PTO Form 1957 (Rev 9/2005)
`
`OMB No. 0651-0050 (Exp. 07/31/2017)
`
`Response to Office Action
`
`The table below presents the data as entered.
`
`Input Field
`
`Entered
`
`SERIAL NUMBER
`
`86404615
`
`LAW OFFICE ASSIGNED
`
`LAW OFFICE 115
`
`MARK SECTION
`
`MARK
`
`LITERAL ELEMENT
`
`STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`MARK STATEMENT
`
`ARGUMENT(S)
`
`http://tmng-al.uspto.gov/resting2/api/img/86404615/large
`
`ON DEMAND TALENT
`
`YES
`
`YES
`
`The mark consists of standard characters, without claim to any particular font style, size or
`color.
`
`Please see the actual argument text attached within the Evidence section.
`
`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)(13 pages)
`
`evi_701095314-20150721163002920563_._ONDEMANDTALENT_OA_TMD_Final_.pdf
`
`\\TICRS\EXPORT16\IMAGEOUT16\864\046\86404615\xml5\ROA0002.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\864\046\86404615\xml5\ROA0003.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\864\046\86404615\xml5\ROA0004.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\864\046\86404615\xml5\ROA0005.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\864\046\86404615\xml5\ROA0006.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\864\046\86404615\xml5\ROA0007.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\864\046\86404615\xml5\ROA0008.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\864\046\86404615\xml5\ROA0009.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\864\046\86404615\xml5\ROA0010.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\864\046\86404615\xml5\ROA0011.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\864\046\86404615\xml5\ROA0012.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\864\046\86404615\xml5\ROA0013.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\864\046\86404615\xml5\ROA0014.JPG
`
`CORRESPONDENCE SECTION
`
`ORIGINAL ADDRESS
`
`THOMAS M. DUNLAP
`DUNLAPWEAVER PLLC
`211 CHURCH ST SE
`LEESBURG
`Virginia (VA)
`
`(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)
`(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)
`

`

`NEW CORRESPONDENCE SECTION
`
`NAME
`
`FIRM NAME
`
`DOCKET/REFERENCE NUMBER
`
`STREET
`
`CITY
`
`STATE
`
`ZIP/POSTAL CODE
`
`COUNTRY
`
`PHONE
`
`FAX
`
`EMAIL
`
`US
`20175-3005
`
`THOMAS M. DUNLAP
`
`Dunlap Bennett & Ludwig PLLC
`
`8564-2014002
`
`211 CHURCH ST SE
`
`LEESBURG
`
`Virginia
`
`20175-3005
`
`United States
`
`703-777-7319
`
`703-777-3656
`
`tdunlap@dbllawyers.com;ip@dbllawyers.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
`
`/Thomas M Dunlap/
`
`Thomas M Dunlap
`
`Attorney of record, Virginia btate bar
`
`703-777-7319
`
`07/21/2015
`
`YES
`
`Tue Jul 21 16:35:34 EDT 2015
`
`USPTO/ROA-XX.XXX.XX.XX-20
`150721163534171753-864046
`15-540a5aef071f8425e922f3
`5ea8d22d72ba2f04e25f4c68d
`c9bd6e89c09578dc5e61-N/A-
`N/A-20150721163002920563
`
`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. 86404615(cid:160)ON DEMAND TALENT(Standard Characters, see http://tmng-al.uspto.gov/resting2/api/img/86404615/large)
`has been amended as follows:
`
`ARGUMENT(S)
`In response to the substantive refusal(s), please note the following:
`
`

