PTO Form 1957 (Rev 9/2005)
`
`OMB No. 0651-0050 (Exp. 07/31/2017)
`
`Response to Office Action
`
`Input Field
`
`SERIAL NUMBER
`
`LAW OFFICE ASSIGNED
`
`MARK SECTION
`
`MARK
`
`LITERAL ELEMENT
`
`STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`MARK STATEMENT
`
`EVIDENCE SECTION
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)EVIDENCE FILE NAME(S)
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)ORIGINAL PDF FILE
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)CONVERTED PDF FILE(S)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(11 pages)
`
`DESCRIPTION OF EVIDENCE FILE
`
`NEW ATTORNEY SECTION
`
`NAME
`
`FIRM NAME
`
`STREET
`
`CITY
`
`STATE
`
`The table below presents the data as entered.
`
`Entered
`
`86137328
`
`LAW OFFICE 101
`
`http://tsdr.uspto.gov/img/86137328/large
`
`PLUSUS
`
`YES
`
`YES
`
`The mark consists of standard characters, without claim to any particular font style,
`size or color.
`
`evi_701095314-160649702_._PLUSUS__86137328__-_OA_Response.pdf
`
`\\TICRS\EXPORT16\IMAGEOUT16\861\373\86137328\xml5\ROA0002.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\861\373\86137328\xml5\ROA0003.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\861\373\86137328\xml5\ROA0004.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\861\373\86137328\xml5\ROA0005.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\861\373\86137328\xml5\ROA0006.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\861\373\86137328\xml5\ROA0007.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\861\373\86137328\xml5\ROA0008.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\861\373\86137328\xml5\ROA0009.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\861\373\86137328\xml5\ROA0010.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\861\373\86137328\xml5\ROA0011.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\861\373\86137328\xml5\ROA0012.JPG
`
`Evidence in the nature of arguments in support of registration, namely, the
`applicant's response to the Section 2(d) refusal and attached exhibits in support
`thereof.
`
`Tom Dunlap
`
`DunlapWeaver PLLC
`
`211 Church St., SE
`
`Leesburg
`
`Virginia
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`

`

`ZIP/POSTAL CODE
`
`COUNTRY
`
`PHONE
`
`EMAIL
`
`20175
`
`United States
`
`7037777319
`
`ip@dunlapweaver.com
`
`AUTHORIZED EMAIL COMMUNICATION
`
`Yes
`
`NEW CORRESPONDENCE SECTION
`
`NAME
`
`FIRM NAME
`
`STREET
`
`CITY
`
`STATE
`
`ZIP/POSTAL CODE
`
`COUNTRY
`
`PHONE
`
`EMAIL
`
`Tom Dunlap
`
`DunlapWeaver PLLC
`
`211 Church St., SE
`
`Leesburg
`
`Virginia
`
`20175
`
`United States
`
`7037777319
`
`ip@dunlapweaver.com
`
`AUTHORIZED EMAIL COMMUNICATION
`
`Yes
`
`SIGNATURE SECTION
`
`RESPONSE SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`SIGNATORY'S PHONE NUMBER
`
`DATE SIGNED
`
`AUTHORIZED SIGNATORY
`
`FILING INFORMATION SECTION
`
`SUBMIT DATE
`
`TEAS STAMP
`
`/Seth Willig Chadab/
`
`Seth Willig Chadab
`
`Associate Attorney, DunlapWeaver PLLC, Maryland Bar Member
`
`7037777319
`
`07/29/2014
`
`YES
`
`Tue Jul 29 16:14:30 EDT 2014
`
`USPTO/ROA-XX.XXX.XX.XX-20
`140729161430226822-861373
`28-500d7c12c55ee894b86617
`7c147badb732592406a25dcab
`12e9696baa12f7cedb64-N/A-
`N/A-20140729160649702532
`
`PTO Form 1957 (Rev 9/2005)
`
`OMB No. 0651-0050 (Exp. 07/31/2017)
`
`To the Commissioner for Trademarks:
`
`Response to Office Action
`
`Application serial no. 86137328(cid:160)PLUSUS(Standard Characters, see http://tsdr.uspto.gov/img/86137328/large) has been amended as follows:
`
`EVIDENCE
`
`

