To:
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`Subject:
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`Sent:
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`Sent As:
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`Attachments:
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`James Kelleher (tmadmin@kilpatricktownsend.com)
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`U.S. Trademark Application Serial No. 87882281 - ASK JIM FIRST - 1075512
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`November 27, 2019 01:42:07 PM
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`ecom115@uspto.gov
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`United States Patent and Trademark Office (USPTO)
`Office Action (Official Letter) About Applicant’s Trademark Application
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`U.S. Application Serial No.
`87882281
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`Mark:   ASK JIM FIRST
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`Correspondence Address: 
`CHRISTOPHER P BUSSERT
`KILPATRICK TOWNSEND &
`STOCKTON LLP
`1100 PEACHTREE STREET
`SUITE 2800
`ATLANTA, GA 30309-4530
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`Applicant:   James Kelleher
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`    
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`Reference/Docket No. 1075512
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`Correspondence Email
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`Address:  
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`tmadmin@kilpatricktownsend.com
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`FINAL OFFICE ACTION
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`Issue date:  November 27, 2019
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`THIS IS A SUBSEQUENT FINAL ACTION.
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`The Office has reassigned this application to the undersigned trademark examining attorney.
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`On August 14, 2018, the previously-assigned trademark examining attorney issued an Office action refusing registration of the applied-for mark
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`under Section 2(d) of the Trademark Act for likelihood of confusion with the marks in U.S. Registration Nos. 2151373 and 3289118.  
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`On August 23, 2018, applicant responded to the Office action with arguments and evidence against the Section 2(d) refusal.
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`On September 18, 2018, the previously-assigned examining attorney continued and maintained the Trademark Act Section 2(d) refusal for
`likelihood of confusion with the marks in U.S. Registration Nos. 2151373 and 3289118 and suspended action on the application because
`registration maintenance documents were due for U.S. Registration No. 2151373.
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`On January 11, 2019, applicant submitted a response to the letter of suspension requesting removal of the application from suspension on the
`basis that U.S. Registration No. 2151373 should be cancelled.
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`On February 8, 2019, the previously-assigned examining attorney issued a final Office action stating that U.S. Registration No. 2151373 was
`cancelled on February 8, 2019 and maintained and made final the Trademark Act Section 2(d) refusal for likelihood of confusion with the mark
`in U.S. Registration No. 3289118.
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`On May 1, 2019, applicant filed a request for reconsideration with additional arguments and evidence against the final Section 2(d) refusal.  
`Additionally, applicant amended applicant’s services from “legal referral services” to “legal referral services provided to consumers primarily
`on personal injury matters” in International Class 35.
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`On May 24, 2019, the previously-assigned examining attorney denied the request for reconsideration.
`
`On July 23, 2019, applicant filed a second request for reconsideration with additional arguments and evidence against the Section 2(d) refusal. 
`Additionally, applicant amended applicant’s services from “legal referral services provided to consumers primarily on personal injury matters”
`to “lawyer referral services provided to consumers on personal injury matters” in International Class 35.
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`The next day, on July 24, 2019, applicant initiated an appeal of the refusal to the Trademark Trial and Appeal Board (the “Board”).   
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`This application was reassigned to the undersigned trademark examining attorney who submitted a Motion to Remand on November 7, 2019 to
`the Board for permission to supplement the evidence of record to support the Trademark Act Section 2(d) refusal for likelihood of confusion with
`the mark in U.S. Registration No. 3289118.
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`On November 12, 2019, the Board granted the request for remand to the newly assigned examining attorney.  This subsequent final Office action
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`follows.
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`Upon issuance of this subsequent final Office action, the application will be returned to the Board for resumption of the appeal.  See TBMP
`§1209.02.  Any further request for the trademark examining attorney to consider this application must be made via a request for remand to the
`Board, for which good cause must be shown.  See TBMP §1209.01.
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`For the reasons set forth below, the FINAL refusal under Trademark Act Section 2(d) is now maintained and continued with respect to U.S.
