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)(8 pages)
`
`The table below presents the data as entered.
`
`Entered
`
`86354858
`
`LAW OFFICE 114
`
`http://tsdr.uspto.gov/img/86354858/large
`
`APPRISE MOBILE
`
`YES
`
`YES
`
`The mark consists of standard characters, without claim to any particular font style,
`size or color.
`
`evi_701095314-20150114165127960140_._APPRISEMOBILE_response.pdf
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\548\86354858\xml4\ROA0002.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\548\86354858\xml4\ROA0003.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\548\86354858\xml4\ROA0004.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\548\86354858\xml4\ROA0005.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\548\86354858\xml4\ROA0006.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\548\86354858\xml4\ROA0007.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\548\86354858\xml4\ROA0008.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\548\86354858\xml4\ROA0009.JPG
`
`DESCRIPTION OF EVIDENCE FILE
`
`.pdf document listing responses to each grounds for refusal.
`
`GOODS AND/OR SERVICES SECTION (009)(no change)
`
`GOODS AND/OR SERVICES SECTION (042)(current)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`042
`
`Computer software development in the field of customized mobile applications and company interfaces for use by their workforce, investors
`and other audiences and constituents to receive and review information relevant to their employment, investment or for general
`communications purposes; providing temporary use of web-based software application for use with mobile phones and handheld computing
`devices with respect to communications
`
`FILING BASIS
`
`Section 1(b)
`
`GOODS AND/OR SERVICES SECTION (042)(proposed)
`
`INTERNATIONAL CLASS
`
`042
`
`(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)
`

`

`TRACKED TEXT DESCRIPTION
`
`Computer software development in the field of customized mobile applications and company interfaces for use by their workforce, investors
`and other audiences and constituents to receive and review information relevant to their employment, investment or for general
`communications purposes; providing temporary use of web-based software application for use with mobile phones and handheld computing
`devices with respect to communications; providing temporary use of web-based software application for use with mobile phones and handheld
`computing devices with respect to communications for use by workforce, investors and other audiences and constituents to receive and review
`information relevant to their employment, investment or for general communications purposes
`
`FINAL(cid:160)DESCRIPTION
`
`Computer software development in the field of customized mobile applications and company interfaces for use by their workforce, investors
`and other audiences and constituents to receive and review information relevant to their employment, investment or for general
`communications purposes; providing temporary use of web-based software application for use with mobile phones and handheld computing
`devices with respect to communications for use by workforce, investors and other audiences and constituents to receive and review
`information relevant to their employment, investment or for general communications purposes
`
`FILING BASIS
`
`Section 1(b)
`
`ADDITIONAL STATEMENTS SECTION
`
`DISCLAIMER
`
`NEW ATTORNEY SECTION
`
`NAME
`
`FIRM NAME
`
`STREET
`
`CITY
`
`STATE
`
`ZIP/POSTAL CODE
`
`COUNTRY
`
`PHONE
`
`EMAIL
`
`No claim is made to the exclusive right to use MOBILE apart from the mark as
`shown.
`
`Antonio Vann
`
`Dunlap Bennett & Ludwig, PLLC
`
`211 Church Street, SE
`
`Leesburg
`
`Virginia
`
`20175
`
`United States
`
`8552269661
`
`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
`
`THEIRAPP, LLC
`880 3rd Ave Fl 6
`New York
`New York (NY)
`US
`10022-4730
`
`Antonio Vann
`
`Dunlap Bennett & Ludwig, PLLC
`
`211 Church Street, SE
`
`Leesburg
`
`Virginia
`
`20175
`
`United States
`
`8552269661
`
`