`

`Evidence in the nature of Evidence in the nature of arguments in support of registration, namely, the applicant's response to the Section 2(d)
`refusal and attached exhibits in support thereof. has been attached.
`Original PDF file:
`evi_701095314-160649702_._PLUSUS__86137328__-_OA_Response.pdf
`Converted PDF file(s) ( 11 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`Evidence-5
`Evidence-6
`Evidence-7
`Evidence-8
`Evidence-9
`Evidence-10
`Evidence-11
`
`ATTORNEY ADDRESS
`Applicant proposes to amend the following:
`Proposed:
`Tom Dunlap of DunlapWeaver PLLC, having an address of
`211 Church St., SE Leesburg, Virginia 20175
`United States
`ip@dunlapweaver.com
`7037777319
`
`CORRESPONDENCE ADDRESS CHANGE
`Applicant proposes to amend the following:
`Proposed:
`Tom Dunlap of DunlapWeaver PLLC, having an address of
`211 Church St., SE Leesburg, Virginia 20175
`United States
`ip@dunlapweaver.com
`7037777319
`
`SIGNATURE(S)
`Response Signature
`Signature: /Seth Willig Chadab/(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)Date: 07/29/2014
`Signatory's Name: Seth Willig Chadab
`Signatory's Position: Associate Attorney, DunlapWeaver PLLC, Maryland Bar Member
`
`Signatory's Phone Number: 7037777319
`
`The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which
`includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an
`associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not
`currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently
`filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to
`withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or
`Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.
`
`Mailing Address: (cid:160)(cid:160)(cid:160)Tom Dunlap
`(cid:160)(cid:160)(cid:160)DunlapWeaver PLLC
`(cid:160)(cid:160)(cid:160)211 Church St., SE
`(cid:160)(cid:160)(cid:160)Leesburg, Virginia 20175
`
`Serial Number: 86137328
`Internet Transmission Date: Tue Jul 29 16:14:30 EDT 2014
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`

`

`TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20140729161430226
`822-86137328-500d7c12c55ee894b866177c147
`badb732592406a25dcab12e9696baa12f7cedb64
`-N/A-N/A-20140729160649702532
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Serial No.:
`Mark:
`
`86137328
`PLUSUS
`
`Plusus LLC
`Applicant:
`Office Action Date: March 25, 2014
`
`RESPONSE TO March 25, 2014 OFFICE ACTION
`
`This Response is filed in reply to the Office Action e—mailed on March 25, 2014. The Applicant
`respectfully submits the following response. Applicant submits that the above—identified
`trademark application for PLUSUS is in condition for allowance to publication.
`
`Potential Section Zjdf Refusal: Likelihood of Confusion
`
`Applicant submits a preliminary response to the potential section 2(d) refusal; however,
`Applicant reserves all rights to provide a detailed and more descriptive response if Examining
`Attorney Justine D. Parker raises a Section 2(d) refusal in a subsequent Office Action.
`
`Preliminary Response with Reservation ofRights
`
`The USPTO suggests that it will refuse registration of the Applicant’s mark, PLUSUS, “because
`of a likelihood of confusion with the mark in U.S. Registration No. 3880780.” “[T]he question
`of confilsion is related not to the nature of the mark but to its effect ‘when applied to the
`applicant.” In re EI. du Pom‘ de Nemous & Co., 476 F.2d 1357, 1360-61 (C.C.P.A. 1973). The
`United States Court of Customs and Patent Appeals listed thirteen factors to weigh in the
`likelihood of confusion analysis and stated that all of the factors must be considered “when of
`record.” Id. at 1361. The Examining Attorney has indicated that similarity of the marks,
`similarity of the goods and/or services, and similarity of the trade channels of the goods and/or
`services weigh against the Applicant’s mark. However, Applicant respectfully asserts that when
`all factors are weighed, the majority weighs against the existence of a likelihood of confusion.
`
`(I) Similarity of Conflicting Designations
`
`The first factor is the similarity of the conflicting designations, including in their appearance,
`sound, meaning or connotation, and commercial impression. In re E. I du Pont de Nemours &
`C0., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). A similar phrase found in two
`marks is not dispositive of a confusing similarity between the marks when the marks give off
`different commercial expressions. See Kellogg Co. v. Pack ’em Enterprises, Inc, 951 F.2d 330
`(Fed. Cir. 1991). When Applicant’s mark PLUSUS, and Registrant’s mark THE PLUS IS US are
`compared, the appearance is not identical or confusingly similar.
`
`Importantly, courts across the country have long held that the addition of different terms to a
`
`

