MARK: EMPOWUR
SERIAL NUMBER: 77/753566
EXAMINER: BOAGNI, MARY

The Office Action dated 4/8/2010:
1. continues the refusal under Section 2(d) in connection with Registration
# 2,789,116 for the mark MPOWER; and
2. adds an additional ground for refusal in connection with Registration # 3,761,835
for the mark EMPOWER PARTIES.

REGISTRATION NUMBER 2,789,116 FOR MPOWER
Applicant notes that U.S. Registration # 2,789,116 is no longer alive. Subsequent to the
Office Action, the MPOWER registration was cancelled under Section 8.

Applicant is making the status of MPOWER part of the record by attaching a true and
correct copy of the registration information obtained from TESS. TESS records are
sufficient to make registration information part of the record. See, TMEP 710.03 “To
make registrations of record, soft copies of the registrations or the complete electronic
equivalent (i.e., complete printouts taken from any of the USPTO’s automated systems
(X-Search, TESS, TARR, or TRAM)) must be submitted.”

The MPOWER registration is cancelled; it is dead. Therefore, it no longer is a basis to
refuse registration to Applicant. A dead mark cannot cause a likelihood of confusion.

REGISTRATION NUMBER 3,761,835 FOR EMPOWER PARTIES
Application # 77/682,626 matured to registration, and is now U.S. Registration
# 3,761,835. The Office Action refuses registration of Applicant’s mark because of
alleged likelihood of confusion.

EMPOWER PARTIES is sufficiently different from Applicant’s mark so that there is no
likelihood of confusion. Likelihood of confusion is extensively analyzed in In re E. I. du
Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973).
The “number and nature of similar marks in use on similar goods” is the sixth du Pont
factor. Similar third party registrations are evidence of a weak mark. As stated in the
TMEP:

“If the evidence establishes that the consuming public is exposed to third-party
use of similar marks on similar goods, this evidence “is relevant to show that a
mark is relatively weak and entitled to only a narrow scope of protection.”
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772,
396 F.3d 1369, 1373, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005).”
TMEP § 1207.01(d)(iii)
Here, EMPOWER PARTIES is a very weak mark, and is thus entitled to only a narrow
scope of protection. Pursuant to TMEP § 710.03 Applicant is submitted evidence from
TESS of other similar registrations. These marks are similar in sight, sound and
appearance. All of the similar registrations are in the same International Class as
EMPOWER PARTIES, and all provide similar services.

The submitted evidence shows:
U.S. Registration # 2859681 for EMPOWER, in class 041.
U.S. Registration # 3672156 for EMPOWER, in class 041.
U.S. Registration # 3372471 for IMPOWER, in class 041.

These registered marks are so similar in sight, sound, appearance and services provided,
that customers will pay particular attention to distinguish the marks.

“Third-party registrations may be relevant to show that the mark or a portion
of the mark is descriptive, suggestive, or so commonly used that the public
will look to other elements to distinguish the source of the goods or
services. See, e.g., AMF Inc. v. American Leisure Products, Inc., 474 F.2d
1403, 1406, 177 USPQ 268, 269-70 (C.C.P.A. 1973) (emphasis added); Plus
Products v. Star-Kist Foods, Inc., 220 USPQ 541, 544 (TTAB 1983).”
TMEP § 1207/01(d)(iii).

Moreover, Applicant’s mark is far more different from the cited reference than these
registered marks are from each other. The cited reference is for EMPOWER PARTIES,
and applicant’s mark is for EMPOWUR. The Examining Attorney has provided no
reason why customers can distinguish between EMPOWER (#3672156), EMPOWER
(#2859681), and IMPOWER (#3372471), yet will be unable to distinguish EMPOWER
PARTIES from EMPOWUR.

In the present case, the evidence of similar registration shows that EMPOWER PARTIES
is a weak mark, entitled to only narrow protection. This evidence also shows that
customers will exercise care when obtaining services.

The second du Pont factor is similarity of goods/services. The PTO has allowed many
applicants to register versions of the word “empower” for small differences in the
classification of services. The evidence submitted with this Response show that small
differences in the classification of services are sufficient to distinguish these marks.

The cited reference, U.S. Registration # 3761835 for EMPOWER PARTIES provides
services in Class 041 of “Life coaching services in the field of personal growth and
professional growth; personal coaching services in the field of personal growth;
providing group coaching and learning forums in the field of leadership development.”

U.S. Registration # 3372471 for IMPOWER provides services in Class 041 of “Career
counseling.”
U.S. Registration # 2859681 for EMPOWER provides services in Class 041 of
“Providing on-line publications, namely educational curricula in the nature of
instructional, educational and teaching materials in the field of mathematics.”

U.S. Registration # 3672156 for EMPOWER provides services in Class 041 of
“Educational services, namely providing classes, seminars, and conferences in the field of
chronic kidney disease.”

Applicant’s proposed services are in Class 045 for “Educational services, namely
encouraging personal growth and self-improvement in an interactive on-line format.”

Thus, Applicant’s proposed services are in an entirely different international
classification than the cited reference. Furthermore, Applicant’s proposed services are
entirely different than the cited reference. EMPOWER PARTIES coaching services that
are done in person. This is essentially identical to the “career coaching” services, done in
person, provided by IMPOWER.

Applicant will provide on-line services. Thus, Applicant’s services are far more different
from the cited reference than the differences between EMPOWER PARTIES and
IMPOWER. The PTO clearly believes that customers can distinguish between
EMPOWER PARTIES’ professional coaching services and IMPOWER’s career
counseling services. There is no logical reason why customers cannot distinguish
between EMPOWER PARTIES’ personal services and EMPOWUR’s proposed on-line
services.

The PTO has already allowed registration of many similar marks for similar services.
The PTO is estopped to now claim that customers have suddenly become unable to
distinguish between small differences in the sight, sound and appearance of the marks.
Likewise, the PTO is estopped to now claim that customers have suddenly become
unable to distinguish between different services provided under different marks.

For the foregoing reasons, Applicant requests registration of the pending mark.