Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1003843
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`Filing date:
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`09/23/2019
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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
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`Applied for Mark
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`ASK JIM FIRST
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`Correspondence
`Address
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`CHRISTOPHER P. BUSSERT
`KILPATRICK TOWNSEND & STOCKTON LLP
`MAILSTOP: IP DOCKETING - 22 1100 PEACHTREE STREET, SUITE 2800
`ATLANTA, GA 30309-4528
`UNITED STATES
`tmadmin@kilpatricktownsend.com, cbussert@kilpatricktownsend.com
`404-815-6500
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`Submission
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`Attachments
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`Filer's Name
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`Filer's email
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`Appeal Brief
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`2019.09.23 Ex Parte Appeal Brief of Applicant James Kelleher.pdf(250760 bytes
`)
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`Christopher P. Bussert
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`tmadmin@kilpatricktownsend.com, cbussert@kilpatricktownsend.com, kteil-
`haber@ktslaw.com
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`Signature
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`Date
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`/Christopher P. Bussert/
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`09/23/2019
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`APPLICANT:
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`MARK:
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`SERIAL NO.:
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`CLASS:
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`James Kelleher
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`ASK JIM FIRST
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`87/882,281
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`35
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`EX PARTE APPEAL BRIEF OF APPLICANT JAMES KELLEHER
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`TABLE OF CONTENTS
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`INTRODUCTION ...........................................................................................................................1 
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`PROCEDURAL BACKGROUND ..................................................................................................1 
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`ARGUMENT AND CITATION OF AUTHORITIES ....................................................................2 
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`I. 
`
`LEGAL STANDARDS .......................................................................................................2 
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`A. 
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`B. 
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`C. 
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`D. 
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`E. 
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`F. 
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`G. 
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`Applicant’s Services Are Distinguishable from the Services Offered
`Under the Cited Registration and Are Offered to a Different Class of
`Consumer in a Different Field of Use ......................................................................4 
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`The Final Office Action and Request for Reconsideration ......................................7 
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`Denial .......................................................................................................................9 
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`Applicant’s Mark and the Cited Registration Are Distinguishable in
`Sound, Sight and Overall Commercial Impression ................................................16 
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`The Coexistence of Numerous Relevant Third Party Filings Weighs
`Against A Finding of Likelihood of Confusion .....................................................18 
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`Applicant Adopted the ASK JIM FIRST Mark in Good Faith ..............................20 
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`Under an Application of All the Relevant Factors, Confusion Is Highly
`Unlikely..................................................................................................................20 
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`CONCLUSION ..............................................................................................................................21 
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`i
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`

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`Cases 
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`TABLE OF AUTHORITIES
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`7-Eleven, Inc. v. Wechsler,
`83 U.S.P.Q.2d 1715 (T.T.A.B. 1998) ................................................................................... 9, 16
`
`Armstrong Cork Co. v. World Carpets, Inc.,
`597 F.2d 496 (5th Cir. 1979) ...................................................................................................... 5
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`AT&T Wireless Servs., Inc. v. Wright,
`2004 WL 1195622 (T.T.A.B. 2004) ......................................................................................... 17
`
`Buitoni Foods Corp. v. Gio. Buton & C.S.p.A.,
`680 F.2d 290, 216 U.S.P.Q. 558 (2d Cir. 1982) ......................................................................... 5
`
`Coach Services, Inc. v. Triumph Learning LLC,
`668 F.3d 1356 (Fed. Cir. 2012) .................................................................................................. 9
`
`Consol. Cigar Co. v. RJR Tobacco Co.,
`491 F.2d 1265, 181 U.S.P.Q. 44 (C.C.P.A. 1974) .................................................................... 19
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`Consolidated Cigar Co. v. RJR Tobacco Co.,
`491 F.2d 1265 (C.C.P.A. 1974) ................................................................................................ 17
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`Elec. Design & Sales, Inc. v. Elec. Data Sys. Co.,
`954 F.2d 713, 21 U.S.P.Q.2d 1388 (Fed. Cir. 1992) .................................................................. 5
