Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA534926
`ESTTA Tracking number:
`04/29/2013
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`85375516
`Elements Behavioral Health, Inc.
`THE RANCH
`MARK ANDREW GOLDSTEIN
`SOCAL IP LAW GROUP LLP
`310 N WESTLAKE BLVD STE 120
`WESTLAKE VILLAGE, CA 91362-3788
`UNITED STATES
`uspto@socalip.com
`Appeal Brief
`E026-T11351-appeal-brief-filed-4-29-2013.pdf ( 8 pages )(135910 bytes )
`Mark A. Goldstein
`mgoldstein@socalip.com, trozelle@socalip.com
`/mark goldstein/
`04/29/2013
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`Proceeding
`Applicant
`Applied for Mark
`Correspondence
`Address
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`Submission
`Attachments
`Filer's Name
`Filer's e-mail
`Signature
`Date
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`Appl. No.
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`Mark
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`Applicant
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`Filed
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`First Use
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`Examiner
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`Law Office
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`Docket No.
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`85375516
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`THE RANCH logo
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`Elements Behavioral Health, Inc.
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`7-19-2011
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`12-19-2008
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`Leslie Richard
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`106
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`E026-T11351
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`Appeal Brief
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`The following arguments are submitted further to the Notice of Appeal filed February 27, 2013.
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`A. The Final Rejection
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`The Examiner refused registration of Applicant’s mark citing a likelihood of confusion with a
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`cited mark (see below) in a Final Office Action dated August 30, 2012. In this Appeal Brief we assert
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`that applicant’s mark should not be refused registration as there is no likelihood of confusion with the
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`cited registration.
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`1. Applicant’s Mark
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`Applicant’s mark is
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`Application no. 85375516.
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`Appl. No. 85375516
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`First use: December 19, 2008
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`Applicant’s mark includes THE RANCH in a script font having a graphic element that is
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`evocative of a sun with rays.
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`Applicant’s recited services are “counseling services in the fields of addiction and sobriety;
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`consulting services regarding addiction treatment for patients; consulting services in the field of addiction
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`treatment; drug and alcohol addiction treatment and rehabilitation services; rehabilitation of sexually
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`addicted patients; drug and alcohol rehabilitation services; addiction treatment services; gambling
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`addiction treatment services; rehabilitation of patients experiencing sex addiction and eating disorders,
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`namely bulimia and anorexia; providing a web site featuring information in the field of addiction
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`treatment and sobriety.”
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`2. The Cited Registration
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`The cited registration is
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`T.H.E. RANCH (TEACHING HUMANS WITH EQUINE)
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`Reg. No. 3730745
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`First use: May 01, 2008
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`The listed service is PSYCHOTHERAPY. That is all.
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`B. There is no Likelihood of Confusion between Applicant’s Mark and the Cited Mark
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`The Examiner has rejected the application for THE RANCH logo in view of the cited registration
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`asserting that potential consumers would be confused or mistaken or deceived as to the source of the
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`services of the applicant and registrant of the cited mark. We disagree in view of a combination of the
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`differences in the marks and the different services recited combined with the lack of consumer confusion
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`during the concurrent use of the marks for over four years. The duPont multi-factor likelihood of
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`confusion framework directs the analysis away from a likelihood of confusion.
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`1. The Marks are Sufficiently Dissimilar
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`Review of the similarity of the marks factor directs the analysis to a finding of no confusion when
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`the entirety of the marks and the overall impression of the marks are considered.
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`We assert the proper test is "’whether the marks are sufficiently similar in terms of their
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`commercial impression’ such that persons who encounter the marks would be likely to assume a
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`connection between the parties”. Coach Services, Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368
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`(Fed.Cir. 2012) (citing Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82 U.S.P.Q.2d 1901, 1905
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`(T.T.A.B. 2007)).
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`Applicant’s mark includes “The Ranch” in a script font having a graphic element that is evocative
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`of a sun with rays.
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`The cited mark T.H.E. RANCH (TEACHING HUMANS WITH EQUINE) includes the terms
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`T.H.E. with punctuation and the phrase TEACHING HUMANS WITH EQUINE.
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`The Examiner asserts that “the marks are highly similar in appearance, sound, meaning or
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`connotation, and commercial impression.” We disagree.
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`Simply, T.H.E. RANCH (TEACHING HUMANS WITH EQUINE) looks different from THE
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`RANCH logo. A consumer online or seeing a listing examining the marks side-by-side unquestionably
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`would conclude the two marks are not similar. The missing and differing terms, missing and differing
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`punctuation, and additional (or missing, depending on the consumer’s perspective) graphical elements
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`would lead a consumer to this conclusion. As such, confusion is unlikely.