`Registration No. 3289118.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).
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`SUMMARY OF ISSUES MADE FINAL that applicant must address:
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`Section 2(d) Refusal – Likelihood of Confusion
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`SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
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`Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3289118.  Trademark
`Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the registration previously attached to the August 14, 2018 Office
`action.
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`Applicant’s mark is ASK JIM FIRST (in standard character form) for “Lawyer referral services provided to consumers on personal injury
`matters” in International Class 35.
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`Registrant’s mark is ASK JIM (in standard character form) for “Business advice, inquiries or information” in International Class 35.
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`Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be
`confused, mistaken, or deceived as to the commercial source of the services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is
`determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ
`563, 567 (C.C.P.A. 1973) (called the “ du Pont factors”).   In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir.
`2017).  Only those factors that are “relevant and of record” need be considered.   M2 Software, Inc. v. M2 Commc’ns, Inc. , 450 F.3d 1378,
`1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353
`(Fed. Cir. 2004)); see In re Inn at St. John’s, LLC , 126 USPQ2d 1742, 1744 (TTAB 2018).  Thus, notwithstanding applicant’s assertion
`that it adopted its mark in good faith, the ultimate question is whether applicant’s mark is so similar to the registered mark that it is likely
`
`consumers would be confused, mistaken, or deceived as to the commercial source of the services of the parties.  See 15 U.S.C. §1052(d).  
`
`Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the
`similarities between the compared marks and (2) the relatedness of the compared services.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123
`USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc. , 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002));
`Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated
`by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the
`marks.”); TMEP §1207.01.
`
`Comparison of Marks
`
`Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital
`Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve
`Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). 
`“Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”   In re Inn at St. John’s, LLC , 126 USPQ2d
`1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).
`
`  Applicant argues that the marks are not similar because applicant’s
`Applicant’s mark is ASK JIM FIRST and registrant’s mark is ASK JIM.
`mark has the additional term “FIRST”. Although marks are compared in their entireties, one feature of a mark may be more significant or
`dominant in creating a commercial impression.  See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018)
`(citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).  Greater weight is
`often given to this dominant feature when determining whether marks are confusingly similar.  See In re Detroit Athletic Co., 903 F.3d at 1305,
`128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).  Consumers are generally more inclined to focus on
`the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
`1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE
`CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the
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`label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity
`between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also
`In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words
`is particularly significant because consumers typically notice those words first”).   Thus, the first part of applicant’s mark “ASK JIM”, is
`dominant for purposes of determining the mark’s commercial impression and identical to registrant’s mark, ASK JIM.
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`Further, both marks are in standard characters and the only difference between the marks is that applicant’s mark has the additional term
`“FIRST” added after the wording “ASK JIM”, which is the entirety of registrant’s mark.
`  This is a minor difference because adding a term to a
`registered mark generally does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood
`of confusion under Section 2(d).  See Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A.
`1975) (finding BENGAL and BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269
`(TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988)
`(finding MACHO and MACHO COMBOS confusingly similar); TMEP §1207.01(b)(iii).  In the present case, the marks are identical in part as to
`the wording “ASK JIM”.   Moreover, consumers are likely to perceive the applied-for mark as an extension of registrant’s brand.
`
`Therefore, applicant’s mark and registrant’s mark share the same commercial impression and are confusingly similar.
`
`Comparison of Services
`
`The services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs.,
`Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc. ,
`308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).  Generally, the greater degree of similarity
`between the applied-for mark and the registered mark, the lesser the degree of similarity between the services of the parties is required to support
`a finding of likelihood of confusion.   In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus One Inc., 60 USPQ2d
`1812, 1815 (TTAB 2001)); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009).  As discussed above, the marks are highly similar with
`the only difference being that applicant has added the wording “FIRST” to the end of registrant’s mark.
`
`Applicant argues that applicant’s “lawyer referral services provided to consumers on personal injury matters” differ from and “does not
`remotely overlap” registrant’s “business advice, inquiries or information” services.