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`Freedom Savings & Loan Ass’n v. Way,
`757 F.2d 1176 (11th Cir. 1995) ................................................................................................ 17
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`Gen. Mills, Inc. v. Kellogg Co.,
`824 F.2d 622, 3 U.S.P.Q.2d 1442 (8th Cir. 1987) .................................................................... 19
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`H. D. T. Co. Factors, Inc. v. Sinclair,
`288 F.2d 947, 129 U.S.P.Q. 283 (C.C.P.A. 1961) .................................................................... 16
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`In re British Bulldog, Ltd.,
`224 U.S.P.Q. 854 (T.T.A.B. 1984) ............................................................................................. 5
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`In re Broadway Chicken, Inc.,
`38 U.S.P.Q.2d 1559 (T.T.A.B. 1996) ....................................................................................... 18
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`In re Christian Des. Garets,
`2004 WL 1195610 (T.T.A.B. 2004) ......................................................................................... 17
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`In re Davey Prods. Pty Ltd.,
`92 U.S.P.Q.2d 1198 (T.T.A.B. 2009) ................................................................................... 6, 15
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`ii
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`

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`In re Digirard Corp.,
`45 U.S.P.Q.2d 1841 (T.T.A.B. 1998) ......................................................................................... 6
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`In re Du Pont de Nemours & Co.,
`476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973) .......................................................... 2, 4, 21
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`In re Mars,
`741 F.2d 395, 222 U.S.P.Q. 938 (Fed. Cir. 1984) ............................................................... 2, 21
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`In re Toshiba Medical Systems Corp.,
`91 U.S.P.Q.2d 1266 (T.T.A.B. 2009) ....................................................................................... 15
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`In re White Rock Distilleries, Inc.,
`92 U.S.P.Q.2d 1282 (T.T.A.B. 2009) ......................................................................................... 6
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`Interstate Brands Corp. v. Celestial Seasonings, Inc.,
`576 F.2d 926, 198 U.S.P.Q. 151 (C.C.P.A. 1978) ...................................................................... 5
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`Keebler Co. v. Assoc. Biscuits, Ltd.,
`207 U.S.P.Q. 1034 (T.T.A.B. 1980) ......................................................................................... 18
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`Nat’l Motor Bearing Co. v. James-Pond-Clark,
`266 F.2d 799, 121 U.S.P.Q. 515 (C.C.P.A. 1959) .................................................................... 18
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`Omaha Nat’l Bank v. Citibank (S.D.), N.A.,
`633 F. Supp. 231, 229 U.S.P.Q. 51 (D. Neb. 1986) ............................................................. 2, 20
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`Plough, Inc. v. Kreis Laboratories,
`314 F.2d 635 (9th Cir. 1963) .................................................................................................... 17
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`Recot, Inc. v. Becton,
`214 F.3d 1322 (Fed. Cir. 2000) .................................................................................................. 9
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`Shoe Corp. of Am. v. Juvenile Shoe Corp.,
`266 F.2d 793, 121 U.S.P.Q. 510 (C.C.P.A. 1959) .................................................................... 18
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`Sports Auth. Mich., Inc. v. PC Auth., Inc.,
`63 U.S.P.Q.2d 1782 (T.T.A.B. 2002) ......................................................................................... 9
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`Sweats Fashions, Inc. v. Pannill Knitting Co.,
`833 F.2d 1560, 4 U.S.P.Q.2d 1793 (Fed. Cir. 1987) ................................................................ 19
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`Vitarroz Corp. v. Borden, Inc.,
`644 F.2d 960 (2d Cir. 1981) ....................................................................................................... 6
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`Statutes 
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`15 U.S.C. § 1052(d) ........................................................................................................................ 2
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`iii
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`Other Authorities 
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`4 MCCARTHY,
`MCCARTHY ON TRADEMARKS & UNFAIR COMPETITION § 23:108 ......................... 20
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`RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 22,
`Reporter’s Note to cmt. b, at 248 (1995) .................................................................................. 20
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`TMEP 1207.01(a)(vi) ...................................................................................................................... 6
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`iv
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`

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`INTRODUCTION
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`Applicant James Kelleher (“Applicant”) submits this brief in support of his ex parte
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`appeal in connection with Application Serial No. 87/882,281 (the “Application”). As more fully
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`described below, this appeal follows the Examining Attorney’s May 24, 2019 continuance and
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`maintenance of a final refusal to register the ASK JIM FIRST mark (“Applicant’s Mark”) shown
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`in the Application (the “Denial”), on the basis of a purported likelihood of confusion with the
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`ASK JIM mark shown in Registration No. 3,289,118 (the “Cited Registration”) owned by Small
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`Business Network, Inc.
