From: Sable, Eric
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`Sent: 7/31/2020 12:49:21 PM
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`To: TTAB EFiling
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`CC:
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`Subject: U.S. Trademark Application Serial No. 88041695 - 094239Lion - Request for Reconsideration
`Denied - Return to TTAB
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`*************************************************
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`Attachment Information:
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`Count: 1
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`Files: 88041695.doc
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`United States Patent and Trademark Office (USPTO)
`Office Action (Official Letter) About Applicant’s Trademark Application
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`U.S. Application Serial No. 88041695
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`Mark:
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`Correspondence Address:
` ADAM C REHM
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` POLSINELLI PC
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` 2950 N HARWOOD STREET SUITE 2100
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` DALLAS, TX 75201
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`Applicant: Thompson Law LLP
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`Reference/Docket No. 094239Lion
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`Correspondence Email Address:
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` uspt@polsinelli.com
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`REQUEST FOR RECONSIDERATION
`AFTER FINAL ACTION
`DENIED
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`Issue date: July 31, 2020
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`Applicant’s request for reconsideration is denied. See 37 C.F.R. §2.63(b)(3). The trademark
`examining attorney has carefully reviewed applicant’s request and determined the request did not:
`(1) raise a new issue, (2) resolve all the outstanding issue(s), (3) provide any new or compelling
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`evidence with regard to the outstanding issue(s), or (4) present analysis and arguments that were
`persuasive or shed new light on the outstanding issue(s). TMEP §§715.03(a)(ii)(B), 715.04(a).
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`Accordingly, the following requirement(s) and/or refusal(s) made final in the Office action dated January
`6, 2010 are maintained and continued:
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`•
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`Trademark Act Section 2(d) Refusal – Likelihood of Confusion with U.S. Reg. Nos. 5568720 and
`5604679
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`See TMEP §§715.03(a)(ii)(B), 715.04(a).
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`TRADEMARK ACT 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 marks in
`U.S. Registration Nos. 5568720 and 5604679. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP
`§§1207.01 et seq. See the previously attached registrations.
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`Applicant’s mark is a design consisting of a lion in a standing position appearing next to a human person
`for “Legal services, namely, personal injury legal services” in International Class 45.
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`Registrant’s marks are designs consisting of a lion in a standing position appearing next to a human
`person for “legal services” in International Class 45.
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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 goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is
`determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours &
`Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re
`i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Any evidence of record
`related to those factors need be considered; however, “not all of the DuPont factors are relevant or of
`similar weight in every case.” In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed.
`Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).
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`Although not all du Pont factors may be relevant, there are generally two key considerations in any
`likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the
`relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123
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`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.
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`The test for determining likelihood of confusion is the same for certification marks – the du Pont
`analysis. In re Accelerate s.a.l., 101 USPQ2d 2047, 2049 (TTAB 2012) (quoting Motion Picture Ass’n of
`Am., Inc. v. Respect Sportswear, Inc., 83 USPQ2d 1555, 1559-60 (TTAB 2007)); see In re E. I. du Pont de
`Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). However, because a
`certification mark owner does not use the mark itself, the likelihood of confusion analysis is based on a
`comparison of the mark as applied to the goods and/or services of the certification mark users, including
`the channels of trade and classes of purchasers. In re Accelerate s.a.l., 101 USPQ2d at 2049 (quoting
`Motion Picture Ass’n of Am., Inc. v. Respect Sportswear, Inc., 83 USPQ2d at 1559-60); see also Jos. S.
`Cohen & Sons Co. v. Hearst Magazines, Inc., 220 F.2d 763, 765, 105 USPQ 269, 271 (C.C.P.A. 1955).
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`A) Similarity of the Marks
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`i.
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`U.S. Reg. No. 5568720
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`In a likelihood of confusion determination, the marks in their entireties are compared for similarities in
`appearance, sound, connotation, and commercial impression. In re i.am.symbolic, llc, 866 F.3d 1315,
`1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); 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)); In re E.
`I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP
`§1207.01(b)-(b)(v).