`

`common element appreciably reduces the likelihood of confusion between two marks. See US
`Trust v. US. States Trust Co., 210 F. Supp. 2d 9, 27-28 (D. Mass 2002) (UNITED STATES
`TRUST COMPANY not confusingly similar to UNITED STATES TRUST COMPANY OF
`BOSTON, both for financial services); Colgate Palmolive Co. v. Carter-Wallace, Inc., 432 F.2d
`1400, 1402, 167 US. P. Q. 529, 530 (C.C.P.A. 1970) (PEAK PERIOD not confusing similar to
`PEAK); Servo Corp. Am. v. Servo-TekProd. C0,, 289 F. 2d 955, 981 129 U.S.P.Q. 352, 353
`(C.C.P.A. 1961) (SERVOSPEED not confusingly similar to SERVO); Sweats Fashions, Inc. v.
`Pannill Knitting Co, 833 F. 2d 1560, 1564, 4 U.S.P.Q. 2d 1793, 1796 (Fed. Cir. 1987)
`(SWEATS not confusing similar to ULTRA SWEATS, both for sportswear); Gen. Mills Inc. v.
`Kellog Co., 824 F. 2d 622, 627, 3 U.S.P.Q. 2d 1442, 1446 (8th Cir. 1987) (OATMEAL RAISIN
`CRISP not confusingly similar to APPLE RASIN CRISP, both for breakfast cereal); Consol.
`Cigar v. RJR Tobacco Co., 491 F.2d 1265, 1267, 181 U.S.P.Q. 44, 45 (C.C.P.A. 1974) (DUTCH
`APPLE for pipe tobacco not confusingly similar to DUTCH MASTERS for cigars).
`
`Here, the USPTO suggests that it will refuse registration of Applicant’s mark, PLUSUS,
`because of an alleged likelihood of confusion with the registered mark THE PLUS IS US.
`
`Applicant’s Word Mark
`
`Cited Registered Mark
`
`PLUSUS
`
`THE PLUS IS US
`
`INTERNATIONAL CLASS 035
`
`INTERNATIONAL CLASS 035
`
`Brand imagery consulting services
`
`INTERNATIONAL CLASS 041
`Educational consulting services, namely,
`developing curriculum for teachers and educators
`
`Business consultation and analysis services for
`others to analyze marketing programs and
`performance of sales personnel and providing
`recommendations and implementations of
`programs to improve marketing programs and
`performance of sales personnel
`
`INTERNATIONAL CLASS 041
`
`Education and training services, namely, web-
`based, asynchronous e—learning courses, individual
`and group coaching, and synchronous online and
`classroom training to improve the performance of
`sales personnel of others and improve marketing
`programs
`
`mark .
`
`It is well established that "likelihood of confusion cannot be predicated on dissection of a
`. the ultimate conclusion rests on consideration of the marks in their entireties." In re
`
`.
`
`National Data Corp, 224 U.S.P.Q. 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(iv). When the
`marks are compared in their entireties, they are significantly different in visual and aural
`impression, in meaning, and in overall commercial impression. Similarities and differences must
`both be considered in the analysis. In re Electrolyte Laboratories Inc., 929 F.2d 645, 647, 16
`USPQ2d 1239, 1240 (Fed. Cir. 1990) (K+ and design for dietary potassium supplement held not
`
`2
`
`