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`PROCEDURAL BACKGROUND
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`Applicant filed the Application on April 18, 2018 seeking registration of the
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`ASK JIM FIRST mark in connection with “legal referral services”. On August 14, 2018, the
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`Examining Attorney issued an Office Action preliminarily refusing registration under
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`Section 2(d) on the basis of the Cited Registration for “business advice, inquiries or information”
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`and Registration No. 2,151,373 for the ASK FIRST mark for “physician referral services”.
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`Applicant responded to the Office Action and traversed the Section 2(d) refusal. On
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`September 18, 2018, the Examining Attorney issued a Suspension Notice noting that registration
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`maintenance documents are or were due to be filed for Registration No. 2,151,373 and if those
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`documents were not timely filed, the registration would expire and no longer present a bar to
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`registration under Section 2(d). On January 11, 2019, Applicant filed a Request for Lifting of
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`Suspension noting that the necessary maintenance documents had not been filed in connection
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`with Registration No. 2,151,373 and that the registration had expired effective December 14,
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`2018.
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`On February 8, 2019, the Examining Attorney issued a Final Office Action again refusing
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`registration under Section 2(d) but relying only on the Cited Registration. Applicant responded
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`1
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`

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`to the Final Office Action by filing a Request for Reconsideration in which it again traversed the
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`Section 2(d) refusal. It also amended the identification of services to read: “Legal referral
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`services provided to consumers primarily on personal injury matters.” On May 24, 2019, the
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`Examining Attorney issued the Denial. On July 23, 2019, Applicant filed a Second Request for
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`Reconsideration in which it submitted additional evidence in support of registration. It also
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`further amended the identification of services to read: “Legal referral services provided to
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`consumers on personal injury matters.” On July 24, 2019, Applicant filed this ex parte appeal.
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`ARGUMENT AND CITATION OF AUTHORITIES
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`I.
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`LEGAL STANDARDS
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`Under Section 2(d), a mark is barred from registration only if it “[c]consists of or
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`comprises a mark which so resembles a mark registered in the [USPTO] . . . as to be likely, when
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`used on or in connection with the goods of the applicant, to cause confusion, to cause mistake, or
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`to deceive . . .” 15 U.S.C. § 1052(d) (emphasis added). When determining whether an
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`applicant’s mark creates a likelihood of confusion with a mark covered by a cited registration,
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`“[a] showing of mere possibility of confusion is not enough; a substantial likelihood that the
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`public will be confused must be shown.” Omaha Nat’l Bank v. Citibank (S.D.), N.A.,
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`633 F. Supp. 231, 234, 229 U.S.P.Q. 51, 52 (D. Neb. 1986) (emphasis added); see also In re
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`Mars, 741 F.2d 395, 396, 222 U.S.P.Q. 938 (Fed. Cir. 1984) (finding CANYON for candy bar
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`not likely to be confused with CANYON for fruit).
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`In Du Pont de Nemours & Co., the Court of Customs and Patent Appeals listed thirteen
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`factors to be considered in determining if a likelihood of confusion exists under Section 2(d).
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`According to that court, “the following, when of record, must be considered” in assessing the
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`issue of likelihood of confusion:
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`2
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`

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`(1)
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`the similarity or dissimilarity of the marks in their entireties as to
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`appearance, sound, connotation, and commercial impression;
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`(2)
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`(3)
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`(4)
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`(5)
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`(6)
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`(7)
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`(8)
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`the similarity or dissimilarity and nature of the goods or services in question;
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`the similarity or dissimilarity of established, likely-to-continue trade channels;
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`the conditions under which, and buyers to whom, sales are made, i.e.,
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`“impulse” vs. careful, sophisticated purchasing;
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`the fame of the prior registered mark (sales, advertising, length of use);
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`the number and nature of similar marks in use on similar goods;
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`the nature and extent of any actual confusion;
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`the length of time during and conditions under which there has been concurrent
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`use without evidence of actual confusion;
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`(9)
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`the variety of goods on which the mark is or is not used (house mark, “family”
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`mark, product mark);
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`(10)
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`the market interface between the applicant and the owner of a prior registered
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`mark;
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`(11)
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`the extent to which the applicant has a right to exclude others from use of its mark
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`on its goods;
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`(12)
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`the extent of potential confusion, i.e., whether de minimis or substantial; and
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`(13)
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`any other established fact probative of the effect of use.
