To:
`
`Subject:
`
`Sent:
`Sent As:
`
`Russell, Richard M.(capecodlaw@aol.com)
`U.S. Trademark Application Serial No. 90432695 - WE'RE HERE TO HELP
`WITH YOUR LEGAL NEEDS!
`May 10, 2023 09:10:26 AM EDT
`tmng.notices@uspto.gov
`
`Attachments
`
`screencapture-vanderpoollaw-net-practice-areas-16825370476901(1)
`screencapture-flrlegal-com-practice-areas-16825370842091(1)
`screencapture-www-ruggedlaw-com-business-law-16825371161941(1)
`screencapture-www-ashmorelaw-com-reports-16825371526331(1)
`screencapture-www-shultzlawoffices-com-16825372098851(1)
`screencapture-cornerstonelaw-us-about-16825372226941(1)
`
`United States Patent and Trademark Office (USPTO)
`Office Action (Official Letter) About Applicant’s Trademark Application
`
`U.S. Application Serial No.  90432695
`
`Mark:   WE'RE HERE TO HELP WITH YOUR LEGAL NEEDS!
`
`Correspondence Address:  
`Russell, Richard M.
`156 Comanche Drive
`Falmouth MA 02540 UNITED STATES
`
`Applicant:   Russell, Richard M.
`
`Reference/Docket No.  N/A
`
`Correspondence Email Address:   capecodlaw@aol.com
`
`
`
`
`
`
`SUBSEQUENT FINAL OFFICE ACTION
`
`Issue date:   May 10, 2023
`
`
`This subsequently issued Subsequent Final Office Action has been made due to the May 5, 2023
`Subsequent Final Office Action inadvertently including an advisory regarding how to respond which
`was inaccurate.  This newly issue Subsequent Final Office Action appropriately explains that the case
`will be remanded to the Trademark Trial and Appeal Board. 
`
`INTRODUCTION
`
`This Office action is in response to applicant’s communication filed on April 18, 2023.
`
`

`

`
`In a previous Office action(s) dated October 19, 2022, the trademark examining attorney refused
`registration of the applied-for mark based on the following:
`
`
`•
`•
`•
`
`REFUSAL - APPLIED-FOR WORDING FAILS TO FUNCTION AS A MARK
`REFUSAL IN THE ALTERNATIVE - APPLIED-FOR MARK IS MERELY DESCRIPTIVE
`REFUSAL - SECTION 2(d) - LIKELIHOOD OF CONFUSION
`
`
`
`Further, the trademark examining attorney maintains and now makes FINAL the refusal(s) and/or
`requirement(s) in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
`
`SUMMARY OF ISSUES MADE FINAL that applicant must address:
`•
`REFUSAL - APPLIED-FOR WORDING FAILS TO FUNCTION AS A MARK
`REFUSAL IN THE ALTERNATIVE - APPLIED-FOR MARK IS MERELY DESCRIPTIVE
`•
`REFUSAL - SECTION 2(d) - LIKELIHOOD OF CONFUSION
`•
`
`
`REFUSAL - APPLIED-FOR WORDING FAILS TO FUNCTION AS A MARK
`
`For the reasons set forth below, the refusal is now made FINAL under Trademark Act Sections 1, 2,
`and 45 for failure to function as a trademark. See 15 U.S.C. §§1051, 1052, 1127; 37 C.F.R.
`§2.63(b).   Registration is refused because the applied-for mark is a slogan or term that does not
`function as a trademark or service mark to indicate the source of applicant’s goods and/or services and
`to identify and distinguish them from others.  Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C.
`§§1051-1053, 1127.  In this case, the applied-for mark is a commonplace term, message, or expression
`widely used by a variety of sources that merely conveys an ordinary, familiar, well-recognized concept
`or sentiment.  See In re Wal-Mart Stores, Inc., 129 USPQ2d 1148, 1160 (TTAB 2019) (holding
`INVESTING IN AMERICAN JOBS not registrable for retail store services or promoting public
`awareness of goods made or assembled by American workers because the mark would be perceived
`merely as a commonly-used informational message); In re Volvo Cars of N. Am., Inc., 46 USPQ2d
`1455, 1460-61 (TTAB 1998) (holding DRIVE SAFELY not registrable for automobiles and automobile
`parts because the mark would be perceived merely as an “everyday, commonplace safety 
`admonition”). 
`
`Terms and expressions that merely convey an informational message are not registrable.  In re
`DePorter, 129 USPQ2d 1298, 1299 (TTAB 2019) (citing In re Eagle Crest, Inc., 96 USPQ2d 1227,
`1229 (TTAB 2010)).  Determining whether the term or expression functions as a trademark or service
`mark depends on how it would be perceived by the relevant public.  In re Vox Populi Registry Ltd., 25
`F.4th 1348, 1351, 2022 USPQ2d 115, at *2 (Fed. Cir. 2022) (citing In re AC Webconnecting Holding
`B.V., 2020 USPQ2d 11048, at *3 (TTAB 2020)); TMEP §1202.04.  When there are no limitations on
`the goods or services in the application, the relevant public comprises all potential purchasers of the
`goods or services.  In re Team Jesus LLC, 2020 USPQ2d 11489, at *3 (TTAB 2020) (citing In re
`Yarnell Ice Cream, LLC, 2019 USPQ2d 265039, at *5 (TTAB 2019)); see TMEP §1202.04.  “The more
`commonly a term or expression is used, the less likely that the public will use it to identify only one
`source and the less likely that it will be recognized by purchasers as a trademark [or service mark].”  In
`re Ocean Tech., Inc., 2019 USPQ2d 450686, at *3 (TTAB 2019) (citing In re Hulting, 107 USPQ2d
`1175, 1177 (TTAB 2013)); TMEP §1202.04(b).
`
`The previously attached evidence from BakerBurtonLundy.com, Facebook.com, SerenaLaw.com,
`
`

