Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1122466
`
`Filing date:
`
`03/24/2021
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`Applicant
`
`88767550
`
`Patzik, Frank & Samotny Ltd.
`
`Applied for Mark
`
`STRAIGHT TALK EFFECTIVE SOLUTIONS
`
`Correspondence
`Address
`
`Submission
`
`Attachments
`
`JORDAN HERZOG
`PATZIK, FRANK & SAMOTNY LTD.
`200 S. WACKER DRIVE, SUITE 2700
`CHICAGO, IL 60606
`UNITED STATES
`Primary Email: ipdocket@pfs-law.com
`312-551-8300
`
`Appeal Brief
`
`1000-1054 Appeal Brief.pdf(128074 bytes )
`Exhibit 1 Straight Talk Straight From the Heart.pdf(784757 bytes )
`Exhibit 2 Straight Talk No Chaser.pdf(182629 bytes )
`Exhibit 3 Straight Talk. Sound Advicve.pdf(448775 bytes )
`Exhibit 4 Straight Talk. Experience.pdf(527019 bytes )
`Exhibit 5 Straight Talk and Strong Advocacy.pdf(1218691 bytes )
`Exhibit 6 Straight Talk for Difficult Situations.pdf(105071 bytes )
`Exhibit 7 Straight Talk.pdf(787534 bytes )
`Exhibit 8 Straight Talk.pdf(2243455 bytes )
`Exhibit 9 Straight Talk Sound Counsel Practical Solutions_.pdf(389733 bytes )
`Exhibit 10 Straight Talk Honest Answers 24 7.pdf(162760 bytes )
`Exhibit 11 Straight Talk.pdf(1212474 bytes )
`Exhibit 12 Straight Talk Practical Solutions_.pdf(441667 bytes )
`Exhibit 13 Sound Counsel. Straight Talk.pdf(820306 bytes )
`Exhibit 14 Fast Action and Straight Talk From Professionals.pdf(255025 bytes )
`Exhibit 15 Results Driven Straight Talk.pdf(898028 bytes )
`
`Appealed class
`
`Class 045. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are appealed, namely: Legal services
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Jordan Herzog
`
`ipdocket@pfs-law.com
`
`/Jordan Herzog/
`
`03/24/2021
`
`

`

`APPEAL TO THE TRADEMARK
`TRIAL AND APPEAL BOARD
`
`In The United States Patent and Trademark Office
`Before the Trademark Trial and Appeal Board
`
`IN REAPPLICATION OF:
`ATTORNEY DOCKET NO.:
`SER. NO.:
`FILING DATE:
`MARK:
`
`Patzik, Frank & Samotny Ltd.
`1000-1054
`88/767,550
`January 21, 2020
`STRAIGHT TALK EFFECTIVE SOLUTIONS
`
`Trademark Trial and Appeal Board
`P. 0. Box 1451
`Alexandria, VA 22313-1451
`
`APPLICANT’S APPEAL BRIEF
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`The Appellant, Patzik Frank & Samotny, Ltd., respectfully appeals the final refusal to
`
`register the mark STRAIGHT TALK EFFECTIVE SOLUTIONS in association with legal services.
`
`Registration has been refused on the basis of a purported likelihood of confusion with U.S. Reg. No.
`
`2861151 on STRAIGHT TALK IS GOOD FOR BUSINESS in association with legal services (the
`
`“cited registration”).
`
`As demonstrated below, the Examining Attorney has: (1) failed to give adequate
`
`consideration to compelling evidence demonstrating that the STRAIGHT TALK component of each
`
`mark is in widespread use in association with legal services, and is hence a weak formative; and (2)
`
`improperly focused on an impermissible factor, namely a specimen of use submitted during the
`
`application resulting in the cited registration, in determining that STRAIGHT TALK is the dominant
`
`portion of the cited registration.
`
`
`
`

`

`
`
`I.
`
`THERE IS NO LIKELIHOOD OF CONFUSION BETWEEN
`APPELLANT’S MARK AND THE MARK IN THE CITED REGISTRATION.
`
`
`Under In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (CCPA 1973),
`
`a likelihood of confusion for purposes of Section 2(d) exists only when the purchasing public
`
`would be confused, mistaken, or materially deceived with regard to Appellant’s mark. In the
`
`present case, and as set forth in more detail below, because of the differences in the marks and the
`
`weakness of the cited mark, confusion in the marketplace is unlikely.
`
`A. “STRAIGHT TALK” is in Widespread Third-Party Trademark Use.
`
`In Appellant’s Office Action response of August 26, 2020, Appellant demonstrated that
`
`the “STRAIGHT TALK” formative, which forms the only common portion of both Appellant’s
`
`mark and the cited registration, is in widespread use as a component for trademarks associated
`
`with legal services. Accordingly, consumers of legal services, accustomed to encountering
`
`“STRAIGHT TALK” as a component of trademarks for legal services, are able to readily
`
`distinguish among those trademarks even where, unlike here, the overall differences between the
`
`trademarks are small.
`
`In particular, Appellant’s August 26, 2020 response included evidence in the form of the
`
`following fifteen (15) examples of the widespread third-party use of STRAIGHT TALK-formative
`
`trademarks in association with legal services. Each of Exhibits 1-15 identified in the table below
`
`and previously submitted in Appellant’s August 27, 2020 response as Exhibits 1-15 thereto was
`
`captured on August 25, 2020:
`
`
`
`
`
`
`
`2
`
`