`  However, the compared services need not be identical or
`even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475
`(Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be
`“related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the
`services] emanate from the same source.”   Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed.
`Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
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`Further, determining likelihood of confusion is based on the description of the services stated in the application and registration at issue, not on
`extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re
`
`i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).   
`
`In the present case, the registration’s business information services are broadly defined and necessarily overlap with applicant’s lawyer referral
`services. Specifically, the attached evidence from Collins Dictionary shows that “business” means “work relating to the production, buying, and
`selling of goods or services,” or “an organization which produces and sells goods or which provides a service”; and “information” means
`“information about someone or something consists of facts about them.”   Thus, “business information” refers to facts about work relating to the
`production, buying, and selling of goods or services, as well as facts about an organization which produces and sells goods or which provides a
`service.  Indeed, the attached evidence from Wikipedia shows that “business information” is “one of the three main segments of the information
`industry,” and the “primary business information formats” include “basic reference sources such as…internet resources,” “[d]irectories,” and
`“[e]lectronic business information.”   Thus, directory listings and business contact information for businesses providing legal services, including
`law firms and solo and associated attorneys, constitute “business information.”   See also the attached evidence from ApricotLaw Blog,
`AttorneyatWork, and PaperStreet showing legal directory listings and business contact information are considered vital business information for
`law firms and attorneys.
`
`Moreover, the attached evidence from Your Dictionary shows that “referral” means “the act of telling someone about the positive features of a
`person or business, or the person who is being referred.”   Thus, applicant’s lawyer referral services necessarily provides that applicant will be
`providing business information about law firms and attorneys to consumers.  The attached evidence from Alameda County Bar Association,
`Alaska Bar Association, Allegheny County Bar Association, and MassLegal Services shows that lawyer referral services provide facts about legal
`services and attorneys who provide the relevant legal services to consumers, such as attorney contact information and other information about
`relevant legal experience to consumers.  See also the evidence from Searcy Law (https://www.searcylaw.com/what-are-lawyer-referral-services/)
`previously attached to the August 14, 2018 Office action describing “lawyer referral services” as providing business information regarding
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`attorneys as follows:  
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`An appropriate [lawyer referral service] should help consumers by providing information about what consumers
`can and should do in the event of a tragic accident.  The service should provide information about highly qualified
`attorneys in the consumer’s geographic area who practice in the legal specialty needed by the consumer.   Finally,
`the service should provide a way for consumers to get in contact with the service’s attorney member of the
`consumer’s choice.
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`Thus, applicant’s “ lawyer referral services provided to consumers on personal injury matters”     and registrant’s “business…information”
`services are related because applicant necessarily provides business information about law firms and attorneys in connection with its lawyer
`
`referral services.  
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`Additionally, applicant’s lawyer referral services and registrant’s business advice, inquiries, or information services are of a kind that may
`emanate from a single course under the same mark.  The previously attached Internet evidence from the websites of Legal Zoom, Legal Shield,
`and Rocket Lawyer (see the August 14, 2018 Office action); and U.S. Chamber of Commerce, Maryland State Bar Association, The People’s
`Law Library of Maryland, American Bar Association, and the New York City Bar (see the February 8, 2019 final Office action); and the attached
`evidence from Erie County Bar Association, Indy Lawyer Finder, Legal Shield, Legal Zoom, Oregon State Bar, Palm Beach County Bar
`Association, and Rocket Lawyer establishes that the same entity commonly provides (i) lawyer referral services; and (ii) business advice,
`inquiries or information services and markets the services under the same mark, and the relevant services are provided through the same trade
`channels and used by the same classes of consumers in the same fields of use.