`

`PattonAndPittman.com, and FZRLaw.com and the newly attached evidence from VanderPoolLaw.net,
`FLRLegal.com,
`RuggedLaw.com,
`AshmoreLaw.com,
`SchultzLawOffices.com,
`and 
`CornerstoneLaw.us shows that this term or expression is commonly used to refer to  a marketing
`message implying that the source of the message is available to assist and conveys a common evocation
`of the concept that a lawyer is there to help with legal needs. Because consumers are accustomed to
`seeing this term or expression commonly used in everyday speech by many different sources, they
`would not perceive it as a mark identifying the source of applicant’s goods and/or services but rather as
`only conveying an informational message.
`
`An applicant may not overcome this refusal by amending the application to seek registration on the
`Supplemental Register or asserting a claim of acquired distinctiveness under Section 2(f).  In re Ocean
`Tech., Inc., 2019 USPQ2d 450686, at *8; TMEP §1202.04(d); see In re TracFone Wireless, Inc., 2019
`USPQ2d 222983, at *4 (TTAB 2019).  Nor will submitting a substitute specimen overcome this 
`refusal.  In re Team Jesus LLC, 2020 USPQ2d 11489, at *5-6 (TTAB 2020) (quoting D.C. One
`Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1716 (TTAB 2016)); TMEP §1202.04(d).
`
`In the Applicant's April 18, 2023 Response, the applicant argues that the use of wording "WE'RE
`HERE TO HELP WITH YOUR LEGAL NEEDS!" is not punctuated exactly as it appears in the
`evidence.  However, as shown by the newly attached evidence, the same sentiment is generally
`expressed, being that the commercial impression itself fails to function, not merely the exact manner
`with which that commercial impression is expressed.  
`
`Furthermore, the applicant misinterprets the evidence, but rather seems to reinforce the point of the
`evidence, that the use of the wording is typically a non-source identifying usage.  Generally, the
`sentiment expressed is to indicate to consumers that the provider of legal services is present in order to
`assist with their legal needs.  The fact that the wording is often a buried afterthought is exactly the point
`being made, that it fails to function as source identifying because it is a rather common place slogan to
`use when advertising legal services. 
`
`As such, the refusal is continued, maintained and now made FINAL. 
`
`The applicant should also take note of the additional ground for refusal made  FINAL  below. 
`
`REFUSAL IN THE ALTERNATIVE - APPLIED-FOR MARK IS MERELY DESCRIPTIVE
`
`Furthermore, in the alternative, if the applied-for wording is determined to be capable of functioning as
`mark, the following refusal applies.  Additionally, t he refusal under Trademark Act Section 2(e)(1) is
`now made FINAL for the reasons set forth below. See 15 U.S.C. §1052(e)(1); 37 C.F.R. §2.63(b).
`
`Registration is refused because the applied-for mark merely describes a feature, ingredient,
`characteristic, purpose, function, intended audience of applicant’s services.  Trademark Act Section
`2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.  
`
`Here, the mark is descriptive of a purpose of applicant's legal services. That is, the previously attached
`evidence from Legal Building block shows that legal services involve lawyers doing work for clients.
`Additional previously provided evidence from Thompson Reuters shows that meeting a client's legal
`needs is part of the work lawyers do. The evidence discussed above regarding the failure to function
`refusal also shows that consumers immediately understand the wording WE'RE HERE TO HELP
`WITH YOUR LEGAL NEEDS to describe a purpose of applicant's services: that the source of the
`
`