`

`likely to be c-onfused with K+EFF (stylized) for dietary potassium supplement). Visually.
`PLUSUS is easily distinguished from cited Reg. No. 3880780. The cited registered mark
`consists of four Words. whereas the Applicant’s mark consists of only one. Furthermore, the
`Registrant’s mark includes the additional terms “THE” and “US.”
`
`The Applicant’s brand consulting services and curriculum development services for educators
`are very different from the marketing and sales services offered under the cited registration. The
`additional terms of the Registrant’s mark are largely responsible for creating a commercial
`impression that is different from that of the Applicant’s. Similar to Kellogg Ca, despite the
`shared terms, the marks have different commercial impressions. Therefore, the marks do not
`appear confusingly similar for purposes of a likelihood of confusion analysis. For at least these
`reasons, Applicants asserts that the mark PLUSUS is different than the mark THE PLUS IS US.
`Therefore, this factor weighs against finding likelihood of confusion.
`
`(2) Similarity or Dissimilarity and the Nature of the Goods or Services
`
`The second factor is the similarity or dissimilarity and the nature of the goods or services as
`described in an application or registration or in connection with a prior use of the mark. In re E.
`I. duP0m‘ de Nemours & Ca, 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973).
`
`Applicant’s Use
`
`Registrant’s Specimen
`
`Plu/DUEL
`What in In
`011.! Tllm
`Elul Walk
`am -nnmmm
`nainnnl-cm
`
`Plusus is en educntlnnu design
`consultancy We merge the
`expertise at educators and
`designerstn te-imagine the tunue
`VIA EMAIL
`allearning.
`heuuapiususuxg
`VIA MAIL
`SEED Indian Dueen Ln. Suite EEIZ
`Fh1ln:le|nhXa.PA1§l.2B
`VIA YHEINII
`257.437.3753
`Twtttex | Pecehnok | Feedback
`
`Drexel
`
`University
`How might we enculunge students And
`Community memhars ID meESLIIE the Impact
`at green tn-nan tnnastrucune nmlects. and
`create a new model an Iaamlngln the
`DIDcess7
`
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`Haw mlcht we enauuxane stuuentetn tackle
`an-zletrsnnast ntesstna nmhlema using math?
`
`Hypothesis
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`In miancn m pout-stung, planning, mum-
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`zeqanuhllmrint Ihlll nnnuufl.
`
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`
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`
`W11, rfNTEF1
`
`t’JCMPA.m
`
`Tl)-L|l|"-LHBNTJS IS US!
`
`flesulls
`Business Training
`C|||MeNow®
`call Trunking
`Lead Management
`en
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`T
`
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`
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`
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`F
`
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`
`'Saa5' (software as a service) cm-enemas hast tenhnnlnglea that can be usehfl
`mule fur many businesses But mule: alone, cannnt perturm the pb of E skilled
`-mark;-r — and teuhnmegy) Blane cant tblmer positive business results.
`ln om tmsmese - 9 your: me ueople who want Vol us me the met Hnpnrltuil
`Ingredientfur Success AtCaHSntHn:e we as host athlanced technnlugiee but
`'.‘.E re nut a typmal seas urgaruzanon. Were seas Plus... arm
`
`There is no likelihood of confusion because Applicant’s services are different and offered to
`entirely disparate marketplaces. Applicant is providing services for educational organizations.
`including development of curriculum, design of specialized learning environments, and
`providing brand strategies in this field. See Exhibit A. Registrant’s mark is a laudatory slogan
`
`

`

`for their marketing and sales consultancy. Further, Registrant predominately operates under the
`trade name, CALLSOURCE and various other trademarks. Registrant provides call tracking-
`based solutions to determine the efficiency of marketing. See Exhibit B.
`
`The similarities between the Applicant’s and Registrant’s trademarks are insufficient to support a
`finding that the likelihood of confusion is substantial. This factor Weighs strongly against
`finding likelihood of confusion.
`
`(3) Similarity or Dissimilarity ofEstablished Likely to Continue Trade Channels
`
`The third factor is the similarity or dissimilarity of established, likely-to-continue trade charmels.
`In re E. I. du Pont de Nemours & Co, 476 F.2d at 1361, 177 USPQ at 567. This factor heavily
`Weighs against a finding of a likelihood of confusion. Even Where two marks are identical,
`courts and the TTAB routinely hold that there is no likelihood of confusion “if the goods or
`services in question are not related in such a way that they would be encountered by the same
`persons in situations that would create the incorrect assumption that they original from the same
`source.” T.M.E.P. § l207.1(a)(1) (citing Local Trademarks, Inc. V. Handy Boys, Inc., 16
`U.S.P.Q.2d 1156 (T.T.A.B. 1990) (LITTLE PLUMBER for drain opener not confusingly similar
`to LITTLE PLUMBER and Design for advertising services).
`
`The Applicant is a B Corporation that provides for the general public benefit. Its trade channels
`are limited to academic institutions and educators who are seeking a unique prospective on the
`design of educational curriculum and educational spaces. Applicant is Well-known for its public
`benefit and specialized services in this field. See Exhibit C. Registrant, on the other hand,
`allegedly offers its call tracking services to businesses that utilize sales calls for commercial
`marketing. Registrant allegedly markets its services to auto dealerships, home contractors,
`healthcare professionals, media agencies and direct sales and advertisers. See Exhibit D.
`
`The Examining Attorney provided no basis for stating that the similarity of the trade channels of
`the goods is a relevant factor. Further, there is no apparent similarity of these trade channels and
`no overlap is expected based on their dissimilar services. Additionally, there is no evidence
`that Registrant is currently using the mark in connection with its services. In fact, according to
`Website archive sources, THE PLUS IS US page was only used on the Registrant’s Website,
`http://WWW.callsource.com, from August 30, 2010 to March 1, 2011. See Exhibit E.
`Therefore, this factor weighs against the existence of likelihood of confusion and in favor of the
`Applicant.
`
`(4) Conditions Upon Sales Are Made
`
`The fourth factor is the conditions under which and buyers to whom sales are made (i.e. impulse
`v. careful). Id. Consumers interested in Applicant’s services are academic institutions and
`educators that are searching for highly specialized design services for educational services.
`PLUS US is a B Corporation that is seeking to improve the educational experience through a
`design approach. Therefore, consumers will carefully identify PLUS US when searching for the
`Applicant’s services. It is well-settled that the likelihood of confusion is reduced where
`purchasers and potential purchasers of the services at issue are sophisticated. See Electronic
`
`