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`In re Du Pont de Nemours & Co., 476 F.2d 1357, 1362, 177 U.S.P.Q. 563, 567 (C.C.P.A. 1973)
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`(emphasis added) (holding RALLY for polishing and cleaning agent not likely to be confused
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`with RALLY for all-purpose detergent).
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`3
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`No likelihood of confusion exists between Applicant’s Mark and the Cited Registration
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`because:
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`(1)
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`(2)
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`(3)
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`(4)
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`The dissimilarity in the marks and in their respective services makes confusion
`unlikely;
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`The conditions under and the buyers to whom the respective services are offered
`are different.
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`A large number of marks beginning with the term “ASK” and/or ending with
`“FIRST” peacefully coexist on the Principal Register for a wide variety of
`informational services;
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`Applicant bears no intent whatsoever to trade off the goodwill of any third party,
`including the owner of the Cited Registration; and
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`(5)
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`the extent of potential confusion is de minimis.
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`Under Du Pont, the question of likelihood of confusion turns “not [on] the nature of the
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`mark, but [on] its effect when applied to the goods of the applicant.” Du Pont, 177 U.S.P.Q.
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`at 567. “The words ‘when applied’ do not refer to a mental exercise, but to all of the known
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`circumstances surrounding use of the mark” in the marketplace. Id., 177 U.S.P.Q. at 567
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`(emphasis added). As explained below, the Examining Attorney reached her conclusion by
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`evaluating similarity of the marks and the respective services and the similarity in “class of
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`consumers” and “field of use”. Denial at 4. As is demonstrated below, the Examining
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`Attorney’s conclusion that the services of the Application and Cited Registration are related and
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`that they are used by the same class of consumers in the same fields of use is flawed in multiple
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`respects as it is neither supported by the evidence nor the law upon which she relies.
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`A.
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`Applicant’s Services Are Distinguishable from the Services Offered Under
`the Cited Registration and Are Offered to a Different Class of Consumer in a
`Different Field of Use
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`Applicant’s application as amended covers “lawyer referral services provided to
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`consumers on personal injury matters”. These services are not mentioned in the services
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`4
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`description for the Cited Registration. As noted above, the Cited Registration covers “business
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`advice, inquiries or information”. The services in the Cited Registration do not remotely overlap
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`with Applicant’s services.
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`Even if the services offered by the parties were in the same general field (which they are
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`not), the law is clear that per se rules for categories of goods and services are “improper and
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`inconsistent with § 2(d) of the Lanham Act.” Interstate Brands Corp. v. Celestial Seasonings,
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`Inc., 576 F.2d 926, 928, 198 U.S.P.Q. 151, 153 (C.C.P.A. 1978) (finding no likelihood of
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`confusion between ZINGERS for cakes and RED ZINGER for herbal tea); Armstrong Cork Co.
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`v. World Carpets, Inc., 597 F.2d 496, 502 (5th Cir. 1979) (reversing district court holding as to
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`marks used by carpet manufacturers; stating that “[t]he mere fact that Armstrong’s proposed
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`corporate name contains the word World does not, of itself, make the name ‘substantially
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`similar’ to World’s trademark. A mark must be viewed in its entirety and in context. It is the
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`overall impression that counts.”). Also, it is well-established that “use in the same broad field is
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`not sufficient to demonstrate that a genuine issue exists concerning likelihood of confusion.”
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`Elec. Design & Sales, Inc. v. Elec. Data Sys. Co., 954 F.2d 713, 716, 21 U.S.P.Q.2d 1388, 1391
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`(Fed. Cir. 1992) (holding EDS for power supplies is not confusingly similar to E.D.S. & Design
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`for computer programming services); see also In re British Bulldog, Ltd., 224 U.S.P.Q. 854
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`(T.T.A.B. 1984) (no likelihood of confusion between PLAYERS for shoes and PLAYERS for
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`men’s underwear).