`

`Please see the actual argument text attached within the Evidence section.
`
`EVIDENCE
`
`Original PDF file:
`evi_701095314-20150721163002920563_._ONDEMANDTALENT_OA_TMD_Final_.pdf
`Converted PDF file(s) ( 13 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`Evidence-5
`Evidence-6
`Evidence-7
`Evidence-8
`Evidence-9
`Evidence-10
`Evidence-11
`Evidence-12
`Evidence-13
`
`CORRESPONDENCE ADDRESS CHANGE
`Applicant proposes to amend the following:
`Current:
`THOMAS M. DUNLAP
`DUNLAPWEAVER PLLC
`211 CHURCH ST SE
`LEESBURG
`Virginia (VA)
`US
`20175-3005
`
`Proposed:
`THOMAS M. DUNLAP of Dunlap Bennett & Ludwig PLLC, having an address of
`211 CHURCH ST SE LEESBURG, Virginia 20175-3005
`United States
`tdunlap@dbllawyers.com;ip@dbllawyers.com
`703-777-7319
`703-777-3656
`The docket/reference number is 8564-2014002 .
`
`SIGNATURE(S)
`Response Signature
`Signature: /Thomas M Dunlap/(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)Date: 07/21/2015
`Signatory's Name: Thomas M Dunlap
`Signatory's Position: Attorney of record, Virginia btate bar
`
`Signatory's Phone Number: 703-777-7319
`
`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 owner's/holder'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 owner/holder in this matter: (1) the owner/holder 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 owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder'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)THOMAS M. DUNLAP
`
`

`

`(cid:160)(cid:160)(cid:160)Dunlap Bennett & Ludwig PLLC
`(cid:160)(cid:160)(cid:160)211 CHURCH ST SE
`(cid:160)(cid:160)(cid:160)LEESBURG, Virginia 20175-3005
`
`Serial Number: 86404615
`Internet Transmission Date: Tue Jul 21 16:35:34 EDT 2015
`TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20150721163534171
`753-86404615-540a5aef071f8425e922f35ea8d
`22d72ba2f04e25f4c68dc9bd6e89c09578dc5e61
`-N/A-N/A-20150721163002920563
`
`(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.:
`
`Findly Talent LLC
`8640461 5
`
`Filed:
`Trademark Atty:
`Trademark:
`
`September 24, 2014
`Lana H. Pham
`ON DEMAND TALENT
`
`RESPONSE TO JANUARY 21, 2015 OFFICE ACTION
`
`This Response is filed in reply to the Office Action e-mailed on January 21, 2015. The Applicant
`
`respectfully submits the following response. Applicant submits that the above-identified trademark
`
`application for ON DEMAND TALENT is in condition for allowance to publication.
`
`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 Lana H.
`
`Pham raises a Section 2(d) refusal in a subsequent Office Action.
`
`APPLICANT’S MARK
`
`CITED REGISTERED MARK
`
`ON DEMAND TALENT TRANSF0Rk{gI%VEAIéE PRACTICE
`
`ON DEMAND TALENT
`
`Serial No. 86404645
`
`Registration. No. 4577441
`
`Date of First Use: 05/24/2010
`
`Date of First Use: 03/17/2014
`
`Class 035: Employment hiring, recruiting,
`placement, staffing and career networking
`services
`
`Class 035: Employment staffing in the field of
`law, law firms, and corporate legal departments;
`professional staffing and recruiting services;
`providing online employment information in law
`
`