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`We assert that the overall impressions of the marks differ. First, applicant’s logo does not include
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`TEACHING HUMANS WITH EQUINE. Applicant’s logo does not include the term EQUINE that is in
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`the cited mark. Applicant’s logo makes no mention of anything to do with horses and has no horse
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`images. Applicant’s logo makes no mention of teaching. Further, applicant’s mark does not include the
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`term HUMAN and makes no mention of a similar term or concept.
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`Moreover, where the marks at issue are nearly identical, the Board has found that differences in
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`connotation can outweigh phonetic similarity. See Blue Man Prods. Inc. v. Tarmann, 75 U.S.P.Q.2d
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`1811, 1820-21 (T.T.A.B. 2005) (“We consider these differences in connotations and the commercial
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`impressions of the marks to outweigh the visual and phonetic similarity.) Here, the connotation evoked
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`by inclusion of the terms EQUINE and TEACHING in the cited mark is of education and horses. In
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`contrast, there is nothing in applicant’s mark that would lead a viewer and reader of applicant’s mark to
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`think of education or horses. The inclusion of a sun and rays and no mention of teaching and horses
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`direct a consumer away from thinking applicant’s mark is similar to the cited mark. The cited mark leads
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`a viewer and reader of the cited mark to think of teaching and horses; applicant’s does not.
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`Second, the cited mark does not include a sun and rays graphic. The cited mark includes no sun
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`and no rays in any form while Applicant’s logo has a sun and rays graphic at its center.
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`Third, “T.H.E.” has a strikingly different look than “THE”. The periods between the T, H and E
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`in the cited mark have a different impact upon a viewer. Simply, “T.H.E.” looks different from “THE”.
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`Fourth, the impact of the “T.H.E.” portion of the cited mark is informed by the use of the phrase
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`TEACHING HUMANS WITH EQUINE included in the mark. As such, the “T.H.E.” in the cited mark
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`has a different meaning when compared with applicant’s THE. “T.H.E.” in the cited mark makes a
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`viewer think of horses and equine when the entirety of the mark is considered. The impact of the phrase
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`TEACHING HUMANS WITH EQUINE cannot be ignored. This phrase breathes meaning into the
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`“T.H.E.” portion of the cited mark that applicant’s mark does not have.
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`The sight, sound and meaning of the entirety of the marks must all be considered. When
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`considering the meaning of the marks, the marks differ. When considering the overall connotation of the
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`mark, applicant’s mark is a sun mark and the cited mark is a horse mark or a teaching mark. The term
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`“ranch” gets lost in the other words in the cited mark. For these reasons, applicant’s mark is not similar to
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`the cited mark.
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`As set forth in this section, there is limited similarity between the marks when the entirety of the
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`marks is considered in view of the sight, sound and meaning of the marks as well as the connotation of
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`the marks.
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`Even though the Examiner directs us to a rule that consumers are inclined to focus on the first
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`potion of a mark, when evaluating two marks, the rule that the entirety of the marks must be considered
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`controls as well as the rule that the connotation of the marks must be considered is more applicable.
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`Even though the Examiner directs us to a rule that a purchaser is more likely to recall the word
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`portion of a mark that includes both words and design elements, when evaluating two marks, the rule that
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`the entirety of the marks must be considered should take precedence.
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`We ask that the Board consider the entirety of the cited mark when evaluating applicant’s mark.
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`When viewing the entirety of the marks, the marks differ.
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`For all of the above reasons, this factor leans toward a finding of no likelihood of confusion.
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`2. The Services Differ
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`Applicant’s description of services recites detailed kinds of counseling services for multiple kinds
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`of addiction and sobriety as well as “providing a web site featuring information in the field of addiction
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`treatment and sobriety.”
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`The cited registration lists only PSYCHOTHERAPY for its services.
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`In the prosecution of the pending application, we asserted that the commonly understood
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`definition and understanding of PSYCHOTHERAPY fails to mention general addiction treatment and as
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`well as the more specific sobriety, eating disorders, gambling addiction and sex addiction. We cited to
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`the leading online encyclopedia Wikipedia and the Mayo Clinic online to make this point.
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`In the common use of the term psychotherapy by the public at large, we assert the general help
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`one seeks from a psychotherapist is a different service offering than specific help for a specific condition.
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`This is supported by the definitions cited in prosecution of this application.