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`Furthermore, entities that provide legal or attorney referral services in the field of personal injury also offer general business advice and
`information by way of articles, legal topics and seminars, programs or events.  For example the following evidence establishes that the same
`entity commonly provides the relevant services and markets the services under the same mark, and the relevant services are provided through the
`same trade channels and used by the same classes of consumers in the same fields of use:
`
`Lawyer Referral Service of Central Texas provides lawyer referral services in the field of personal injury, and general business information
`via an online business blog. See the evidence previously attached to the May 24, 2019 denial of the request for reconsideration from
`https://austinlrs.com/practice-areas/; https://austinlrs.com/practice-areas/business/; and http://austinlrs.com/blog/category/business/.
`NOLO provides lawyer referral services in the field of personal injury and general business information via books and online resources and
`articles.  See the evidence previously attached to the May 24, 2019 denial of the request for reconsideration from
`https://www.nolo.com/legal-encyclopedia/finding-personal-injury-lawyer-29840.html; https://www.nolo.com/legal-encyclopedia/start-
`own-business-50-things-30077.html; and https://store.nolo.com/products/business-suite.  
`New York City Bar provides lawyer referral services in the field of personal injury and general business information via online articles and
`business topics. See the evidence previously attached to the May 24, 2019 denial of the request for reconsideration from
`https://www.nycbar.org/get-legal-help/article/personal-injury-and-accidents/; and https://www.nycbar.org/get-legal-help/article/business-
`and-corporate-law/.
`Attorney Search Network provides lawyer referral services in the field of personal injury, and general business information via online
`articles and business topics.  See the evidence previously attached to the May 24, 2019 denial of the request for reconsideration from
`https://www.attorneysearchnetwork.com/Personal_Injury_Law.cfm; and https://www.attorneysearchnetwork.com/Business_Law.cfm.  
`Bar Association of San Francisco provides lawyer referral services in the field of personal injury and general business information via
`online articles, research, advice and opinions from experts in the legal profession.  See the evidence previously attached to the May 24,
`2019 denial of the request for reconsideration from https://www.sfbar.org/lawyerreferrals/personal-injury-attorneys.aspx; and
`http://www.sfbar.org/resources/solo_smallfirm_center.aspx.  
`Boston Bar Association provides lawyer referral services in the field of personal injury, and provides business development programs.  See
`the evidence previously attached to the May 24, 2019 denial of the request for reconsideration from
`http://www.bostonbar.org/edu/business-development; and https://bostonbarlawyer.org/pages/areas-personal-injury. 
`MassBar Association provides lawyer referral services in the field of personal injury and information and practice tools to help with
`professional and business development.   See the evidence previously attached to the May 24, 2019 denial of the request for reconsideration
`from https://www.masslawhelp.com/personal-injury.html; and https://www.massbar.org/education/practicing-with-professionalism-course. 
`DC Bar provides lawyer referral services in the field of personal injury and events and seminars covering a wide range of topics in the field
`of practice management.  See the evidence previously attached to the May 24, 2019 denial of the request for reconsideration from
`https://www.dcbar.org/for-the-public/help-for-individuals/advice.cfm; and https://www.dcbar.org/bar-resources/practice-management-
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`advisory-service/.        
`
`  See, e.g., In re Davey Prods. Pty Ltd., 92
`Thus, applicant’s and registrant’s services are considered related for likelihood of confusion purposes.
`USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
`
`Applicant argues that the services are not related because the Office previously allowed the registered mark to register over the now cancelled
`mark ASK FIRST (U.S. Registration No. 2151373) for “physician referral services.”   However, the only wording these two marks share is
`“ASK”.   In contrast, both applicant’s mark and registrant’s mark combine the wording “ASK” with the arbitrary wording “JIM”.
`  Further,
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`prior decisions and actions of other trademark examining attorneys in registering other marks have little evidentiary value and are not binding
`upon the USPTO or the Trademark Trial and Appeal Board.  TMEP §1207.01(d)(vi); see In re USA Warriors Ice Hockey Program, Inc., 122
`USPQ2d 1790, 1793 n.10 (TTAB 2017).  Each case is decided on its own facts, and each mark stands on its own merits.  In re USA Warriors Ice
`Hockey Program, Inc., 122 USPQ2d at 1793 n.10 (quoting In re Boulevard Entm’t , 334 F.3d 1336, 1343, 67 USPQ2d 1475, 1480 (Fed. Cir.