`

`statement is available to assist with a client's law-related issues.  Moreover, t he previously attached
`evidence from BakerBurtonLundy.com, Facebook.com, SerenaLaw.com, PattonAndPittman.com, and
`FZRLaw.com and
`the newly attached evidence
`from VanderPoolLaw.net, FLRLegal.com,
`RuggedLaw.com, AshmoreLaw.com, SchultzLawOffices.com, and CornerstoneLaw.us shows  that the
`wording, if not incapable of function, is at least used often descriptively to describe what the provider
`of such legal services does, which is help consumers with their legal needs. This is because consumers
`would understand this wording as indicating to them that the applicant provides assistance with legal
`needs, much like if the applicant were asked the question "What do you do?" and the response would be
`"We're here to help with your legal needs!"  It is a direct description of their services.  
`
`Accordingly, if the applied-for wording is determined to be capable of functioning as mark, registration
`is refused based on Trademark Act Section 2(d) because the applied-for mark is merely descriptive of
`applicant's services.
`
`In the Applicant's April 18, 2023 Response, the applicant argues that not all lawyers seek to help clients
`with their legal needs.  This is unpersuasive, in particular because the applicant does appear to be
`assisting clients with their legal needs, so the fact that some lawyers may not be assisting clients with
`their needs would not be relevant here.  
`
`As such, the refusal is continued, maintained and now made FINAL. 
`
`The applicant should also take note of the additional ground for refusal made  FINAL  below. 
`
`REFUSAL - SECTION 2(d) - LIKELIHOOD OF CONFUSION
`
`For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL
`with
`respect
`to U.S. Registration No. 4790098. See 15 U.S.C. §1052(d); 37 C.F.R.
`§2.63(b).   Registration of the applied-for mark is refused because of a likelihood of confusion with the
`mark in U.S. Registration No. 4790098.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP
`§§1207.01 et seq.  See the attached registration.
`
`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)).
`
`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
`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. 
`
`The applied-for mark is:
`U.S. Application Serial No. 90432695 – “WE'RE HERE TO HELP WITH YOUR LEGAL
`•
`NEEDS!” in standard characters for:
`Class 045:  Legal services
`○
`Applicant:  Russell, Richard M.
`
`○
`
`
`The registered mark is:
`U.S. Registration No. 4790098 – “WE'RE HERE TO HELP” in standard characters for:
`•
`Class 045:  Legal services
`○
`Registrant:  Parnall Law Firm, LLC
`
`○
`
`Similarity of the Marks
`
`
`    1.        
`
`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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921
`(Fed. Cir. 2019); TMEP §1207.01(b).
`
`The registered mark “WE’RE HERE TO HELP” is the only registered mark in Class 045 with
`that wording.  Furthermore, the registered mark “WE’RE HERE TO HELP” is the only
`registered mark for legal services in Class 045 with that wording, indicating the strength of that
`mark.
`
`The marks share an overall similar commercial impression because they share the similar
`phrases “WE’RE HERE TO HELP”.  The applied-for mark has additional wording “WITH
`YOUR LEGAL NEEDS!” in relation to legal services, so that wording is descriptive because
`helping with “LEGAL NEEDS” in relation to legal services describes that the services help
`consumers in the field of law.
`
`The applied-for mark “WE'RE HERE TO HELP WITH YOUR LEGAL NEEDS!” entirely
`incorporates the registered mark “WE’RE HERE TO HELP”.  These two marks are the only two
`marks in Class 045 with the exact wording “WE’RE HERE TO HELP” and also the services are
`identical, meaning that the degree of similarity between the marks required to support a finding
`that confusion is likely declines.  Both marks begin with “WE’RE HERE TO HELP”.  The
`additional wording in the applied for-mark, “WITH YOUR LEGAL NEEDS!”, is also descriptive
`because the applicant is offering legal services.  So, the wording “WITH YOUR LEGAL
`NEEDS!” does not affect or change the commercial impression of “WE’RE HERE TO HELP”
`when compared to the registrant’s mark. 
`
`It is reasonable that a consumer who sees or hears the phrase “WE'RE HERE TO HELP WITH
`YOUR LEGAL NEEDS!” for legal services would likely be confused as to the source of the
`services when compared to seeing or hearing the phrase “WE’RE HERE TO HELP” for legal
`services.  A consumer would believe that both phrases come from the same source, especially for
`
`

