PTO Form 2194 (Rev 9/2005)
`
`OMB No. 0651-0054 (Exp. 10/31/2017)
`
`Petition To Revive Abandoned Application - Failure To Respond Timely To Office Action
`
`The table below presents the data as entered.
`
`Input Field
`
`SERIAL NUMBER
`
`LAW OFFICE ASSIGNED
`
`86169844
`
`LAW OFFICE 112
`
`DATE OF NOTICE OF ABANDONMENT
`
`11/28/2014
`
`Entered
`
`PETITION
`
`PETITION STATEMENT
`
`RESPONSE TO OFFICE ACTION
`
`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)(6 pages)
`
`Applicant has firsthand knowledge that the failure to respond to the Office Action by
`the specified deadline was unintentional, and requests the USPTO to revive the
`abandoned application.
`
`http://tsdr.uspto.gov/img/86169844/large
`
`SANCTUARY SALTS
`
`YES
`
`YES
`
`The mark consists of standard characters, without claim to any particular font style,
`size or color.
`
`evi_701095314-20150128154722360950_._Sanctuary_Salts.pdf
`
`\\TICRS\EXPORT16\IMAGEOUT16\861\698\86169844\xml6\POA0002.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\861\698\86169844\xml6\POA0003.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\861\698\86169844\xml6\POA0004.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\861\698\86169844\xml6\POA0005.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\861\698\86169844\xml6\POA0006.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\861\698\86169844\xml6\POA0007.JPG
`
`DESCRIPTION OF EVIDENCE FILE
`
`arguments in response to the Office Action dated April 24, 2014.
`
`ADDITIONAL STATEMENTS SECTION
`
`DISCLAIMER
`
`NEW ATTORNEY SECTION
`
`NAME
`
`FIRM NAME
`
`STREET
`
`CITY
`
`No claim is made to the exclusive right to use SALTS apart from the mark as shown.
`
`Antonio Vann
`
`Dunlap Bennett & Ludwig, PLLC
`
`211 Church Street, SE
`
`Leesburg
`
`(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)
`

`

`STATE
`
`ZIP/POSTAL CODE
`
`COUNTRY
`
`PHONE
`
`EMAIL
`
`Virginia
`
`20175
`
`United States
`
`855.226.9661
`
`ip@dbllawyers.com
`
`AUTHORIZED EMAIL COMMUNICATION
`
`Yes
`
`CORRESPONDENCE SECTION
`
`ORIGINAL ADDRESS
`
`NEW CORRESPONDENCE SECTION
`
`NAME
`
`FIRM NAME
`
`STREET
`
`CITY
`
`STATE
`
`ZIP/POSTAL CODE
`
`COUNTRY
`
`PHONE
`
`EMAIL
`
`AUTHORIZED EMAIL COMMUNICATION
`
`PAYMENT SECTION
`
`TOTAL AMOUNT
`
`TOTAL FEES DUE
`
`SIGNATURE SECTION
`
`PETITION SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`SIGNATORY'S PHONE NUMBER
`
`DATE SIGNED
`
`RESPONSE SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`SIGNATORY'S PHONE NUMBER
`
`DATE SIGNED
`
`AUTHORIZED SIGNATORY
`
`FILING INFORMATION SECTION
`
`BRUNK, JUANITA
`461 1ST ST
`BROOKLYN
`New York (NY)
`US
`11215-2605
`
`Antonio Vann
`
`Dunlap Bennett & Ludwig, PLLC
`
`211 Church Street, SE
`
`Leesburg
`
`Virginia
`
`20175
`
`United States
`
`855.226.9661
`
`ip@dbllawyers.com
`
`Yes
`
`100
`
`100
`
`/avann/
`
`Antonio G. Vann
`
`Attorney of Record VA Bar Member
`
`855.226.9661
`
`01/28/2015
`
`/avann/
`
`Antonio G. Vann
`
`Attorney of Record, VA Bar Member
`
`855.226.9661
`
`01/28/2015
`
`YES
`
`