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`We assert that because the services recited by Applicant involve substance abuse and addiction
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`treatment, it is not likely that a consumer looking for a general practice psychotherapist would seek out or
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`be confused into locating a specialist on bulimia or alcoholism.
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`That the Examiner asserts Applicant provides equine therapy is not pertinent to the analysis
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`herein as Applicant is seeking registration for the services listed, which do not include equine therapy.
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`See Octocom Systems, Inc. v. Houston Computer Services Inc., 918 F.2d 937, 942, 16 U.S.P.Q.2d 1783
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`(Fed. Cir. 1990) ("The authority is legion that the question of registrability of an applicant's mark must be
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`decided on the basis of the identification of goods set forth in the application regardless of what the record
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`may reveal as to the particular nature of an applicant's goods, the particular channels of trade or the class
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`of purchasers to which the sales of goods are directed.").
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`The Examiner provides example registrations to assert that providers of psychotherapy often
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`provide treatment for addictions. However, this limited review of registrations is not influential to the
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`analysis here as it does not paint a full picture of pertinent registrations. A search for registrations of
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`providers of various addiction services such as alcoholism yields marks that do not reference
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`psychotherapy. See registration nos. 4312793 (“addiction treatment services” with no mention of
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`psychotherapy), 4315908 (“books and publications for addiction recovery without mention of
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`psychotherapy), 4317049 (alcohol and drug treatment center without mention of psychotherapy), 4317051
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`(alcohol and drug treatment center without mention of psychotherapy), 4321713 (“addiction treatment
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`services” with no mention of psychotherapy), 4301397 (“addiction treatment and rehabilitation services
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`for alcohol and drug addicted patients” with no mention of psychotherapy), 4301396 (“addiction
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`treatment and rehabilitation services for alcohol and drug addicted patients” with no mention of
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`psychotherapy), 4320883 (“drug and alcohol addiction treatment services” with no mention of
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`psychotherapy), 4291713 (books and workbooks in the field of self improvement for drug and alcohol
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`addictions without mention of psychotherapy), 4291709 (books and workbooks in the field of self
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`improvement for drug and alcohol addictions without mention of psychotherapy), 4236953 (“addiction
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`treatment services” with no mention of psychotherapy), 4253588 (“addiction treatment services” with no
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`mention of psychotherapy), 4155724 (rehabilitation of drug and alcohol addicted patients with no mention
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`of psychotherapy), 4141796 (“addiction treatment services” with no mention of psychotherapy), 4144408
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`(“addiction treatment services” with no mention of psychotherapy), 4123886 (“addiction treatment
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`services” with no mention of psychotherapy), 4062504 (“addiction treatment services” with no mention of
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`psychotherapy), 3970552 (“alcohol and drug addiction treatment services” with no mention of
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`psychotherapy), and many more.
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`In view of the typical definition and understanding of psychotherapy a being an all-encompassing
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`generalist treatment offering, the specialized, directed narrow services recited in applicant’s mark differ
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`from the generalized services recited in the cited registration. As such, it is unlikely that a patient or
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`consumer seeking general psychotherapy services would search for a specialist on bulimia or alcoholism,
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`just as it is unlikely that a patient or consumer seeking a specialist on bulimia or alcoholism would search
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`for a practitioner offering general psychotherapy services.
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`Because the services recited for applicant’s mark and the cited registration not similar, this factor
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`leans toward a finding of no likelihood of confusion
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`3. The Marks Have Co-existed in Commerce for over Four Years
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`Based on the use in commerce dates of the cited registration and the pending application, the
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`marks have coexisted for more than four years. During this time, Applicant has neither received
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`notification of confusion from consumers nor received notification of confusion from the registrant of the
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`cited registration.
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`C. Conclusion
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`Balancing the pertinent duPont factors leads to a conclusion that confusion is unlikely between
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`Applicant’s mark used with the recited services and the cited mark. Taking into consideration the
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`differences in the services and the differences in the marks yields the conclusion that there is no
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`likelihood of consumer confusion between applicant’s mark and the cited mark. This is made more
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`apparent by the lack of confusion in concurrent use of the marks during the past four years. As such, we
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`request that the current refusal of this application be reversed and that the application be allowed to
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`continue to publication for opposition.
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`Respectfully submitted,
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`Date: April 29, 2013
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`Mark A. Goldstein
`Reg. No. 50,759
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`SoCal IP Law Group LLP
`310 N. Westlake Blvd., Suite 120
`Westlake Village, CA 91362
`805/230-1350 x240
`uspto@socalip.com
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