`

`AN EXAMINATION OF THE MARKS AS TO APPEARANCE, SOUND AND MEANING
`DETERMINE THEY ARE NOT SIMILAR
`
`Under In re E. I. du Pant de Nemours & C0., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A.
`
`1973), the first factor requires examination of "the similarity or dissimilarity of the marks in their
`
`entireties as to appearance, sound, connotation and commercial impression."When considering the
`
`similarity of the marks, "[a]ll relevant facts pertaining to the appearance and connotation must be
`
`considered." Recot, Inc. v. MC. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1897 (Fed. Cir.
`
`2000). Moreover, the focus is on the recollection of the average purchaser who normally retains a
`
`general, rather than specific, impression of trademarks. See, e.g., In re M Sermcm & Company, Inc.,
`
`223 USPQ 52 (TTAB 1984).
`
`In the present case, the cited registration prominently features the terms
`
`“TRANSFORMING THE PRACTICE OF LAW,” which are stated within the mark. Given that
`
`“TRANSFORMING THE PRACTICE OF LAW” is stated, it is distinguishable from ON DEMAND
`
`TALENT in appearance, sound, and connotation. Additionally, the recollections of a general
`
`purchaser of the cited registrants’ goods will focus on “THE PRACTICE OF LAW” in reference to the
`
`mark rather than its additional terms.
`
`WHEN VIEVVED IN ITS ENTIRETY APPLICANTS MARK HAS A DISTINCT
`COMMERCIAL IMPRESSION
`
`Courts have held that the addition of different terms to common elements appreciably reduces the
`
`likelihood of confusion between two marks, even in cases Where the goods are highly similar. See
`
`USTrust V. US. States Trust C0,, 210 F. Supp 2d9 27-28 (D. Mass. 2002), (holding that UNITED
`
`STATES TRUST COMPANY not confusingly similar to UNITED STATES TRUST COMPANY OF
`
`BOSTON, both for financial services).
`
`

`

`Additionally, in In re Electrolyte Labs, 929 F.2d 645, U.S.P.Q. 2d 1239 (Fed. Cir. 1990), the Federal
`
`Circuit reversed the Trademark Trial and Appeal Board, and held that the marks “K+ and Design” and
`
`“K+ EFF” for “competitive dietary supplements” were not likely to be confused even if consumers
`
`would say “K—Plus” and “K—Plus EFF” when calling for products.” Id. The Court held that the “EFF”
`
`in the Registrant’s mark was a significant difference, and ruled that “No element of a mark is ignored
`
`simply because it is less dominant, or would not have trademark significance if used alone.” Id.
`
`Furthermore, a similar phrase found in two marks is not dispositive of a confusing similarity between
`
`the marks when the marks give off different commercial impressions. See Kellogg Co. v. Pack’em
`
`Enterprises, Inc, 951 F.2d 330 (Fed. Cir. 1991).
`
`In the present case, the marks give off different commercial impressions. The terms
`
`“TRANSFORMING THE PRACTICE OF LAW” immediately relays information about the nature of
`
`the cited Registrant’s services, which has a significant impact on the commercial impression. The
`
`cited registered mark creates an impression that the services provided and the provider of such services
`
`are not only focused on, but relate exclusively to the practice of law. Similar to the Kellogg case, in
`
`this case the phase found in both marks ‘on demand talent’ is not dispositive with respect to a
`
`determination of confusion since the mark ON DEMAND TALENT does not imply a service in the
`
`fielkd of law, nor in fact does the Application offer any services even remotely associated with such a
`
`field and thus the marks create distinctly different commercial impressions in the minds of the
`
`COHSUIIICI.
`
`REGISTRANTS CITED MARK IS NOT THE PRIMARY SOURCE OF IDENTIFICATION
`
`The cited registration is not the primary source of identification of the services offered by Registrant.
`
`The cited mark is an associated slogan or is the mere heading of the webpage. The mark associated
`
`