`

`EMAIL
`
`ip@dbllawyers.com
`
`AUTHORIZED EMAIL COMMUNICATION
`
`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
`
`Yes
`
`/avann/
`
`Antonio G. Vann
`
`Attorney of Record, VA Bar Member
`
`855.226.9661
`
`01/14/2015
`
`YES
`
`Wed Jan 14 16:56:15 EST 2015
`
`USPTO/ROA-XX.XXX.XX.XX-20
`150114165615362394-863548
`58-5004dcd7a1aa142afb4449
`ec51f5134136f5170d5f0367e
`77e64f6b1c21b1f8c89-N/A-N
`/A-20150114165127960140
`
`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. 86354858(cid:160)APPRISE MOBILE(Standard Characters, see http://tsdr.uspto.gov/img/86354858/large) has been amended as
`follows:
`
`EVIDENCE
`Evidence in the nature of .pdf document listing responses to each grounds for refusal. has been attached.
`Original PDF file:
`evi_701095314-20150114165127960140_._APPRISEMOBILE_response.pdf
`Converted PDF file(s) ( 8 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`Evidence-5
`Evidence-6
`Evidence-7
`Evidence-8
`
`CLASSIFICATION AND LISTING OF GOODS/SERVICES
`Applicant proposes to amend the following class of goods/services in the application:
`Current: Class 042 for Computer software development in the field of customized mobile applications and company interfaces for use by their
`workforce, investors and other audiences and constituents to receive and review information relevant to their employment, investment or for
`general communications purposes; providing temporary use of web-based software application for use with mobile phones and handheld
`computing devices with respect to communications
`Original Filing Basis:
`Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a
`
`

`

`bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a
`collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a
`bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with
`the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the
`applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in
`connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the
`mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification
`standards of the applicant.
`
`Proposed:
`Tracked Text Description: Computer software development in the field of customized mobile applications and company interfaces for use by
`their workforce, investors and other audiences and constituents to receive and review information relevant to their employment, investment or
`for general communications purposes; providing temporary use of web-based software application for use with mobile phones and handheld
`computing devices with respect to communications; providing temporary use of web-based software application for use with mobile phones and
`handheld computing devices with respect to communications for use by workforce, investors and other audiences and constituents to receive and
`review information relevant to their employment, investment or for general communications purposes
`
`Class 042 for Computer software development in the field of customized mobile applications and company interfaces for use by their workforce,
`investors and other audiences and constituents to receive and review information relevant to their employment, investment or for general
`communications purposes; providing temporary use of web-based software application for use with mobile phones and handheld computing
`devices with respect to communications for use by workforce, investors and other audiences and constituents to receive and review information
`relevant to their employment, investment or for general communications purposes
`Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a
`bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a
`collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a
`bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with
`the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the
`applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in
`connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the
`mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification
`standards of the applicant.
`
`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
`8552269661
`
`CORRESPONDENCE ADDRESS CHANGE
`Applicant proposes to amend the following:
`Current:
`THEIRAPP, LLC
`880 3rd Ave Fl 6
`New York
`New York (NY)
`US
`10022-4730
`
`Proposed:
`Antonio Vann of Dunlap Bennett & Ludwig, PLLC, having an address of
`211 Church Street, SE Leesburg, Virginia 20175
`United States
`ip@dbllawyers.com
`8552269661
`
`