`

`SUBMIT DATE
`
`TEAS STAMP
`
`PTO Form 2194 (Rev 9/2005)
`
`OMB No. 0651-0054 (Exp. 10/31/2017)
`
`Wed Jan 28 15:55:35 EST 2015
`
`USPTO/POA-XX.XXX.XX.XX-20
`150128155535719862-861698
`44-5303474e6c87add44edaf2
`cbba9eb9a15c9e9c6c57f3470
`a3204eec5fc9d19d95-CC-233
`3-20150128154722360950
`
`Petition To Revive Abandoned Application - Failure To Respond Timely To Office Action
`To the Commissioner for Trademarks:
`
`Application serial no. 86169844(cid:160)SANCTUARY SALTS(Standard Characters, see http://tsdr.uspto.gov/img/86169844/large) has been amended
`as follows:
`PETITION
`Petition Statement
`
`Applicant has firsthand knowledge that the failure to respond to the Office Action by the specified deadline was unintentional, and requests the
`USPTO to revive the abandoned application.
`
`RESPONSE TO OFFICE ACTION
`
`EVIDENCE
`Evidence in the nature of arguments in response to the Office Action dated April 24, 2014. has been attached.
`Original PDF file:
`evi_701095314-20150128154722360950_._Sanctuary_Salts.pdf
`Converted PDF file(s) ( 6 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`Evidence-5
`Evidence-6
`
`ATTORNEY ADDRESS
`Applicant proposes to amend the following:
`Proposed:
`Antonio Vann of Dunlap Bennett & Ludwig, PLLC, having an address of
`211 Church Street, SE Leesburg, Virginia 20175
`United States
`ip@dbllawyers.com
`855.226.9661
`
`CORRESPONDENCE ADDRESS CHANGE
`Applicant proposes to amend the following:
`Current:
`BRUNK, JUANITA
`461 1ST ST
`BROOKLYN
`New York (NY)
`US
`11215-2605
`
`

`

`Proposed:
`Antonio Vann of Dunlap Bennett & Ludwig, PLLC, having an address of
`211 Church Street, SE Leesburg, Virginia 20175
`United States
`ip@dbllawyers.com
`855.226.9661
`
`ADDITIONAL STATEMENTS
`Disclaimer
`No claim is made to the exclusive right to use SALTS apart from the mark as shown.
`
`FEE(S)
`Fee(s) in the amount of $100 is being submitted.
`
`SIGNATURE(S)
`
`Signature: /avann/(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)Date: 01/28/2015
`Signatory's Name: Antonio G. Vann
`Signatory's Position: Attorney of Record VA Bar Member
`Signatory's Phone Number: 855.226.9661
`
`Response Signature
`Signature: /avann/(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)Date: 01/28/2015
`Signatory's Name: Antonio G. Vann
`Signatory's Position: Attorney of Record, VA Bar Member
`
`Signatory's Phone Number: 855.226.9661
`
`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)Antonio Vann
`(cid:160)(cid:160)(cid:160)Dunlap Bennett & Ludwig, PLLC
`(cid:160)(cid:160)(cid:160)211 Church Street, SE
`(cid:160)(cid:160)(cid:160)Leesburg, Virginia 20175
`
`RAM Sale Number: 86169844
`RAM Accounting Date: 01/29/2015
`
`Serial Number: 86169844
`Internet Transmission Date: Wed Jan 28 15:55:35 EST 2015
`TEAS Stamp: USPTO/POA-XX.XXX.XX.XX-20150128155535719
`862-86169844-5303474e6c87add44edaf2cbba9
`eb9a15c9e9c6c57f3470a3204eec5fc9d19d95-C
`C-2333-20150128154722360950
`
`(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)
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicant:
`Serial N0.:
`
`Juanita Brunk
`86169844
`
`Filed:
`Trademark Atty:
`Word Mark:
`
`January 20, 2014
`Hai-Ly Lam
`SANCTUARY SALTS
`
`RESPONSE TO APRIL 24, 2014 OFFICE ACTION
`
`This Response is filed in reply to the Office Action e-inailed on April 24. 2014. The Applicant
`
`respectfully submits the following response. Applicant submits that the above-identified trademark
`
`application for SANCTUARY SALTS is in condition for allowance to publication.
`
`DISCLAIMER
`
`The Applicant su.bmits the following disclaimer:
`
`No claim is made to the exclusive right to use “SALTS” apart from the mark as shown.
`
`POTENTIAL SECTION 2(d) 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 Hai-Ly
`
`Lam raises a Section 2(d) refu.sal in a subsequent Office Action.
`
`APPLICANT’S VVORD MARK
`
`CITED REGISTERED MARK
`
`SANCTUARY SALTS
`
`Date of First Use: ll/Ol/2012
`
`Date of First Use: 09/l2/2011
`
`Class 003: Bath salts; Body lotions; Body oils;
`Cleaning preparations for household purposes;
`Scented fabric refresher spray; Scented oils
`
`Class 044: Salt therapy. also known as
`halotherapy
`
`