`

`when the services are identical.
`
`When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead
`whether the marks are sufficiently similar in terms of their commercial impression such that
`[consumers] who encounter the marks would be likely to assume a connection between the parties.” 
`Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting
`Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir.
`2012)); TMEP §1207.01(b).  The proper focus is on the recollection of the average purchaser, who
`retains a general rather than specific impression of trademarks.  In re Inn at St. John’s, LLC, 126
`USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d
`1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169
`USPQ 39, 40 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019);
`TMEP §1207.01(b).
`
`Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of
`terms or phrases appear in the compared marks and create a similar overall commercial impression. 
`See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB
`1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811
`F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and
`COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985)
`(finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221
`USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP
`§1207.01(b)(ii)-(iii).
`
`Incorporating the entirety of one mark within another 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 Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A.
`1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar);
`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 LANCER and design and BENGAL confusingly similar); In re
`Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR
`confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS
`DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii).  In the present
`case, the marks are identical in part.
`
`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.
`
`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).  Matter that is descriptive of or
`generic for a party’s goods and/or services is typically less significant or less dominant in relation to
`
`

`

`other wording in a mark.  See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816,
`1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946
`(Fed. Cir. 2004)).
`
`The wording “LEGAL” appears in the applicant’s identification of services.  So, the wording “LEGAL
`NEEDS” in the applied-for mark describes that the services are in the field of “LEGAL” services. 
`Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and
`renders the wording “WE’RE HERE TO HELP” the more dominant element of the mark.
`
`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 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”).
`
`Where the services of an applicant and registrant are identical or virtually identical, the degree of
`similarity between the marks required to support a finding that confusion is likely declines.  See Cai v.
`Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re
`Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(b).
`
`
`2.
`
`     Similarity of the Services
`
`
`The goods and/or 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).
`
`The applied-for mark is:
`U.S. Application Serial No. 90432695 – “WE'RE HERE TO HELP WITH YOUR LEGAL
`•
`NEEDS!” for:
`Class 045:  Legal services
`○
`
`
`The registered mark is:
`U.S. Registration No. 4790098 – “WE'RE HERE TO HELP” for:
`•
`Class 045:  Legal services
`○
`
`
`The services are identical.
`
`When analyzing an applicant’s and registrant’s services for similarity and relatedness, that
`determination is based on the description of the services in the application and registration at issue, not
`on extrinsic evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d
`1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers
`Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). 
`
`
`