`

`ADDITIONAL STATEMENTS
`Disclaimer
`No claim is made to the exclusive right to use MOBILE apart from the mark as shown.
`
`SIGNATURE(S)
`Response Signature
`Signature: /avann/(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)Date: 01/14/2015
`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
`
`Serial Number: 86354858
`Internet Transmission Date: Wed Jan 14 16:56:15 EST 2015
`TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20150114165615362
`394-86354858-5004dcd7a1aa142afb4449ec51f
`5134136f5170d5f0367e77e64f6b1c21b1f8c89-
`N/A-N/A-20150114165127960140
`
`(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 No.:
`
`THEIRAPP, LLC
`8635485 8
`
`Filed:
`Trademark Atty:
`Word Mark:
`
`August 1, 2014
`Brian Pino
`APPRISE MOBILE
`
`RESPONSE TO NOVEMBER 24, 2014 OFFICE ACTION
`
`This Response is filed in reply to the Ofiice Action e-mailed on November 24, 2014. The Applicant
`
`respectfully submits the following response. Applicant submits that the above-identified trademark
`
`application for APPRISE MOBILE is in condition for allowance to publication.
`
`ANIENDMENT OF IDENTICATION
`
`The Examining Attorney has requested an amendment to the identification of the class 042 services.
`
`Applicant amends the identification of the class 042 services to the following:
`
`Computer software development in thefield of customized mobile applications and
`company interfaces for use by their workforce, investors and other audiences and
`constituents to receive and review information relevant to their employment, investment or
`for general communications purposes; providing temporary use of web-based software
`application for use with mobile phones and handheld computing devices with respect to
`communications for use by workforce, investors and other audiences and constituents to
`receive and review information relevant to their employment, investment orfor general
`communications purposes
`
`DISCLAIMER
`
`The Applicant submits the following disclaimer:
`
`No claim is made to the exclusive right to use “MOBILE” apart from the mark as shown.
`
`INFORNIATION REQUEST
`
`To the Applicant’s knowledge, the Applicant does not offer services that appear in the registrants’
`
`

`

`identification of services.
`
`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 Brian
`
`Pino raises a Section 2(d) refiisal in a subsequent Office Action.
`
`APPLICANT’S WORD MARK
`
`CITED REGISTERED MARK
`
`APPRISE MOBILE
`
`APPRISE
`
`Class 009: Computer application software for
`mobile devices, namely, software for enabling
`organizations to communicate with their work
`force, investors or other audiences and
`constituents
`
`Class 042: Computer software development in
`the field of customized mobile applications and
`company interfaces for use by their workforce,
`investors and other audiences and constituents to
`receive and review information relevant to their
`
`employment, investment or for general
`communications purposes; providing temporary
`use of web-based software application for use
`with mobile phones and handheld computing
`devices with respect to communications
`
`Owner: Apprise Software, Inc.
`Reg. No. 2678163
`
`Class 035: BUSINESS MANAGEMENT
`SERVICES REGARDING EVALUATION OF
`RELATIONSHIPS BETWEEN BUSINESSES
`
`AND CUSTOMERS,GOODS PROVIDERS,
`SERVICE PROVIDERS OR OTHERS;
`BUSINESS CONSULTATION IN THE FIELD
`
`OF SALES, MARKETING, INVENTORY
`CONTROL AND PRODUCT MANAGEMENT
`
`Class 042: RESEARCH AND DESIGN FOR
`OTHERS OF COMPUTER SOFTWARE FOR
`
`USE IN INDIVIDUAL, COMMERCIAL, AND
`INDUSTRIAL ACCOUNTING, TO ASSIST IN
`BUSINESS PLANNING AND OPERATIONS,
`NAMELY, BUSINESS MANAGEMENT
`SERVICES, BUSINESS RELATIONSHIPS,
`SALES, MARKETING, PRODUCT
`MANAGEMENT AND INVENTORY
`
`CONTROL, AND IN THE FIELD OF
`TECHNOLOGY INTEGRATION,
`TECHNOLOGY SUPPORT AND
`
`TECHNOLOGY SERVICES; SOFTWARE
`IMPLEMENTATION SERVICES IN THE
`
`NATURE OF SOFTWARE INSTALLATION,
`SOFTWARE DEVELOPMENT AND
`CONSULTATION IN THE USE OF
`SOFTWARE
`
`