`

`Design & Sales, Inc. V. Electronic Data Sys. Corp, 954 F.2d 713, 718 (Fed. Cir. 1992) (no
`confusion between identical marks where, inter alia, both parties’ goods and services “are
`usually purchased after careful consideration by persons who are highly knowledgeable about the
`goods or services and their source”); see also T.M.E.P. § 1207.01(d)(vii) (care in purchasing
`tends to minimize likelihood of confusion). Applicant’s customers are likely to exercise a high
`level of care and are not likely to be confused into thinking Registrant’s product originates from,
`or is sponsored by, Applicant or vice versa. This factor weighs heavily against a likelihood of
`confusion between these two marks.
`
`(5) Fame ofthe Prior Mark
`
`The fifth factor is the fame of the prior mark (e. g., sales, advertising, length of use, etc.). Id.
`There is no evidence that the prior mark is famous, in fact there is no evidence that the Registrant
`is even using the trademark to promote its services. This factor weighs against a likelihood of
`confilsion.
`
`(6) Number and Nature ofSimilar Marks in Use on Similar Goods
`
`The sixth factor is the number and nature of similar marks in use in connection with similar
`
`services. Id. In this case, the USPTO has not made any assertions as to the number and nature of
`marks used in connection with consulting and educational service. Therefore, Applicant asserts
`that this factor weighs neither for nor against finding a likelihood of confusion.
`
`(7) Nature and Extent ofAny Actual Confusion
`
`The seventh factor concerns the nature and extent of any actual confusion. Id. No evidence exists
`that any consumer has been confused by the use of these two marks. Further, there no evidence
`can be found online of the Registrant’s use of the mark for the goods claimed. Consequently,
`Applicant asserts that this factor weighs against finding a likelihood of COI1fi1S1OI1.
`
`(8) Length of Time During and Conditions under which There Has Been Concurrent Use
`Without Evidence ofActual Confusion
`
`The eighth factor is the length of time during and conditions under which there has been
`concurrent use without evidence of actual COI1fi1S10I1. Id. Applicant’s mark has been in use since
`March 1, 2010. Registrant’s mark has been in use since May 2009 and was likely discontinued
`in 2011. Therefore, there has been concurrent use of the mark since 2010 without evidence of
`actual confusion. Therefore, this factor weighs in the Applicant’s favor.
`
`(9) Variety of Goods on which a Mark Is or Is Not Used
`
`The ninth factor is the variety of goods on which a mark is or is not used (house mark, “family”
`mark, product mark). In re E. I. du Pont de Nemours & Co, 476 F.2d at 1361, 177 USPQ at 567.
`The Cited Registration is not a part of a family of marks. Consequently, this factor weighs
`against a likelihood of confusion.
`
`