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`2003)).  
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`Applicant also argues that Legal Zoom, Legal Shield, and Rocket Lawyer do not provide general nonlegal business advice or responses to general
`nonlegal business inquiries in part because these entities have not registered service marks for such services.  A trademark or service mark
`registration on the Principal Register is considered prima facie evidence of the validity of the federal registration and the registrant’s exclusive
`right to use the mark in commerce in connection with the specified goods and/or services.  See 15 U.S.C. §1057(b); TMEP §1207.01(d)(iv).  It is
`not considered in any way a limitation on the breadth of services provided by any particular entity.
`
`  See, e.g., In re Davey Prods. Pty Ltd., 92
`Thus, applicant’s and registrant’s services are considered related for likelihood of confusion purposes.
`USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
`
`Applicant’s Remaining Arguments
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`First, applicant argues that the wording “ASK, “FIRST” and “ASK FIRST” are weak and diluted for similar services. In applicant’s August 23,
`2018 response, applicant submitted certain third-party registrations as evidence in support of the argument that the wording “ASK, “FIRST” and
`“ASK FIRST” are weak and diluted for similar services.   In the February 8, 2019 final Office action, the previously-assigned examining attorney
`objected to certain evidence and stated that the following marks or registrations were not considered because they were either cancelled
`registrations or were listed in the response without attaching requisite copies of the registrations:  “ASKFIRST”, “ASK ME FIRST”, “ASK
`COLIN FIRST”, “ASK FIRST”, “ASKCOUNSEL”, “CALL BART FIRST”, “CLICK ME FIRST”, “CALL ME FIRST”, “CLICK BART
`FIRST”, and U.S. Reg. Nos. 4129991 and 2393265.    See In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1405 n.17 (TTAB 2018) (citing
`In re 1st USA Realty Prof’ls , 84 USPQ2d 1581, 1583 (TTAB 2007); In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974)); TBMP §1208.02;
`
`TMEP §710.03.   
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`Applicant subsequently reasserted the dilution argument in applicant’s May 1, 2019 request for reconsideration.   However, applicant’s argument
`is unpersuasive because the third-party registrations submitted by applicant fail to show that the term “JIM” combined with “ASK”, “FIRST”,
`and/or “ASK FIRST” is weak and diluted on the Trademark Register.   Moreover, the cited registration is the only other mark on the Trademark
`Register that has a combination of the terms “ASK” and “JIM”, for relevant services.
`  Indeed, applicant has provided no evidence of third-party
`registrations showing that this combination of wording is diluted.  In any event, the prior decisions and actions of other trademark examining
`attorneys in registering other marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial and Appeal Board. 
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`TMEP §1207.01(d)(vi); see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017).  
`
`Furthermore, U.S. Reg Nos. 2393265, 2681270, 3100727, and 2151373 provided by applicant are cancelled registrations.  A cancelled or expired
`registration is “only evidence that the registration issued and does not afford [an applicant] any legal presumptions under Trademark Act Section
`7(b),” including the presumption that the registration is valid, owned by the registrant, and the registrant has the exclusive right to use the mark
`in commerce in connection with the goods and/or services specified in the registration certificate.  Bond v. Taylor, 119 USPQ2d 1049, 1054-55
`(TTAB 2016) (citing In re Pedersen, 109 USPQ2d 1185, 1197 (TTAB 2013)); see Anderson, Clayton & Co. v. Krier, 478 F.2d 1246, 1248, 178
`USPQ 46, 47 (C.C.P.A. 1973) (statutory benefits of registration disappear when the registration is cancelled); TBMP §704.03(b)(1)(A); TMEP
`§1207.01(d)(iii), (d)(iv).  Nor does a cancelled or expired registration provide constructive notice under Section 22, in which registration serves
`as constructive notice to the public of a registrant’s ownership of a mark.   See Action Temp. Servs. Inc. v. Labor Force Inc., 870 F.2d 1563,
`1566, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989) (“[A] canceled registration does not provide constructive notice of anything.”).    Thus, these
`third-party registrations have little, if any, probative value with respect to the registrability of applicant’s mark.