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`Furthermore, where the goods or services “differ in ways that may be deemed material to
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`consumers,” confusion is less likely to occur. Buitoni Foods Corp. v. Gio. Buton & C.S.p.A., 680
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`F.2d 290, 292, 216 U.S.P.Q. 558, 559 (2d Cir. 1982) (holding no likelihood of confusion
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`between BUTON and BUITONI, both for alcoholic drinks). For example, in Vitarroz Corp. v.
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`5
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`

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`Borden, Inc., 644 F.2d 960 (2d Cir. 1981), the Second Circuit held that BRAVOS for crackers
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`was not confusingly similar to BRAVOS for chips. The court explained that “the products differ
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`in non-trivial respects and share only some areas of competing use, and the trier has found no
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`significant risk of injury to the senior user. . . .” Id. at 968. Here, the services of the parties are
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`in distinct fields - lawyer referral services provided to consumers on personal injury matters vs.
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`general business information services. The respective services are not interchangeable
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`competitive, or complementary and the differences in the services are clearly material.
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`The Examining Attorney bears the burden of establishing that the services of the Cited
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`Registration and those of the Application are sufficiently related to support a finding of
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`likelihood of confusion. See TMEP 1207.01(a)(vi); In re White Rock Distilleries, Inc.,
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`92 U.S.P.Q.2d 1282, 1285 (T.T.A.B. 2009). As demonstrated by the cases upon which the
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`Examining Attorney relies, examining attorneys typically attempt to meet this burden by
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`providing: (1) evidence of third-party use based registrations that includes both the
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`goods/services identified in an applicant’s application and any cited registration; and
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`(2) evidence including Internet evidence showing that the goods/services of an applicant’s
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`application and any cited registration are offered by the same source. See, e.g., In re Davey
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`Prods. Pty Ltd., 92 U.S.P.Q.2d 1198, 1203 (T.T.A.B. 2009). In this case, at no time during the
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`course of prosecution has the Examining Attorney identified a single third-party registration,
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`which includes in its identification both the services identified in the Application and the Cited
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`Registration. See In re Digirard Corp., 45 U.S.P.Q.2d 1841, 1845 (T.T.A.B. 1998) (no
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`likelihood of confusion found where the examining attorney failed to show a single federal
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`registration including both parties’ goods). Rather, she relies entirely on Internet evidence,
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`which she claims shows that the “business advice, inquiries or information services” of the Cited
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`6
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`

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`Registration and the “lawyer referral services provided to consumers on personal injury matters”
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`are provided by the same entity. As demonstrated below, none of the Internet evidence upon
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`which the Examining Attorney relies supports the Examining Attorney’s contention. Rather, a
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`careful review of the Examining Attorney’s Internet evidence shows that she has repeatedly
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`mischaracterized what it in fact that evidence shows.
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`B.
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`The Final Office Action and Request for Reconsideration
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`The Examining Attorney’s mischaracterization of evidence has permeated the
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`prosecution of Applicant’s mark and began in earnest with the Final Office Action. There, the
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`Examining Attorney contended that Internet evidence from Legal Zoom, Legal Shield and
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`Rocket Lawyer, as well as screenshots from the U.S. Chamber of Commerce, Maryland State
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`Bar Association, the People’s Law Library at Maryland, the American Bar Association and the
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`New York City Bar websites show that each of these entities “provide lawyer referral services as
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`well as providing business information all under the same mark.” Final Office Action at 3.
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`In its Request for Reconsideration, Applicant demonstrated that none of the Internet
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`evidence or screenshots relied upon by the Examining Attorney supported her conclusion.
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`Rather, the Internet evidence from Legal Zoom, Legal Shield and Rocket Lawyer showed only
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`that these entities were exclusively providing or offering to provide legal advice and information
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`on subjects such as drafting of corporate formation documents, preparation of various
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`agreements, contract review, collections assistance, etc. as opposed to providing general business
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`information. None of these entities purports to provide general non-legal business advice or to
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`respond to general business inquiries. In fact, the federal registrations held by these entities
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`confirm that they consider themselves to be exclusively providers of legal services. See Request
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`for Reconsideration at 7 and Exhibits A-C thereto.