`

`(10) Market Interface Between Applicant and the Owner of a Prior Mark
`
`The tenth factor is the market interface between Applicant and the owner of a valid, prior mark.
`Id. In this case, there has been no interface between the Applicant and the Registrant, and
`therefore this factor is also in the Applicant’s favor.
`
`(11) Extent to which Applicant has a Right to Exclude Others from Use ofits Mark on its
`Goods
`
`The eleventh factor is the extent to which Applicant has a right to exclude others from use of its
`mark on its goods. Id. The Applicant cannot claim rights to exclusive use apart from common
`law usage of the mark since 2010. This factor is also in the Applicant’s favor.
`
`(12) Extent ofPotential Confusion
`
`The twelfth factor is the extent of potential confusion, i.e., whether de minimis or substantial. Id.
`Registrant’s use of the trademark has not appeared on its website since 2011. Since the
`Registrant’s mark is used in a specific industry and has appeared to discontinue use, the potential
`for COI1fi1SlOIl is not likely to extend across the country through all economic classes. Therefore,
`the potential for confusion is de minimis and weighs heavily against a likelihood of COI1fi1Sl0I1.
`
`(13) Whether There Are any Other Established Facts Pmbative of the Effect of Use
`
`The thirteenth factor looks to whether there are any other established facts probative of the effect
`of use. Applicant reserves all rights to provide a detailed and more descriptive response on this
`factor if the USPTO should raise a Section 2(d) refusal in a subsequent Office Action. Applicant
`further asserts that the USPTO has found a mark capable of registration, even in cases where the
`marks are nearly identical and are covered under the same classification.
`
`When determining whether an Applicant’s mark creates a likelihood of confusion, with marks
`covered by cited registrations " [a] showing of mere possibility of confusion is not enough; a
`substantial likelihood that the public will be COI1fi1S6(l must be shown." Omaha Natl. Bank, 633
`F. Supp. at 234, 229 U.S.P.Q. at 52. Applying the factors set forth in DuPont, and absent
`“substantial doubt,” In re Mars, Inc., 741 F. 2d 395, 396 222 U.S.P.Q. 938 (Fed. Cir. 1984),
`registration of Applicant’s mark is appropriate.
`
`Conclusion
`
`For these reasons and others, the majority of these factors weigh against a finding of a likelihood
`of confusion. Applicant respectfully submits that the mark for PLUSUS does not create a
`likelihood of confusion with Registration Number 3880780 for THE PLUS IS US.
`
`

`

`Exhibit A
`
`PliwUi
`
`We are an educational design
`
`What We Do
`
`tlur'l'eam
`
`tlurflork
`
`tlur'l'httughts
`
`Beings!-Burp
`
`Pluaus isan educational design
`consultancy. We merge the
`expertise oi educators and
`designersro re-imagine the liiture
`ollearning.
`
`VIA EMAIL
`}1E]lD_E‘plIlSl.lSDIg
`
`UIAMAIL
`Bsddlridian flue-en Ln. Suite roe
`Pi'tllEdE1p1'tlH.?r\ 39129
`
`VIA PHDIIE
`357.437 3753
`
`Twitter | Fecebnalt | Feedback
`
`consultancy conioosed oi educators
`
`and designers. Together, were
`
`creating more relevant and
`
`compelling learning experiences.
`
`WE DESIGN CURRICULUM
`
`WE DESIGN ENVIHDNMENTS
`
`A curriculum is a designed experience. A well-designed curriculum goes beyond
`meeting standards and preparing students lor assessment it is also human-
`ceritered, collaborative, and innovative. It encourages studerits to guestiori create.
`and initiate. These characteristics are essential in learning how to selt-educate.
`PlusUs has created award-winning curricula that satisfies these criteria tor
`helore, during, and alter school applications.
`
`The learning environment is a designed element that contributes to the
`eliectiveness ol curricula and student perlorrriaiice. Many oi today's educational
`environments are sttucttired around the idea that knowledge is trarislerred
`directly lront teacher to shitlent — an antiquated notion train the industrial period.
`Contemporary learning communities should reilect contemporary pedagogies
`and should allow lot easy modiiication to handle the current taslc
`
`WE DESIGN BI-lAND STRATEGIES
`
`WE EXPERIMENT
`
`it clearly articulated brand is a symbol or an educational organization's
`philosophy and heliels — it broadcasts orie’s message to compatible parents,
`students and stall Plttslis helps educational organizations lind their voice and
`communicate clearly to their audiences through a variety ol digital and analog
`media
`
`its away to better understand new possibilities in education design Plustls
`occasionally elects to sell-lurid ideas, programs, and wotltshops created by our
`team or designers and educators. We implement these ideas atlocal schools,
`museums, and community organizations at no cost to them. What we discover
`
`through diis work goes beyond tueling tuture vrorlt with our clients — it allows us
`to reach communities who may otherwise be unable to attain our services.
`
`