`

`with Registrant’s services is “Major, Lindsey & Africa,” or more appropriately “Solutions Practice
`
`Group” and not the cited registration (See Exhibit A). Thus, there is a distinct commercial impression
`
`between ON DEMAND TALENT and the cited registration.
`
`THE SERVICES ARE NOT OFFERED THROUGH THE SANIE CHANNELS
`
`Another factor is the similarity or dissimilarity of established, likely-to-continue trade channels. In re
`
`E. I. du Pom‘ de Nemours & Co., 476 F.2d at 1361, 177 USPQ at 567. In the instant case, this factor
`
`weighs heavily against a finding of a likelihood of COIlfilSl0I1 between the two marks. The Applicant
`
`does not offer its services through the same direct channels as the cited registrant. ON DEMAND
`
`TALENT is prominently displayed on the Applicant’s website such that consumers in search of a
`
`employment and recruiting services will clearly see the use of ON DEMAND TALENT in connection
`
`with those. The Registrant on the other hand, promotes itself primarily as “Major, Lindsey & Africa”
`
`or “MLA Solutions Practice Group” and does not use the cited mark as a means to promote itself. In
`
`either scenario consumers must go directly through the Applicant’s or Registrant’s specific website in
`
`order to associate the marks with the services offered. The services, offerings and providers of such
`
`services in each case when the Applicant is compared with the Registrant are so distinctly different
`
`that they are in fact different streams of commerce entirely. No corporation seeking recruiting
`
`services would likely confuse ON DEMAND TALENT TRANSFORMING THE PRACTICE OF
`
`LAW with the employment and recruiting services offered by the Application under the mark ON
`
`DEMAND TALENT. In fact, ON DEMAND TALENT and the cited registrant have
`
`oyed
`
`concurrent use for years without any incidents of actual confusion.
`
`SIMILAR MARKS FOR SIMILAR GOODS/SERVICES CAN BE REGISTERED
`
`Applicant further asseits 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. Courts have long
`
`held that the addition of different terms to a common element appreciably reduces the likelihood of
`
`confusion between two marks. See 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 confiising 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 confiisingly 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. Jllills Inc. v. Kellog Co., 824 F. 2d 622, 627, 3
`
`U.S.P.Q. 2d 1442, 1446 (8th Cir. 1987) (OATMEAL RAISIN CRISP not confiisingly 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. In the present case the additional terms ‘TRANSFORMING THE
`
`PRACTICE OF LAW’ distinguish it from Applicant’s registration.
`
`THE CITED MARK IS HIGHLY DESCRIPTIVE AND SUGGESTIVE AND THUS IS
`
`ENTITLED ONLY TO A VERY NARROW SCOPE OF PROTECTION
`
`Marks that are descriptive or highly suggestive are entitled to a narrower scope of protection, i.e., are
`
`less likely to generate COI1filS1OIl over source identification, than their more fanciful counterparts. See,
`
`e.g., Nat ’I Data Corp. V. Computer Sys. Eng ’g, Inc., 940 F.2d 676, at *2 (Fed. Cir. 1991)
`
`(unpublished); Drackett Co. v. H. Kohnstamm & Co., 404 F.2d 1399, 1400 (CCPA 1969) (“The scope
`
`of protection afforded such highly suggestive marks is necessarily narrow and confusion is not likely
`
`to result from the use of two marks carrying the same suggestion as to the use of closely similar
`
`goods”). As recently as July 20, 2015 Federal Circuit in Juice Generation, Inc. V GS Enterprises
`
`LLC, (Case No. 2014-1853 Fed. Cir. 2015) vacated the Trademark Trial & Appeals Board decision in
`
`

`

`holding that the Board gave inadequate consideration to the strength or weakness of Regjstrant’s
`
`marks. See Elec. Design & Sales, Inc. V. Elec. Data Sys. Corp., 954 F.2d 713, 718 (Fed. Cir. 1992)
`
`(noting the Board’s duty to consider all evidence when evaluating the likelihood of confusion between
`
`marks). The Court further reiterated that
`
`. .the strength of a mark is not a binary factor.” In re Coors,
`
`343 F.3d at 1345 , in that it “varies along a spectrum from very strong to very weak.” Id. In this case
`
`the cited mark is very descriptive, particularly when viewed in the context where it is used by the
`
`Registrant (see Exhibit A, attached hereto). In addition there are third party registrations, such as
`
`LAWONDEMAND (S/N 4725525), that are much more clearly in conflict with the Registrant and yet
`
`have been allowed registration as recently as February 15, 2015, “[the] real evidentiary value of third
`
`party registrations per se is to show the sense in which .
`
`.
`
`. a mark is used in ordinary parlance.” 2
`
`McCarthy on Trademarks and Unfair Competition § 11:90 (4th ed. 2015)
`
`LIKELIHOOD OF CONFUSION IS NOT 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 confusion 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. For at least the reasons cited above, Applicant respectfully asserts that the
`
`potential for confusion is not substantial. As such, the 2(d) refusal should be resolved in favor of the
`
`Applicant.
`
`SECTION 2(e)(1) REFUSAL — MARK IS MERELY DESCRIPTIVE
`
`Applicant submits a response to the potential section 2(e)(1) refusal; however, Applicant reserves all
`
`rights to provide a detailed and more descriptive response if Examining Attorney Lana H. Pham raises
`
`a Section 2(e)(1) refusal in a subsequent Office Action.
`
`