`

`APPLICANT’S MARK IS NOT CONFUSINGLY SIMILAR
`
`The USPTO suggests that it will refuse registration of Applicant’s mark, SANCTUARY SALTS,
`
`because of a likelihood of confusion with registered mark jh (stylized), in U.S. Registration No.
`
`4189523. “[T]he question of confusion is related not to the nature of the mark but to its effect ‘when
`
`applied to the [services] ofthe applicant.” In re E. I. du Pont de Nemours & Ca, 476 F.2d 1357,
`
`1360, 177 USPQ 563, 566 (C.C.P.A. 1973).
`
`Transposed Trademarks
`
`The marks in question involve the transposition of the literal elements in each mark. Confusion is not
`
`likely if a transposed mark creates a distinctly different commercial impression. SEE T.M.E.P.
`
`§1207.01(b)(vii). This is especially the case when one party is providing services and other is selling
`
`goods. See In re Best Products Co., Inc., 231 USPQ 988 (T.T.A.B. 1986) (BEST JEWELRY and
`
`design (with "JEWELRY" disclaimed) for retail jewelry store services held not likely to be confused
`
`with JEWELERS' BEST for jewelry). Consumers are also less likely to make mistaken purchases in
`
`cases involving services and goods, because consumers would not look to purchase a product when
`
`looking for a service. Id. See also, Murphy, Brill and Sahner, Inc. v. New Jersey Rubber Company,
`
`102 USPQ 420 (Commr. Pat. 1954) (finding that TOPFLITE for shoe soles conveys a different
`
`meaning than FLITE TOP for hosiery) and In re Akzona Inc., 219 USPQ 94 (T.T.A.B. 1983) (SILKY
`
`TOUCH for “synthetic yarn” not likely to be confused with TOUCH ‘O SILK for clothing).
`
`The difference in commercial impression is further supported by the definition of the words involved.
`
`The term sanctuary is understood by the everyday purchaser as a place.
`
`111 fact, it is defined as such.
`
`(see figure 1: Sanctuary definition). The term ‘salt’ is understood by the everyday purchaser as a
`
`

`

`‘thing’ or compound. (See Figure 2)
`
`(_
`
`cl Ddictggna.-y_.-efe,-ence_¢gm_':.i-qr-age‘gam:t:sar'-,
`[;i,,ii_;i.,,-ii,
`Ti.::,-,_ U;
`’.,.
`
`’
`
`C‘ Ddictionary.reference.com/browse»‘SALT?s:t
`Dlttioiiaiy Tlie:-atiius
`lldllbldl-L)!
`
`' '
`
`6” cartvvheel I
`4;
`
`save on hundreds of
`things you love at Target.
`
`sanctuary vi»)
`[sangk—choo»er—ee]
`Synonyms
`Examples
`
`WDlCl Origin
`
`noun, plural sanctuaries.
`1.
`a sacred or holy place.
`
`2. Judaism.
`a.
`the Biblical tabernacle or the Temple in Jerusalem.
`b_ the how of miles of these places OfWo‘.Ship_
`
`. an especially holy place in .3 temple or church.
`
`.
`
`.
`
`.
`
`the pait of .3 chuich around the altar; the chancel.
`
`a church orother sacred place where fugitives were formerly entitled to
`immunity from arrest.
`
`immunity afforded by refuge in such a place.
`
`. any place of refuge; asylum.
`
`a
`
`Saltl 4»)
`l5aWl'3l
`5Y"0“Ym5
`
`EWWPIES
`
`WW5‘ O"l§ll“
`
`noun
`1. a crystalline compound, sodium chloride, NaC|, occurring as a mineral, a
`constituent of seawater, etc., and used For seasoning food, as a
`preservative, etc.
`
`7
`7
`7
`7
`7
`7
`table salt mixed with a paiticular hell) on seasoning for which it is named:
`‘_7.7n'ic _r-.7.l.‘: C-:.3eiK salt. '
`
`.
`
`. Chemistry, any of a class of compounds formed by the replacerrient of one
`or more hydrogen atoms of an acid with elements or groups, which ai'e
`composed of anions and cations, and whrch usually ionize in solution; a
`product foinied by the neutralization of an acid by a base.
`.
`. salts, any of various salts used as purgatives, as Epsom salts.
`.
`.
`. an element that gives liveliness, piquancy, or pungency:
`‘A-i.—‘.'.'l.'ire-'. ave r'i.: .-._=./r ..'r l'lJ-’— i'i.am=.hi-A ‘
`
`. wit; pungency.
`
`Origin
`
`. a small, usually open dish, as of silver or glass, used on the table for holding
`salt.
`
`Figure 1
`
`Figure 2
`
`The registrant’s mark, ‘salt sanctuary,’ implies that it offers services at a ‘place’, while the Applicant’s
`
`mark, sanctuary salts, clearly represents that products are being sold. The transposed words result in
`
`different meanings, and thus, a different commercial impression.
`
`Under T.M.E.P. § 1207.01 (b)(Vii) and the ruling or In re Best Products Co., Inc., confusion is not
`
`likely Where the commercial impression is different. Absent contrary evidence from the Examining
`
`Attorney, the above facts clearly establish that the commercial impression is different.
`
`