`

`Exhibit B
`
`(ALLSour2c.r..
`
`317-225-5768
`
`0.
`
`togrrn
`
`nenmnng ‘lrahlmg
`
`nevrewarrarrorm
`
`CAI‘.l.TR.ACl<1NG§3l.uTIOH'.§ nssuussrerm wrmrv Moamsurn svsrrrs
`
`all
`
`f
`
`[m g
`
`B‘-efdre Ca llsiouroe was Ca llsouree. It was Re-rrrLl.Ine. In 1991. Rentune Invented an innovative system that allowed
`L05 Angeles -area renlterrs to find hduslng over the phdne. Cailbrs dlaled 739-RB*lT,1h-enlndlcatled the any. the
`number of bertooms. and the amount df rent trlteyvranted td rdav. The system searched the Re-ntl.lne database
`for matches. then played a recorded descnldtldn cf eadh. avaulable praderty. lrmllng the renter to call the property
`manager.
`
`This technology en arbled RentLlne to r.trtMde an elteent and lnexoenswe servlce to he advenllse-rs and. at the
`same time. measurlng how rrranytflrnes ea-ch ad had been played {a precursor to lntennet clicks}.
`
`INTERESTED? FEEL
`FREE TO CONTACT
`US.
`Fllrst Na me: ‘
`
`Whrle most advrerasens were delighted wlth Re.n.tLrne's resu Its. some argued that they old hat reserve any ca lls.
`Notlng th at ln some cases. more th an a thousand renters h ad listened to the disputed ad. DDfl1DEl'l}' eueelzuth-'es
`rea Iaed th at whlle RentL‘rne was tr acllong the efiecweness of ads. most advemsers were not!
`
`Phone Number: '
`
`Coma-any Name: ‘
`
`SUEIMIF
`
`Company execumees decided to ta lce tracking to the next level. Instead of redc-mng how umanycarllers had
`listened to an ad. theyrwa nted to prove how many actually called ln respon se. By pldng a FlentLlne number an
`each ad, then rereutfing calls to the clients phone. they‘ could measure advertlslng response. l|'hIs was the birth
`of the flrst calll traclolng servloe. Callsouroe.
`
`‘If the com oa hy could track RentLlne
`trafl’-:. wlhy not track telenlhone response
`to all ads‘? For the very fir-st trne. -dlrect
`resoonse a-d~.'ert1Isers could accurately
`and dbjerzrsvelyddmpa re the effectiveness
`dfeach farm of marlcetlng they used. cell
`detal retlorts could show date. tame,
`clurattvrr. and reeult1con'nect. busy, no
`la nswer}.
`
`Toll-free traclnng n u m hers a llm-red
`rn.ar.'dnvlIde service and enabled the
`caeture df every caller's telenhone
`number. Name, address. and
`demogranhlc nnfiormatlonu cou ld he
`
`a pp-ended to rnan~,- ah-one numbers.
`
`Ely reddrdlng the calls. Ca|lSDLlr|'CE cdulld held clients evaluate the oerfdrmande dftheir call ha ndlers and lmardrve
`the: lead LQFMNEIS err. By rewewlrrg the recordings. Calllseu rte could remrt haw ma ny calls were legmrrrate
`leads and how well the customer ser-Me reds were handling the calls.
`
`In response to demand from m any lncllustres eutsde the m uln-fam7l~,' l'l4‘.ll.l9"l19 market. Callsdurce expanded into
`medla and puhrl§sh‘=ng, autorrhdlllve. finance. heme lntordvement. hea llhdare. and franchise markets.
`
`If Flennl.lne was a software as a servlde {Ea as}. then Calisdurcre ls Seas Plus wtrrhr the l‘-lluzs belng our dedlrzated
`team of E-EMSDTS. Through call reoordlng and telephone Derforrnance evalu anon‘. CEIISEFUICE l:llenrtll"‘es where
`mssed ODDOl1lll‘ll‘fiES went wrong, and t-rav‘ns dlerrts on he-st Dractlces and lmdrdved lead conver-sllon_
`
`For over 20 years. Calllfiource has been the Ileder in all traclclrrg-based soltmons. We are headuurtered ln
`Westlake ‘ullllage. Cllfdrn‘ and have ardprtmtmately 250 emdldyees. Uslng our min. fulry redundant drcullts ‘n
`Les Angeles and Chlcago. we track mllllons ofads for more than 300,000 oomnanfes across the U.S.. Canada.
`and Australia. We collect and share best Drraclrlces. We evaluate. train. and advtse.
`
`