`

`APPLICANT’S MARK IS AT MOST SUGGESTIVE
`
`Applicant respectfully submits that the mark ON DEMAND TALENT for employment hiring,
`
`recruiting, placement, staffing and career networking services is at most suggestive and is not merely
`
`descriptive of Applicant’s goods. It is therefore deserving of registration on the Principal Register.
`
`A mark is merely descriptive only if it “immediately describes” the Applicant’s goods or services. Q
`
`re Econoheat Inc. 218 U.S. P. Q. 381, 383 (TTAB 1983)(emphasis in original). For a term to be
`
`classified as “merely descriptive,” the name must “immediately tell a potential customer what to
`
`expect in sum total of these concepts.” Holiday Inns, Inc. v. Monolith Enter, 21 U.S. P.Q. 949, 952
`
`(TTAB 1981). If the term used as a mark provides vague or indirect information about the goods or
`
`services, then the term is used in a “suggestive” manner. See J. McCarthy, McCarthy on Trademarks
`
`and Unfair Competition §11.19, at 11-26 (4th ed. 2002). To be deemed merely descriptive, a mark
`
`must directly provide the consumer with reasonably accurate knowledge of the characteristics of the
`
`product or service in connection with which it is used. If the information about the product or service
`
`is indirect or vague, then the mark is considered suggestive, not descriptive. E. See also Glamorene
`
`Products Corp. V. Boyle-Midway, Inc, 188 U.S.P.Q. 145 (S.D.N.Y. 1975) (finding that the mark
`
`SPRAY ‘N VAC is not merely descriptive of a no scrub rug cleaner and stating “a mark is not merely
`
`descriptive unless descriptiveness is its principle significance. A mark is not descriptive if it merely
`
`suggests the nature or class of the product on which it is used”)
`
`Applicant’s mark does not immediately and directly describe the services provided under the mark,
`
`thus, Applicant submits that its mark is “suggestive” and capable of registration on the Principal
`
`Register. Applicant’s mark does not immediately or directly tell the consumer what to expect. The
`
`

`

`mark does not immediately convey the precise nature of the services or exactly what is being offered
`
`by Applicant. In this case, while Applicant’s mark ON DEMAND TALENT may be suggestive in that
`
`it appeals to providing a service quickly it is not merely descriptive. The term “TALENT” refers to a
`
`broad class of services that could be offered. The term “TALENT” does not tell consumers that the
`
`services are for employment hiring. “TALENT” has several definitions, including, a power of mind or
`
`body considered as given to a person for use and improvement, professional actors collectively, or a
`
`special natural ability or aptitude (See Exhibit B). None of the aforementioned definitions include
`
`professional talent hiring, as cited by the Examining Attorney. The terms “DEMAND” denotes to ask
`
`with authority, a legal claim, or the desire to purchase coupled with the power to do so (See Exhibit
`
`C). The combination of “DEMAND” and “TALENT” does not call to mind any particular service. The
`
`terms “on demand talent” could evoke thoughts of an entertainment company that provides
`
`contortionists, hip-hop dancers, or even a clown to perform at birthday parties. Given the various
`
`services to which the mark could refer, it is evident the mark is not merely descriptive of Applicant’s
`
`goods. The term “DEMAND,” when juxtaposed with the term “TALENT,” does not merely describe
`
`Applicant’s services. The consumer must engage in a multi-stage reasoning process and exercise
`
`imagination to associate the mark with the goods it identifies.
`
`CONCLUSION
`
`Applicant has f11lly responded to the Office Action. A majority of the DuPont factors weigh in the
`
`Applicant’s favor and in favor of allowing registration. Furthermore, for at least the above reasons,
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`Applicant asserts that Applicant’s mark, ON DEMAND TALENT, is sufficiently distinct from the
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`cited registration, so as not to result in consumer confilsion. Applicant respectfully submits in good
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`faith that all potential 2(d) refusals, rejections, and/or objections have been overcome and that the
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`applied for mark is in condition for publication.
`
`