`

`In Response to Applicant's Arguments
`
`In this case, the services in the application and registration(s) are identical.  Therefore, it is presumed
`that the channels of trade and class(es) of purchasers are the same for these services.  See Cai v.
`Diamond Hong, Inc., 901 F.3d 1367, 1372, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re
`Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)).  Thus, applicant’s and
`registrant’s services are related.  
`
`       3.    
`
`In the applicant's Response on January 2, 2022, the applicant argues the marks are different because
`they have a different number of words.  Although the applied-for mark has additional wording “WITH
`YOUR LEGAL NEEDS”, as explained above, that wording is descriptive of providing legal services
`and also does not change the meaning of the phrase “WE’RE HERE TO HELP” in the applied-for
`mark.  The applicant also argued that the registered mark “WE’RE HERE TO HELP” is generic with
`no reference to what it is referring to.  So, this actually strengthens the argument that the registered
`mark has strong protection because if the registered mark had additional wording that did not refer to
`legal services, then there would be less likelihood of confusion.  For example, if the registered mark
`had the wording “WE’RE HERE TO HELP WITH YOUR COMPUTER TECHNOLOGY NEEDS”,
`then yes, there would be less likelihood of confusion, but because the registered mark does not narrow
`down to what it is referring to, then a consumer is more likely to confuse the source of the services
`when compared to each other.
`
`Lastly, applicant submitted an exhibit with Internet search results. Result summaries from Internet
`search engines have limited evidentiary value.  A search results summary from an Internet search
`engine has limited probative value because such a list does not show the context in which the term or
`phrase is used on the listed web pages and may not include sufficient surrounding text to show the
`context within which the term or phrase is used.  TBMP §1208.03; see In re Bayer AG, 488 F.3d 960,
`967, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007); In re Star Belly Stitcher, Inc., 107 USPQ2d 2059, 2062
`n.3 (TTAB 2013); TMEP §710.01(b).
`
`In the applicant's Response on April 18, 2023, the applicant argues that the amount of words is different
`between the two and do not sound the same when pronounced in the totality.  However, this argument
`misses the point of likelihood of confusion here.   Adding a term or terms 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) (holding BENGAL and
`BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266,
`1269 (TTAB 2009) (holding TITAN and VANTAGE TITAN confusingly similar); In re El Torito
`Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (holding MACHO and MACHO COMBOS
`confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in
`part.   Furthermore, the added wording by the applicant does not change the commercial impression of
`the shared wording, and therefore consumers familiar with the "WE'RE HERE TO HELP" brand for
`legal services will understand "WE'RE HERE TO HELP WITH YOUR LEGAL NEEDS!" as an
`extension of the same commercial impression. 
`
`Furthermore, while the wording "WE'RE HERE TO HELP" and "WE'RE HERE TO HELP WITH
`YOUR LEGAL NEEDS!" appears to be weak, this does not obviate the refusal as the applicant 
`asserts.   The Court of Appeals for the Federal Circuit and the Trademark Trial and Appeal Board have
`recognized that marks deemed “weak” or merely descriptive are still entitled to protection under
`Section 2(d) against the registration by a subsequent user of a similar mark for closely related goods
`
`

`

`and/or services. TMEP §1207.01(b)(ix); see King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d
`1400, 1401, 182 USPQ 108, 109 (C.C.P.A. 1974); In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1246
`(TTAB 2010). Thus, this protection under Section 2(d) extends to marks registered on the
`Supplemental Register. TMEP §1207.01(b)(ix); see, e.g., In re Morinaga Nyugyo Kabushiki Kaisha,
`120 USPQ2d 1738, 1743 (TTAB 2016) (citing Towers v. Advent Software, Inc., 913 F.2d 942, 946, 16
`USPQ2d 1039, 1042 (Fed. Cir. 1990); In re Research & Trademark Corp., 793 F.2d 1276, 1278, 230
`USPQ 49, 49 (Fed. Cir. 1986); In re Clorox Co., 578 F.2d 305, 307-08, 198 USPQ 337, 340 (C.C.P.A.
`1978)).
`
`The applicant also argues that consumers are likely to be sophisticated enough to discern the difference
`between two marks for identical services sharing identical words.   The fact that purchasers are
`sophisticated or knowledgeable in a particular field does not necessarily mean that they are
`sophisticated or knowledgeable in the field of trademarks or immune from source confusion. TMEP
`§1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325,
`110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d
`1163, 1170 (TTAB 2011). Further, where the purchasers consist of both professionals and the public,
`the standard of care for purchasing the goods is that of the least sophisticated potential purchaser. In re
`FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (citing Stone Lion Capital Partners, LP v. Lion
`Capital LLP, 746 F.3d. at 1325, 110 USPQ2d at 1163), aff’d per curiam, 777 F. App’x 516, 2019 BL
`375518 (Fed. Cir. 2019).
`
`Lastly, the applicant argues that video evidence shows that an internet search of the wording "WE'RE
`HERE TO HELP!" shows that consumers merely understand this wording as a commonly understood
`phrase used in connection with legal services.  While this bolsters the failure to function argument, this
`does not obviate the Section 2(d) refusal, as this is an  ex parte  proceeding where the registrant is not
`present to provide evidence of exclusive use.  Such evidence is not persuasive here to establish either
`dilution or weakness of the mark.  
`
`As such, the refusal is continued and maintained. 
`
`Conclusion
`
`The applicant’s mark and the registrant’s mark are similar and the services of the applicant are related
`to the services  of the registrant; therefore, it is likely that consumers would be confused, mistaken, or
`deceived as to the source of the services of the applicant.  As such, the applicant’s mark creates a
`likelihood of confusion with the registrant’s mark, and registration on the Principal Register is refused,
`pursuant to Section 2(d) of the Trademark Act.
`
`
`The registered mark “WE’RE HERE TO HELP” is the only registered mark in Class 045 with that
`wording.  Furthermore, the registered mark “WE’RE HERE TO HELP” is the only registered mark for
`legal services in Class 045 with that wording, indicating the strength of that mark.
`
`
`
`The marks share an overall similar commercial impression because they share the similar phrases
`“WE’RE HERE TO HELP”.  The applied-for mark has additional wording “WITH YOUR LEGAL
`NEEDS!” in relation to legal services, so that wording is descriptive because helping with “LEGAL
`NEEDS” in relation to legal services describes that the services help consumers in the field of law.
`
`