`

`Exhibit C
`
`flying + kite
`
`I Horne I Featun=s-
`
`I Nr:w5-
`
`I F‘1ac.a:s-
`
`I Fcn:us-
`
`I Curnpaniesl Abuu1Us-
`
`I
`
`Ingenuity needs
`a
`
`innovation & job news
`plusus rewrites educational methods with ‘design
`thinking‘F.‘..»\—.‘r
`
`
`
` EL’ITED”'M'I3E 5
`
`_-ks edLI:ati:rrL rap'x:I.I‘_a,' digitize-s — thiznk unlit-Le charbers,
`i»‘i:rhJa.'l fexfbooks arld ‘"tea:1'Li'.ng" :n:|o:rI.iflzDrs W P]LEL_§ is
`'bricngin,3 ‘workshop-based learning hack to the
`cl-assraozn. 'Tln.e cerfzifkd B coxgration Lnrlites
`edxxators and designers, cleliverjang "l1u:rrma.n-
`centered" edtlcatiunal p:rogra:rn:i:r1g solutions for
`EETIE,
`E112 Frax1kI:':z1. I'nstih.l|:e and. l']:1.e Publk
`‘Vorkshop.
`_
`
`I4‘ ENL-REEEE
`
`REL,“-ED 1-“G5
`BE-J..3r.1 E
`TEF (“fir
`
`.EDEEnE_H=.3mF~
`
`_
`'.I'h.e:'e's a. bi: of resistance to eclLI:ati3:n. r-e:fo:r::t_. ' says
`I:I:IfcI1_n'm:I2r P11j]I—InkDIx\he_ "'l'.he:re's a hat of good
`id-995w I5‘-“t "-h2}"1"3 bfiinfi inj‘¢"”59d fin!“ the 9‘-‘Bid-9
`1-.-ithnut hlly-in front edL:at::Irs."
`1'-‘}usL‘s, xvhjch operates nun‘: of Ctzltixre Vvorks in
`Center City, B.lh".'.‘S clhsnfi in direct 'Eh.e:ir project's devebprnent arid. ezxmplzlys bcal
`ed.uca1‘.Dr:~ as comsultsrtts. I—Io]:o:|::nbe_. -a desigrler [his cofoLn'\.d.er Iake
`is -a
`teacher}, belfives a1:lpcr:ua:1P|:irLa ed1_':aI:i:|r|.ali‘ss1_'2s 't‘\."iI'1'l "design
`changes
`the pen:-cessg.
`
`"I don’t 1L'h.ir|k 1:5,-po_grap1'1*_I: or color is gunning Bo chargge t'he face of ecl1_I:a|:inn," says
`I-Iokornhe. 'Ii:"s about the vuuy a designer thinks and the 1.-ra_' tlmey can ahjecti-vI=.-l-_v
`look at pcroblenns."
`
`So far, pcnajecfs have centered. on e:lL:at”-anal spaces and v:1.:r:r‘xuh.n:ns — "incl kits"
`that enable teachers ‘bu erggage stlscienfi in real-xvurlcl sce:na.rios, .At the Fra.nIk]'n:1
`Ir|sfit'u12, P]I_ts'L7s 1-srclrkecl with Ehe Sc;1; Leadggi .-\c§éernw- tn help stI_flernE
`pcrabot5.1;v-E new-.r uses for New-.' \*.'ork City's pay'p1~u3ne- systezrm. Ph.IsUs V.-«as aka
`hired by the prorzlofiinmal daparhnent of a Nascar Eeasrrm Ibo creata a distributable
`rnath cljrricuhun based on race car engirmeerirxg. 'I'.h.e'g,' are cLIrrerLtl3,' de-rreloping
`the layout for the
`
`ALE part of their B Cnrporatiun idea.blog'g,', Plus'L's also taps info :l:ien'i:—fI.n'Ider:l
`prujecfi to deveknp salufmnns for pvrugraxns xviflnnui: a b1.':l.get. U1tirxmafielg.‘,
`according to Hokoxnbe, PILISLTS '5 pron '
`‘
`5 nernr path for ecilscational refonn.
`
`‘"lEd1.xa|bors are d.es1':gn.in.g, but designers are also ed1:u:al:in5_,‘" says Hokoulbe.
`‘'1 men {turn anfieas sfarf El) work tu3e£l—.er_, 'Elmat's 'v\7].'|.2rL chartae can happen."
`
`Saunte: P}'|il I—Iu]|:oxx1'be , Phlstfs
`I-‘Vrilaer: Daxma Henry-
`
`Source: http://WWw.flVingkjten1edia.Com/innovationnews/PlusUs020513.aspx
`
`

`

`Exhibit D
`
`INTERNET ARCHIVE
`
`http:f.'www.call;source.commaeplus»is—us!
`hnp:flwww.ca||source.comIthe-plus-is-us!
`Saved 9 times between August 30. 2010 and March 1, 2011.
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