`

`
`Exhibit
`No.
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`
`
`Trademark
`
`STRAIGHT TALK,
`STRAIGHT FROM THE
`HEART
`STRAIGHT TALK-NO
`CHASER
`
`STRAIGHT TALK. SOUND
`ADVICE. PERSONAL
`ATTENTION
`STRAIGHT TALK.
`EXPERIENCE. RESULTS.
`
`Legal Services
`Provider
`Dittrich Law Firm,
`P.A.
`
`URL
`
`https://www.dittrichlawoffice.c
`om/contact/
`
`Law Offices of
`Elizabeth A.
`Douglas PLCC
`Rouner Law
`Office LLC
`
`https://edouglaslaw.com/edougl
`as/family-law-straight-talk-art/
`
`http://rounerlawoffice.com/
`
`
`LePley Law Firm
`
`STRAIGHT TALK AND
`STRONG ADVOCACY.
`STRAIGHT TALK FOR
`DIFFICULT SITUATIONS
`
`Greenwood Law
`
`Jaspers, Moriarty
`& Wetherille, P.A.
`
`STRAIGHT TALK. SOUND
`ADVICE.
`STRAIGHT TALK.
`PRACTICAL SOLUTIONS.
`
`STRAIGHT TALK, SOUND
`COUNSEL, PRACTICAL
`SOLUTIONS.
`STRAIGHT TALK,
`HONEST ANSWERS. 24/7
`
`STRAIGHT TALK. NO
`BULL.
`STRAIGHT TALK,
`PRACTICAL SOLUTIONS.
`
`SOUND COUNSEL.
`STRAIGHT TALK.
`SENSIBLE SOLUTIONS.
`
`Law Offices of
`Randy L. Smith
`Allen &
`Baughman
`Attorneys at Law
`Fabrizio Law
`Offices
`
`Springer & Lyle,
`LLP
`
`Bailey, Johnson &
`Peck,PC
`
`https://www.lepleylawfirm.com
`/
`
`https://www.dwg-law.com/
`
`https://www.jmwlaw.com/famil
`y/
`
`https://www.randysmithlaw.co
`m/
`https://ab-lawoffices.com/
`
`https://www.fabriziolaw.com/c
`ontact%20us.html
`
`https://springer-
`lyle.com/practice-
`areas/business-litigation/
`https://www.baileyjohnson.com
`/albany-personal-injury-law-
`office/
`
`http://www.mcvanlaw.com/abo
`utus.html
`
`https://mikedemerslaw.com/
`
`Law Offices of
`Eugene G. Bruno,
`PC
`Solheim Law Firm https://www.solheimlaw.com/
`
`https://www.caraccidentlawyer-
`sandiego.com/
`
`FAST ACTION AND
`STRAIGHT TALK FROM
`PROFESSIONALS
`RESULTS DRIVEN.
`STRAIGHT TALK.
`
`McVan &
`Weidenburner
`
`Mike J. Demers,
`PLLC
`
`3
`
`

`

`In particular, as set forth in the TMEP, “[i]f the evidence establishes that the consuming
`
`public is exposed to third-party use of similar marks on similar goods, this evidence ‘is relevant to
`
`show that a mark is relatively weak and entitled to only a narrow scope of protection.” TMEP
`
`Section 1207.01(d)(iii) citing Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
`
`en 1772, 396 F.3d 1369, 1373, 73 U.S.P.Q.2d 1689, 1693 (Fed. Cir. 2005). In other words, the
`
`phrase STRAIGHT TALK is fairly dilute in the field of Appellant’s services, such that the relevant
`
`purchasers are able to distinguish among those marks based upon small distinctions in the marks.
`
`See, e.g., In re Angel Computer Network Services, Inc., Serial No. 77438719 (TTAB January 25,
`
`2013) [not precedential].
`
`Here, the evidence clearly establishes that STRAIGHT TALK, the only similarity between
`
`Appellant’s mark and the cited registration, is quite weak in the legal services field. As such,
`
`consumers of legal services will readily draw a distinction between Appellant’s mark and the cited
`
`registration, and will naturally presume that they are associated with different sources.
`
`In the final Office Action of September 17, 2020, the Examining Attorney failed to give
`
`any consideration whatsoever, let alone adequate consideration, to this evidence of widespread
`
`third party usage of STRAIGHT TALK in association with identical services to those of Appellant
`
`and the cited registration. Instead, the Examining Attorney focused solely upon the cited
`
`registration, stating on page 3: “However, the cited registered mark is the only mark on the Register
`
`that contains the wording “STRAIGHT TALK” and relates to legal services.” By impermissibly
`
`focusing solely upon registered marks, and ignoring evidence of unregistered third party use,
`
`Examining Attorney failed to properly consider and address the weakness of the “STRAIGHT
`
`TALK” formative, and to recognize that relevant consumers would thus readily distinguish
`
`
`
`4
`
`