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`7
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`

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`The Examining Attorney’s reliance on the remaining screenshot evidence in the Final
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`Office Action missed the mark even more dramatically. Contrary to the Examining Attorney’s
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`assertion, none of the U.S. Chamber of Commerce, the American Bar Association, or the
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`People’s Law Library at Maryland even provide legal referral services. See Request for
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`Reconsideration at 7 and Exhibits E-F thereto. Applicant further demonstrated that although the
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`screenshot evidence from the Maryland State Bar Association and the New York City Bar
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`websites did reflect that these bar associations provided legal referral services, neither showed
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`that they provide general information for businesses. Rather, the screenshots demonstrated only
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`that the bar associations provide legal information and advice. Request for Reconsideration at 7-
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`8.
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`In an effort to bridge the gap between legal advice and information on business subjects
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`reflected in the screenshots and the “business advice, inquiries or information” of the Cited
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`Registration, the Examining Attorney also contended in the Final Office Action that the Cited
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`Registration’s services description “is broad enough to encompass legal business advice and
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`inquiries.” Final Office Action at 3. Applicant advised the Examining Attorney in its Request
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`for Reconsideration that this could not be the case based on the USPTO Acceptable
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`Identification of Goods and Services Manual (“Goods and Services Manual”). The Goods and
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`Services Manual provides legal advice (including legal advice on business matters) and legal
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`information is not encompassed within Class 35, which is the sole class covered by the Cited
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`Registration. Rather, legal advice and legal information on any subject, including advice and
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`information on legal business matters fall exclusively in Class 45. See Request for
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`Reconsideration at 6 and Exhibit D.
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`8
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`

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`Applicant further pointed out in its Request for Reconsideration that there is no evidence
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`the owner of the Cited Registration has even offered lawyer referral services on any subject let
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`alone legal advice or legal information on any subject. See Request for Reconsideration at 8 and
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`Exhibit G thereto. Both the Federal Circuit and the Board have recognized this factor supports a
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`conclusion that confusion is not likely. See 7-Eleven, Inc. v. Wechsler, 83 U.S.P.Q.2d 1715
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`(T.T.A.B. 1998) (no likelihood of confusion found in part because there was no evidence
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`opposer had ever offered applicant’s goods); Coach Services, Inc. v. Triumph Learning LLC,
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`668 F.3d 1356 (Fed. Cir. 2012) (no likelihood of confusion found in part because there was no
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`evidence opposer used its mark on the goods sold by applicant); see also Sports Auth. Mich., Inc.
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`v. PC Auth., Inc., 63 U.S.P.Q.2d 1782 (T.T.A.B. 2002) (“There is nothing in the record,
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`however, to suggest that merely because the same consumer may purchase these items, such
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`consumer would consider the goods to emanate from the same source.”).1 The Coach services
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`and 7-Eleven cases are even more notable as the Examining Attorney relied on them in both the
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`Final Office Action and Denial.
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`C.
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`Denial
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`Having demonstrated repeated instances of mischaracterization of evidence by the
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`Examining Attorney in its Request for Reconsideration, Applicant was interested in the approach
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`the Examining Attorney would adopt in the event she denied the Request for Reconsideration,
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`and specifically whether she would respond directly to or address the evidence of those
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`mischaracterizations. Interestingly, the Examining Attorney in the Denial did not respond to or
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`1 The Examining Attorney’s reliance on Recot, Inc. v. Becton, 214 F.3d 1322 (Fed. Cir. 2000) in
`both the Final Office Action and Denial is misplaced as opposer’s mark in that case was deemed
`famous (FRITO-LAY) and was, according to the Federal Circuit, entitled to greater protection.
`There is no evidence whatsoever in the record that the Cited Registration is widely known, let
`alone famous. Cf. Coach Services, Inc. v. Triumph Learning LLC (no likelihood of confusion
`found despite the fact that opposer’s COACH mark was deemed famous).
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`otherwise address any of the evidentiary mischaracterizations. Instead, she chose to abandon
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`reliance on essentially all of the Internet evidence and screenshots mentioned in the Final Office
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`Action. Moreover, in the Denial the Examining Attorney did not dispute or otherwise contest
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`Applicant’s assertions from the Request for Reconsideration that: (1) in accordance with the
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`Goods and Services Manual the “business advice, inquiries or information services” of the Cited
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`Registration does not and cannot encompass legal advice or information on business subjects; (2)
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`the owner of the Cited Registration does not offer lawyer referral services, legal advice or legal
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`information on any subject; and (3) the owner of the Cited Registration is neither a legal services
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`organization nor a bar association.