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`In the present case, applicant’s mark is a design consisting of a lion in a standing position appearing next
`to a human person and registrant’s mark is the exact same design consisting of a lion in a standing
`position appearing next to a human person. These marks are identical in appearance “and have the
`potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411
`(TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are
`identical, these marks are likely to engender the same connotation and overall commercial impression
`when considered in connection with applicant’s and registrant’s respective services. Id.
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`Therefore, the marks are confusingly similar.
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`ii.
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`U.S. Reg. No. 5604679
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`When the marks at issue are both design marks, similarity of the marks is determined primarily on the
`basis of visual similarity. See, e.g., Volkswagenwerk Aktiengesellschaft v. Rose ‘Vear Enters., 592 F.2d
`1180, 1183, 201 USPQ 7, 9 (C.C.P.A. 1979) (quoting In re ATV Network Ltd., 552 F.2d 925, 929, 193 USPQ
`331, 332 (C.C.P.A. 1977)); Ft. James Operating Co. v. Royal Paper Converting Inc., 83 USPQ2d 1624, 1628
`(TTAB 2007); TMEP §1207.01(c). However, a side-by-side comparison is not the test. See Grandpa
`Pidgeon’s of Mo., Inc. v. Borgsmiller, 477 F.2d 586, 587, 177 USPQ 573, 574 (C.C.P.A. 1973). When
`comparing design marks, the focus is on the overall commercial impression conveyed by such marks, not
`on specific differences. See Grandpa Pidgeon’s of Mo., Inc. v. Borgsmiller, 477 F.2d at 587, 177 USPQ at
`574; In re Triple R Mfg. Corp., 168 USPQ 447, 448 (TTAB 1970); TMEP §1207.01(c).
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`Here, both marks consist of a virtually identical or highly similar lion design. The only minor difference is
`that the lion appears in a different position in each mark—sitting in the registered mark; standing in the
`applicant’s mark. Thus, the marks evince a similar overall commercial impression to the average
`purchaser.
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`In this case, consumers will likely focus on the lion design in applicant’s mark and may confuse the mark
`with registrant’s lion design mark, especially since the services of the respective parties are legally
`identical, as established in the previous Office actions.
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`B) Relatedness of the Services
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`Determining likelihood of confusion is based on the description of the services stated in the application
`and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d
`1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325,
`123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
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`In this case, the registrations uses broad wording to describe the services (i.e., “legal services”), which
`presumably encompasses all services of the type described, including applicant’s more narrow services
`(i.e., “personal injury legal services”). See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15
`(TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s
`and registrant’s services are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629
`(TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ
`986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball
`Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
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`Additionally, the services of the parties have no restrictions as to nature, type, channels of trade, or
`classes of purchasers and are “presumed to travel in the same channels of trade to the same class of
`purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting
`Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).
`Thus, applicant’s and registrant’s services are related.
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`Moreover, the evidence of record establishes that the respective services—legal services and personal
`injury legal services—are highly related because they frequently emanate from a common source.
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`Thus, upon encountering applicant’s and registrant’s marks, consumers are likely to be confused and
`mistakenly believe that the respective services emanate from a common source.
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`Lastly, applicant notes in its Request for Reconsideration that it “has acquired ownership of the Cited
`Registrations … [and] in the process of finalizing the written memorialization of the foregoing.”
`Applicant’s mere statement that it is the owner of the cited registrations is legally insufficient and does
`not overcome the likelihood of confusion refusal. TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R.
`§§2.193(e)(1), 3.25, 3.73(a)-(b); TMEP §502.02(a). As it currently stands, the applicant and registrant are
`facially different owners.
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`If applicant has already filed an appeal with the Trademark Trial and Appeal Board, the Board will be
`notified to resume the appeal. See TMEP §715.04(a).
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`If applicant has not filed an appeal and time remains in the six-month response period, applicant has
`the remainder of that time to (1) file another request for reconsideration that complies with and/or
`overcomes any outstanding final requirement(s) and/or refusal(s), and/or (2) file a notice of appeal to
`the Board. TMEP §715.03(a)(ii)(B). Filing a request for reconsideration does not stay or extend the time
`for filing an appeal. 37 C.F.R. §2.63(b)(3); see TMEP §715.03(c).
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`/Eric Sable/
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`Trademark Examining Attorney
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`Law Office 117
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`571-272-4653
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`Eric.Sable@uspto.gov
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