`

`
`
`The applied-for mark “WE'RE HERE TO HELP WITH YOUR LEGAL NEEDS!” entirely
`incorporates the registered mark “WE’RE HERE TO HELP”.  These two marks are the only two marks
`in Class 045 with the exact wording “WE’RE HERE TO HELP” and also the services are identical,
`meaning that the degree of similarity between the marks required to support a finding that confusion is
`likely declines.  Both marks begin with “WE’RE HERE TO HELP”.  The additional wording in the
`applied for-mark, “WITH YOUR LEGAL NEEDS!”, is also descriptive because the applicant is
`offering legal services.  So, the wording “WITH YOUR LEGAL NEEDS!” does not affect or change
`the commercial impression of “WE’RE HERE TO HELP” when compared to the registrant’s mark. 
`
`
`
`It is reasonable that a consumer who sees or hears the phrase “WE'RE HERE TO HELP WITH YOUR
`LEGAL NEEDS!” for legal services would likely be confused as to the source of the services when
`compared to seeing or hearing the phrase “WE’RE HERE TO HELP” for legal services.  A consumer
`would believe that both phrases come from the same source, especially for when the services are
`identical.
`
`
`
`The services are identical.
`
`
`
`Thus, the marks are similar.  Therefore, the Office refuses registration of the applied-for mark Under
`Trademark Act Section 2(d).  This refusal is hereby FINAL.
`
`
`ASSISTANCE
`
`Please call or email the assigned trademark examining attorney with questions about this Office action.
`Although an examining attorney cannot provide legal advice, the examining attorney can provide
`additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP
`§§705.02, 709.06.
`
`The USPTO does not accept emails as responses to Office actions; however, emails can be used for
`informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191;
`TMEP §§304.01-.02, 709.04-.05.
`
`This application will be returned to the Trademark Trial and Appeal Board to resume proceedings in
`the appeal.  TBMP § 1209.02.
`
`

`

`
`
`/Daniel Bice/
`Daniel Bice
`Examining Attorney
`LO128--LAW OFFICE 128
`(571) 272-3385
`Daniel.Bice@USPTO.GOV
`
`
`
`RESPONSE GUIDANCE
`
`•
`
`•
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`•
`
`Missing deadline to responding to this letter will cause the application to abandon.  A
`response, appeal, or extension request must be received by the USPTO before 11:59 p.m.
`Eastern Time of the last day of the response deadline. Trademark Electronic Application System
`(TEAS) and Electronic System for Trademark Trials and Appeals (ESTTA) system availability
`could affect an applicant’s ability to timely respond. For help resolving technical issues with
`TEAS, email TEAS@uspto.gov.
`
`Responses signed by an unauthorized party are not accepted and can cause the application to
`abandon.  If applicant do