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`Rather than relying on or explaining her reliance on the Internet evidence and screenshots
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`cited in the Final Office Action, the Examining Attorney in the Denial has chosen to rely on
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`entirely new Internet evidence and screenshots with one exception (the New York City Bar
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`Association website). She now contends this evidence shows that entities that provides legal or
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`attorney services in the field of personal injury “also offer general business advice and
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`information”. Denial at 4. As was the case in the Final Office Action, a careful review of this
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`new evidence demonstrates yet again that the Examining Attorney has mischaracterized what
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`this Internet evidence shows. These new mischaracterizations necessitated Applicant’s filing of
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`a Second Request for Reconsideration immediately prior to filing a Notice of Appeal, the express
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`purpose of which was to provide additional information from the websites relied on by the
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`Examining Attorney to rebut her mischaracterizations. When the new evidence submitted by
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`Applicant from these websites is considered together with that provided by the Examining
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`Attorney, it is clear that none of the Internet evidence shows that any of the subject organizations
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`provide general business advice and information.
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`Of the eight websites cited by the Examining Attorney in her Denial, five of them are for
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`bar associations. Specifically, the Internet evidence relied upon by the Examining Attorney in
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`the Denial is from the websites of the New York City Bar Association, the San Francisco Bar
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`Association, the Boston Bar Association, the Massachusetts Bar Association and the DC Bar
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`Association. Applicant will address the evidence relied by the Examining Attorney as to each of
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`these bar associations in turn.2
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`As to the New York City Bar Association, the Examining Attorney contends that the
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`screenshots she has included with the Denial demonstrate that this bar association “provides
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`general business information via online articles and business topics.” Denial at 4. None of the
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`screenshots relied on by the Examining Attorney reflect this. At most, the screenshots for this
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`bar association show a section of the website operated under the heading “Other Legal Topics”,
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`under which legal information and advice is provided under the heading “Business & Corporate
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`Law”. Id. at 26-27.
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`As to the San Francisco Bar Association, the Examining Attorney contends that the
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`screenshots she has included with the Denial demonstrate that this bar association “provides
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`general information via online articles, research, advice and opinions from experts in the legal
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`profession.” Id. at 4. None of the screenshots relied on by the Examining Attorney reflect this.
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`At most, the screenshots show programs and information available only to member attorneys
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`from the Solo and Small Firm Resource Center regarding the operation of a solo and small law
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`firm practice including networking with other solo and small firm professionals, volunteer
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`2 Applicant does not contest that the New York City Bar Association, the San Francisco Bar
`Association, the Boston Bar Association, the Massachusetts Bar Association and the DC Bar
`Association provide legal referral services or that these bar associations provide legal advice and
`information.
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`opportunities, and articles, research, advice, and opinions from experts in the legal profession.
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`Id. at 35.
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`As to the Boston Bar Association, the Examining Attorney contends that the evidence
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`demonstrates that this bar association “provides business development programs.” Id. at 4. The
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`screenshot evidence relied on by the Examining Attorney, like that for the San Francisco Bar
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`Association, only shows programs available to member attorneys through the Solo and Small
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`Firm Section of the bar association focusing on expanding client base, building a professional
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`network and maintaining the skills critical to managing a law firm practice. Id. at 36.
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`As to the Massachusetts Bar Association, the Examining Attorney contends that this bar
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`association “provides information and practice tools to help with professional and business
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`development.” Id. at 4. The screenshots relied on by the Examining Attorney do not reflect this.
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`Rather, at most, they show only that the Massachusetts Bar Association has a Practicing with
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`Professionalism Resource Center available to member attorneys, which provides instructions and
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`details on attending a Practicing With Professionalism course within 18 months of being
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`admitted to the bar. Id. at 39-40.
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`Finally as to the DC Bar Association, the Examining Attorney contends that the
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`screenshots included with the Denial show that this bar association “provides events and
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`seminars covering a wide range of topics in the field of practice management.” Actually, the
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`screenshots show two different activities. The first is an opportunity for member attorneys to
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`participate in an Advice and Referral Clinic sponsored by the DC Bar Pro Bono Center where
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`individuals are provided an opportunity to discuss legal problems with attorneys. Id. at 41. The
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`second is a Practice Management Advisory Service provided to member attorneys on topics of
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`interes