`

`The Dominant Element vs. Viewing the Marks in Their Entireties
`
`The Examining Attorney has acknowledge the design elements in the cited registration, but places
`
`great Weight on the word portion, highlighting such as the dominant features of the marks.
`
`Specifically, the Examining Attorney states,
`
`. .although such marks must be compared in their
`
`entireties, the word portion is often considered the dominant feature and is accorded greater Weight in
`
`determining whether marks are confusingly similar, even Where the word portion has been
`
`disclaimed.” In re Viterra Inc., 671 F.3d at 1366, 101 USPQ2d at 1911 (Fed. Cir. 2012) (citing Giant
`
`Food, Inc. v. Nation is Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir.
`
`1983)). Ironically, In re Viterra Ina, when the marks were viewed in their entirety, the marks were
`
`not found confusingly similar because consumers would not assume that the marks identify a single
`
`source or sponsor. Id.
`
`In the present case, considering the Applicant sells products and the registrant offers services, the
`
`marks are not identical, and the cited registration includes design elements, the Applicant respectfillly
`
`asserts that the Examining Attorney has not provided a sufficient basis to support that consumers
`
`would assume the marks identify a single source after viewing the marks in their entirety.
`
`THE FACTS DO NOT ESTABLISH A SUBSTANTIAL LIKELIHOOD
`
`In order for the likelihood of confusion analysis to stand it must show that the likelihood is substantial.
`
`When determining whether an Applicant’s mark creates a likelihood of confusion, with marks covered
`
`by cited registrations "[a] showing of mere possibility of COI1filSl0I1 is not enough; a substantial
`
`likelihood that the public Will be confused must be shown." Omaha Natl. Bank, 633 F. Supp. at 234,
`
`229 U.S.P.Q. at 52. The Examining Attorney has offered little evidence to establish how or why the
`
`public Will confuse Applicant’s products with the cited registrant’s services. At most, the Examining
`
`

`

`Attorney has established that goods similar to the Applicant’s may intersect with the services offered
`
`by the registrant, under specific circumstances. However, the Examining Attorney has not shown how
`
`the Applicant’s goods are likely to intersect with the services offered by the cited registrant. The mere
`
`possibility of confusion is not enough, and the evidence does not show that consumers are
`
`substantially likely to confuse the Applicant’s mark for products with the registrant’s mark for
`
`services.
`
`THE CONSUMERS INVOLVED WILL MAKE CAREFUL DECISIONS SUFFICENT TO
`AVOID CONFUSION
`
`One of the noted DuPont factor focuses on the conditions under which and buyers to whom sales are
`
`made (i.e. impulse V. careful). Id. The Registrant offers very unique specialty services, namely,
`
`halotherapy. It goes without question that the registrant’s consumers will make careful decisions,
`
`which further supports that confusion is unlikely to occur.
`
`SIMILAR MARKS WITH SIMILAR GOODS/SERVICES CAPABLE OF REGISTRATION
`
`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. Furthermore,
`
`courts 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. U.S. 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-Tek Prod. Co., 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 confilsing 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 confilsingly similar to APPLE RASIN CRISP, both for breakfast cereal); Consol. Cigar V.
`
`RJR Tobacco C0,, 491 F.2d 1265, 1267, 181 U.S.P.Q. 44, 45 (C.C.P.A. 1974) (DUTCH APPLE for
`
`pipe tobacco not confilsingly similar to DUTCH MASTERS for cigars).
`
`CONCLUSION
`
`For at least the above reasons, Applicant asserts that Applicant’s mark, SANCTUARY SALTS, is
`
`sufficiently distinct from the cited registration, so as not to result in consumer confusion. Applicant
`
`respectfully submits in good faith that all potential 2(d) refusals, rejections, and/or objections haVe
`
`been overcome and that the applied for mark is in condition for publication.
`
`Respectfully submitted,
`/Antonio G. Vann/
`
`Antonio G. Vann (VSB # 79765)
`Attorney of Record for the Applicant
`
`

`

`RAM SALE NUMBER: 86169844
`
`RAM ACCOUNTING DATE: 20150129
`
`INTERNET TRANSMISSION DATE:
`
`SERIAL NUMBER:
`
`2015/O1/28
`
`86/169844
`
`Description
`
`Fee
`Code
`
`Transaction
`
`Total Fees
`Paid
`
`POA
`
`7005
`
`2015/OI/28
`
`I00
`
`