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`Finally, the overriding concern is not only to prevent buyer confusion as to the source of the services, but to protect the registrant from adverse
`commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir.
`1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see
`Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc.,
`837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
`
`Since the marks are similar and the services are related, there is a likelihood of confusion as to the source of the services.  Therefore, the FINAL
`refusal to register applicant’s mark under Section 2(d) of the Trademark Act is maintained and continued.
`
`  
`
`TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL
`REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online
`using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office
`
` 
`  
` 
` 
` 
`

`

`actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3)
`agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b);
`TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125
`per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS
`Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring
`
`this additional fee.     
`
`/Pauline Ha/
`Examining Attorney
`Law Office 115
`(571) 272-5005
`pauline.ha@uspto.gov
`
`RESPONSE GUIDANCE
`Missing the response deadline to this letter will cause the application to abandon.   A response or notice of appeal must be received by
`the USPTO before midnight Eastern Time of the last day of the response period.   TEAS and ESTTA maintenance or unforeseen
`
`circumstances could affect an applicant’s ability to timely respond.   
`
`Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an
`attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic
`applicant.  If applicant has an attorney, the response must be signed by the attorney.
`
`If needed, find contact information for the supervisor of the office or unit listed in the signature block.
`
`   
` 
` 
`

`

`hltps:lliiiriiiriiii.collinadclionay.con'ildclionaylengiahlbusineaa
`English Dictionary I Quiz I Thesaurus I School I Translator I Grammar I Scrabble I Eilog
`
`ISign Up I Log In
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`9:32:03 AM 11l5l2019
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`Subaru Legacy” over.
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`Collins
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`The safest
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`QUICK WORD CHALLENGE
`Question: 1
`Score: 0 If 5
`wail or whale?
`Drag the correctanswer into the
`box.
`wail
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`whale
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`of
`The
`bagpipes could be heard in the
`distance.
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`Nat
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`Word oi the day
`Catherine wheel
`A Catherine wheel is a firework in
`the shape ofa circle which spins
`round an d rou rid.
`' See full definition
`* See previous words
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`NovGS, zois
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`Updating our Usage
`There are many diverse influences
`on die way that English is used
`across the world today. We look at
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`Definition of 'business‘
`
`w Video
`business
`[benrs 19)
`
`Erigl'ish:business Americanbusiness Examplesenrencfi COBLIILDIdioms Trends Translations
`WordFrequency .....
`Collins COBUJLD
`
`Word forms: plural businesss 1%
`1. uncountable noun
`Business is work relating to the production, buying, and selling of goods or sewices.
`..youngpeople seeking a career in business.
`jennifer has an impressive academic and business background.
`..Harvard Business School.
`
`o
`a
`
`Synonyms: grade, selling trading use)! More symnyms of busimss
`2. uncouma ble noun
`
`Business is used when talking about how many products or servicesa company is able to sell. If
`business is good, a _lo_t_ of products or services are being sold and if business is bad, few of them
`are being sold.
`They worried that German companies would lose business.
`Business is booming.
`3. countable noun
`
`A business is an organization which produces and sells goods or which provides a service.
`The company was a family business.
`The majority ofsmall businessesgo broke within the first Mend/four months.
`He was short ofcash after the collapse 01’his business.
`synonyms: establishment ci:_i[r_ip_a_{11, firm, concern More Synonyms uthEi’IES
`
`
`
`4. uncaunta ble noun [oh on NOUN]
`
`Business is work or some other activity that you do as part of yourjob and not for pleasure.
`l'in here on business
`You can‘t mix business With pleasure.
`..buslriess trips
`5. singul