registrability of applicant’s mark.
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`As to the third-party registrations with the wording “ASK” for related services, these
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`registrations only share the wording “ASK” with the registered mark; none of the third-party
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`registrations provided by applicant includes “JIM” in the marks.
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`Further, the evidence comprising third-party registrations for “ASK” with different or unrelated
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`services has “no bearing on the strength of the term in the context relevant to this case.” See Tao
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`Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1058 (TTAB 2017) (citing In re i.am.symbolic,
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`

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`llc, 866 F.3d at 1328, 123 USPQ2d at 1751). These third-party registrations for unrelated services
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`submitted by applicant are insufficient to establish that ASK JIM is weak or diluted.
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`Similarly, the third-party registrations with the wording “FIRST”, but without either “ASK” or
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`“JIM”, are not relevant to the determination of whether registrant’s mark, ASK JIM, is weak or diluted
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`because none of these registrations contain any of the wording in the registrant’s mark. See May 1,
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`2019 Request for Reconsideration, TSDR pp. 89-94. Prior decisions and actions of other trademark
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`examining attorneys in registering other marks have little evidentiary value and are not binding upon
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`the USPTO or the Trademark Trial and Appeal Board. TMEP §1207.01(d)(vi); see In re USA Warriors Ice
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`Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017). Each case is decided on its own facts,
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`and each mark stands on its own merits. In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d at
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`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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`Thus, applicant’s third-party registration evidence does not show that registrant’s mark is weak
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`or diluted.
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`Fourth, applicant argues that applicant adopted ASK JIM FIRST without predatory intent.
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`However, any good-faith intent of applicant is outweighed by the likelihood of confusion created by the
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`similarity of the marks and relatedness of the services. Again, the overriding concern is to prevent buyer
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`confusion as to the source of the services, and to protect the registrant from adverse commercial impact
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`due to use of a similar mark by a newcomer, and a lack of applicant’s intent to falsely associate with
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`registrant does not address these overriding concerns.
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`III