`

`To the extent the Examining Attorney finds Applicant's ON DEMAND TALENT mark to fall
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`within the “gray area" between obviously descriptive and suggestive marks, all doubts must be
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`resolved in Applicant's favor. In re Conductive Systems, Inc-., 220 U.S.P.Q. 84, 86 (TTAB
`
`1983) (where combination of two merely descriptive terms creates a mark that might be either
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`descriptive or suggestive, doubts are to be resolved in favor of applicants; refusal reversed); In
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`re Permwalt Corp, 173 U.S.P.Q. 317, 319 (TTAB 1972) (DRI-FOOT not merely descriptive
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`for antiperspirant foot deodorant; doubts to be resolved in favor of publication; refusal
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`reversed). Accordingly, the Examining Attorney should Withdraw the refusal under Section
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`2(e)(l).
`
`

`

`EXHIBIT A
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`Exhibit B
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`follow l')lctl:.~rvavv.<urvi
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`Word Origin
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`Examples
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`Synonyms
`noun
`1.
`a special natural ability or aptitude:
`a talent to: draw/n_t7.
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`a capacity for achievement or success; ability:
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`a talented person:
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`a group of persons with special ability:
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`a power of mind or body considered as given to a person for use and
`improvement: so called from the parable in Matt. 25:14—30.
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`performers.
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`a power of mind or body considered as given to a peison for use and
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`any of various ancient units of weight, as a unit of Palestine and Syria
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`d e m a n d ,1»)
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`[dih—mand, —mahnd]
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`Synonyms
`Examples
`Word Origin
`verb (used with object)
`1.
`to ask for with proper authority; claim as a right:
`He demanded payment of the debt.
`to ask for peremptorily or urgently:
`He demanded sanctuary. She demanded that we let her in.
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`to call for or require as just, proper, or necessary:
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`te lay fonnal legal claim to.
`to summon, as to court.
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`the act of demanding.
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`something that is demanded.
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`an urgent or pressing requirement:
`demands upon ane‘s time.
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`Q Word Value for demand
`
`Econom’-C5~
`a.
`the desire to purchase, coupled with the puwer to du 50.
`b.
`the quantity of goods that buyers will take at a particular price.
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`Scrabble
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`Words With
`F'l°"d5
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`10.
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`a requisition; a legal claim:
`The demands of the Client could not be met.
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`Dictionary Thesaurus Translate More...
`Xmctionarycom demand
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`b.
`
`the quantity of goods that buyers will take at a particular DFICE.
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`10. a requisition; a legal claim:
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`
`11.
`
`the state of being wanted or sought for puithase or Lise:
`an avlitfr iii meal ijeiiiari-J,
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`12. Archarc. inquiry; question.
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`Idloms
`13. on demand, upon presentation OI‘ request for payment:
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`Related Words
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`ca ll
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`challenge
`requisition
`acceleration principle
`biochemical oxygen demand
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`Origin of demand
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`Respectfully submitted,
`/Thomas M Dunlap/
`Thomas M. Dunlap (Virginia Bar)
`Attorney of Record for the Applicant
`
`