`

`APPRISE
`Owner: The Informatics
`
`Applications Group, Inc.
`Reg. No. 4318398
`
`Class 009: Computer software for connecting to
`data stored in relational and multidimensional
`
`databases and other data repositories, for
`facilitation of the creation of key performance
`indicators (KPIS) from the data, for designing
`interactive Views and visual representations of the
`KPIS using charts, gauges, maps, grids, and other
`Visualization types, and for publishing and
`integrating these designs into Various web-based
`and other business applications
`
`Class 042: Providing non—downloadable Web-
`based computer software for connecting to data
`stored in relational and multidimensional
`
`databases and other data repositories, for
`facilitation of the creation of key performance
`indicators (KPIS) from the data, for designing
`interactive Views and visual representations of the
`KPIS using charts, gauges, maps, grids, and other
`Visualization types, and for publishing and
`integrating these designs into Various web—based
`and other business applications
`
`APPLICANT’S MARK IS NOT CONFUSINGLY SIMILAR
`
`The USPTO suggests that it will refuse registration of Applicant’s mark, APPRISE MOBILE, because
`
`of a likelihood of confusion with registered marks APPRISE, in U.S. Registration Nos. 2678163 &
`
`4318398. “[T]he question of confusion is related not to the nature of the mark but to its effect ‘when
`
`applied to the goods ofthe applicant.” In re E. I. du Pont de Nemours & C0., 476 F.2d 1357, 1360,
`
`177 USPQ 563, 566 (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 trade channels of the goods and /or
`
`services weigh against the Applicant’s mark. However, Applicant respectfillly asserts that when all
`
`factors are weighed, the majority weigh against the existence of a likelihood of confusion.
`
`THE SHARED TERM IS NOT ENOUGH TO ESTABILSH A LIKELIHOOD OF
`CONFUSION
`
`One of the factors 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). In this case,
`
`the shared term, “apprise,” is capable of giving off a different commercial impression because two
`
`marks exist on the principal register for this term and both have different owners. When Applicant’s
`
`mark and Registrants’ marks are compared, the appearance is not similar despite the shared term.
`
`Section 1207.01(b)(iii) of the TMEP states in pertinent part that, when a shared term is at issue,
`
`additions or deletions may prevent a likelihood of confusion if “(1) the marks in their entireties convey
`
`significantly different commercial impressions, or (2) the matter common to the marks is not likely to
`
`be perceived by purchasers as distinguishing source...”
`
`In the present case, the marks in their entireties convey significantly different commercial impressions.
`
`Applicant’s mark includes the descriptive term “mobile,” which conveys information about applicant’s
`
`services. The registered marks do not have the descriptive element.
`
`

`

`APPLICANT DOES NOT OFFER THE SAME SERVICES
`
`Another 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. du Pom‘ de
`
`Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). Section 1207.01(a)(i)
`
`states in pertinent part that, a likelihood of COI1filSiOI1 inquiry is focused on whether the public will be
`
`confused as to the source of goods or services.
`
`In the present case, the Applicant’s class 009 goods focus on software that facilitates the
`
`communication between specific parties. The Applicant’s class 042 services offer the development of
`
`mobile software which facilitates the communication of information between parties. The cited
`
`registered trademarks do not offer these goods or services.
`
`THE GOODS ARE NOT SOLD THROUGH THE SAME CHANNELS
`
`Another factor is the similarity or dissimilarity of established, likely-to-continue trade channels. In re
`
`E. I. du Pom‘ de Nemours & C0., 476 F.2d at 1361, 177 USPQ at 567. This factor heavily weighs
`
`against a finding of a likelihood of confusion. While the Applicant is unsure as to the channels of trade
`
`the registrant’s marks are sold, Applicant will maintain exclusive control over the sale of the goods
`
`and services sold under its mark. Therefore, Applicants assert that this factor weighs in their favor.
`
`THE CONSUMERS INVOLVED WILL MAKE CAREFUL DECISIONS SUFFICENT TO
`AVOID CONFUSION
`
`The next factor is the conditions under which and buyers to whom sales are made (i.e. impulse v.
`
`careful). Id. The end product, whether a product or a service, will require some level of customization
`
`