`

`between Appellant’s mark and the cited mark, precluding any finding of a likelihood of confusion
`
`between the two. On this basis alone, the present refusal of registration should be reversed.
`
`B. The Differences in Appearance, Pronunciation and
`Commercial Impression of the Marks are Such That
`Confusion in the Marketplace is unlikely.
`
`Appellant submits that, particularly in view of the demonstrated weakness of the
`
`STRAIGHT TALK formative, when the respective marks’ appearance, pronunciation, and
`
`commercial impression are properly considered, there is no likelihood of confusion between
`
`Appellant’s mark and the cited mark. See e.g., TMEP Section 1207.01(b)(iii).
`
`Appellant’s mark is STRAIGHT TALK EFFECTIVE SOLUTIONS, and the cited mark is
`
`STRAIGHT TALK IS GOOD FOR BUSINESS. Apart from the previously demonstrated weak
`
`formative STRAIGHT TALK, there are no similarities whatsoever between Appellant’s mark and
`
`the cited registration.
`
`More importantly, there are marked differences in commercial impression between the
`
`respective trademarks. The cited mark, STRAIGHT TALK IS GOOD FOR BUSINESS, is in the
`
`form of a single, unitary sentence, with a plain meaning – that hearing receiving or giving straight
`
`talk is good for business. Appellant’s mark, however, are two disjoint phrases. Appellant’s mark
`
`is also incongruous, in that each of its two, disjoint phrases are unrelated to each other in concept
`
`– there is nothing conceptually tying together “STRAIGHT TALK” and “EFFECTIVE
`
`SOLUTIONS”.
`
`As a result of these differences in the appearance, pronunciation, and commercial
`
`impression of the respective marks, Appellant respectively submits that no likelihood of confusion
`
`is presented.
`
`
`
`5
`
`

`

`In the final Office Action of September 17, 2020, the Examining Attorney used improper
`
`evidence in finding STRAIGHT TALK to be the dominant portion of the registered mark, which
`
`is registered in standard character format. In particular, the Examiner made reference to the
`
`particular font used by the registrant of the cited mark in a previously submitted specimen of use,
`
`stating on page 3: “[T]he submitted specimen in the registered mark demonstrates that the wording
`
`“STRAIGHT TALK” is in larger font than the wording “IS GOOD BUSINESS”. Therefore, the
`
`wording “IS GOOD BUSINESS” would be given less significance.” Appellant submits that the
`
`Examining Attorney’s reference to font sizing in a particular instance of use of the mark by the
`
`registrant of the cited mark is improper, and that the content of the registrant’s specimen of use is
`
`entitled to no evidentiary weight. Properly considered, Appellant respectively submits that there
`
`is no basis for finding that the STRAIGHT TALK is the dominant portion of both marks and, for
`
`the reasons stated above, the respective marks, properly considered as a whole, are not similar in
`
`appearance, pronunciation, or commercial impression.
`
`
`
`II.
`
`CONCLUSION
`
`
`In light of the foregoing, and based upon the evidence of record, Appellant respectfully
`
`submits that there is no likelihood of confusion between Appellant’s mark and the cited
`
`registration. As a result, the present refusal to register should be reversed, and Appellant’s mark
`
`should be allowed to proceed to registration.
`
`Respectively submitted,
`
`/Jordan Herzog/
`Jordan Herzog
`Attorney of record, Illinois bar member
`March 23, 2021
`
`
`
`
`6
`
`

`

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`Allen & Baughman, Attorneys at Law, is a Generai Practice law firm
`formed in 2001 in Zanesville, OH, by father and daughter attorneys,
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`Fabrizm Law Offices has been
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`Serving client-3 since 1935 has
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`Fabrhia Law (”flees
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`84 Court Street Suite 201 Binghamton, New
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`ALBANY PERSONAL INJURY LAW OFFICE
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`McVan & “'eidenbumer, formerly the Law Office of Brian P. McVan, LLC, is a full-service general practice
`law firm focused on getting the best possible results for its clients. At McVan 8: “-‘eidenburner, we work
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`For the most honest and professional legal services around, contact the attorneys and staff at McVan &
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