`

`or adjustment, in response to the consumers individual needs. Therefore, consumers will make careful
`
`decisions and will be able to distinguish between the products and services sold by Applicant from
`
`those products and services offered by the registrants. The buyers and conditions upon which buyers
`
`would purchase the goods & services of the Applicant and Registrants, are distinct enough to avoid the
`
`likelihood of confusion. This factor weighs heavily against a likelihood of confusion between these
`
`two marks.
`
`THE PRIOR MARK IS NOT FAMOUS
`
`Another factor is the fame of the prior mark (eg., sales, advertising, length of use, eta). Id. There is no
`
`evidence that the prior mark is famous, this factor weighs against a likelihood of confusion.
`
`THE CITED REGISTRATIONS ARE PROOF THAT A SUBSTANTIAL LIKELIHOOD
`MUST EXIST
`
`Taking into consideration that the Examining Attorney has cited two identical trademarks for
`
`APPRJSE, owned by different sources, it is clear that an “apprise” related trademark is capable of
`
`existing without the likelihood of confusion arising. Therefore, Applicant respectfillly asserts that any
`
`2(d) refusal must be based on the premise that the likelihood of confusion is substantial. Absent facts
`
`that there is a substantial likelihood of confusion in this matter, Applicant asserts that its mark should
`
`proceed to publication.
`
`EXTENT OF POTENTIAL CONFUSION IS DE MINIMIS
`
`An important factor focuses on the extent of potential confusion, I". e., whether de minimis or
`
`substantial. Id. Because (1) the Applicant’s goods & services have a different purpose than those sold
`
`by the registrants, (2) the Applicant will maintain control over the channels of trade of its goods &
`
`

`

`services, (3) Applicants consumers will make Very careful decisions, and (4) there are two identical
`
`marks for the term “apprise” registered by different owners for software related services, the potential
`
`for confusion is de minimis and weighs heavily against a likelihood of confusion.
`
`SIMILAR MARKS WITH SIMILAR GOODS CAPABLE OF REGISTRATION
`
`Another 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. 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. 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 U.S. 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
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`(C.C.P.A. 1961) (SERVOSPEED not confusingly similar to SERVO); Sweats Fashions, I11c. v. Pannill
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`Knitting Co., 833 F. 2d 1560, 1564, 4 U.S.P.Q. 2d 1793, 1796 (Fed. Cir. 1987) (SWEATS not
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`confusing similar to ULTRA SWEATS), both for sportswear); Gen. Mills Inc. v. Kellog Co., 824 F.
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`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
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`F.2d 1265, 1267, 181 U.S.P.Q. 44, 45 (C.C.P.A. 1974) (DUTCH APPLE for pipe tobacco not
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`confusingly similar to DUTCH MASTERS for cigars).
`
`

`

`EVIDENTIARY BURDEN: MUST SHOW A SUBSTANTIAL LIKELIHOOD OF
`CONFUSION
`
`When determining Whether an Applicant’s mark creates a likelihood of confusion, with marks covered
`
`by cited registrations "[a] showing of mere possibility of COI1filSlOI1 is not enough; a substantial
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`likelihood that the public will be confused must be shown." Omaha Natl. Bank, 633 F. Supp. at 234,
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`229 U.S.P.Q. at 52. Applying the factors set forth in Du Font, and absent “substantial doubt,” In re
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`Mars, Inc., 741 F. 2d 395, 396 222 U.S.P.Q. 938 (Fed. Cir. 1984), registration ofApplicant’s mark is
`
`appropriate.
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`The evidence does not establish that there is a substantial likelihood of confusion. Applicants
`
`respectfully submit that the mark for APPRISE MOBILE does not create a substantial likelihood of
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`C011filSl011 with the Registrant’s marks.
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`CONCLUSION
`
`Applicant has fully responded to the Office Action. Majority of the ‘DuPont’ factors Weigh in the
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`Applicant’s favor. Furthermore, for at least the above reasons, Applicant asserts that Applicant’s
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`mark, APPRISE MOBILE, is sufficiently distinct from the cited registrations, so as not to result in
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`consumer confusion. Applicant respectfully submits in good faith that all potential 2(d) refusals,
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`rejections, and/or objections have been overcome and that the applied for mark is in condition for
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`publication.
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`Respectfully submitted,
`/Antonio G. Vann/
`
`Antonio G. Vann (VSB # 79765)
`Attorney of Record for the Applicant
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`