I hereby certify that this correspondence is being
deposited with the United States Postal Service. with
suf?cient postage, as ?rst class mail in an envelope
addressed to: Commissioner for Trademarks. PO.
Box l45l, Alexandria VA 223 13-145] on the date
shown below:

Typed or Printed Name ochrson Signing Certi?cate

Signature

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

Applicant: Glam Media. Inc.
. Examining Attorney
Mark: BRASH : Linda A. Powell
‘ Law Of?ce 117
Serial No.: 77/730,765

Int. Classes: 35, 38, 39, 41, 42, 43, 44, 45

Filing Date: May 6, 2009

Our Ref; GLAMM-007

RESPONSE TO OFFICE ACTION DATED AUGUST 4, 2009

Commissioner for Trademarks
PO. Box 1451
Alexandria VA 22313-1451

The Applicant, Glam Media, Inc. (the “Applicant”), acknowledges receipt of Of?ce

Action No. 1, dated August 4, 2009 (the “Of?ce Action”), of Examining Attorney Linda A.

Powell, Esq. (the “EA”) in connection with the above—referenced application for registration (the

“Application”) of the mark BRASH (“Applicant’s Mar ”). Please enter the following

Amendment and consider the following Response to the Of?ce Action.

Al73‘232250 3
1. AMENDMENT

A. Identi?cation of Services

Please delete the current identi?cation of services in intemational classes 35, 39, 41, 43,

44 and 45 and insert the following:

Advertising and promoting the products and services of others, namely,
automobiles, apparel, fashion accessories, footwear, bags, jewelry, watches,
eyewear and related accessories, beauty and skincare products, lotions, cologne,
books, movies, music, housewares, electronics and technology, computers,
computer software, computer games, pet goods, greeting cards, travel, foods,
beverages, ?tness and health, all via a global computer network; providing
commercial information featuring product ratings and evaluations of the
consumer goods of others; providing commercial information regarding retailer
locations; providing consumer information regarding product descriptions,
product availability, discounts and promotions, product features and purveyor
reviews, all in the ?elds of apparel, fashion accessories, footwear, bags, jewelry,
watches, eyewear and related accessories, beauty and skincare products, lotions,
cologne, books, movies, music, housewares, electronics and technology,
computers, computer software, computer games, pet goods, greeting cards, travcl,
foods, beverages, ?tness and health; providing a website featuring consumer
information about housewares, electronics and technology, computers, computer
software, computer games, pet goods, and greeting cards, in international class
,
.95;

Providing a website featuring information about travel and automobiles, in
international class 39;

Providing information in the ?eld of ?tness; providing a website featuring
entertainment information about books, movies, music and sports, in international
class 41;

Providing information in the field of foods and beverages, in international class
43;

Providing information in the ?eld of health; providing information about men’s
appearance and skincare, namely, the use of lotions, colognes, toiletries and
products for personal grooming and hygiene, in international class 44;

Providing a website featuring men’s fashion information about men’s apparel,
fashion, fashion accessories, footwear, bags, jewelry, watches, eyewear. and
related accessories; intemet based social networking and social introduction
services; computer social introduction services; providing an on-line computer
service by creating an on—line community environment for use in social
introduction and interaction featuring and sharing personal information about
individuals, in international class 45.

N73 282250. 3
The identi?cation of services in international class 38 is acceptable as written. In addition, the

EA has raised no objection to the description of services in class 42.

II. RESPONSE TO REFUSAL BASED ON TRADEMARK ACT SECTION 21d)

A. Background

The Examining Attorney has initially refused registration of Applicant’s Mark under

Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), on the asserted ground that the

Applicant’s Mark when used in connection with Applicant’s class 45 services (as amended

above) is likely to be confused with the marks BRASH and BRASH (and Design), shown in US.

Registration Nos. 3238076 and 3105175, both owned by Jennifer Kroslak (the “Registrant”), for

use in connection with “men’s, boy’s, women’s, girl’s and children’s shirts, blouses. jackets,

coats. t-shirts, vests. sweaters, denim jackets, neckwear, belts. baby bibs not ofpaper, headwear

and hats” (referred to herein as the “Registrant’s Goods”). In addition, the Examining Attorney

has advised that the Applicant’s Mark may not be entitled to registration for Applicant’s class 35

services due to a prior pending application for the mark BRASH BRANDS. shown in US.

Application Serial No. 77/691,518, owned by Brash Holdings International Limited (the “Prior

Applicant”), for use in connection with “advertising, promotional and marketing services;

business management services: advertising and production of advertising matter and

commercials; public relations services: market research and market analysis; conducting market

research surveys; research and information services relating to business; advisory services

relating to marketing; advertising and marketing media research and consultancy; conducting

research market studies; brand concept and brand identity development services for corporate

clients; brand imagery consultancy services; organizing exhibitions for commercial or

advertising purposes; providing online information in the field ofadvertising, promotional and

marketing services” (referred to herein as the “Prior Applicant’s Services“). The Applicant
1V73‘2822503
4

respectfully appeals the EA’s refusal and potential refusal on the basis that Applicant’s use of the

mark BRASH in connection with the services identi?ed in Section 1, above (as amended) (the

“Applicant‘s Services”), is not likely to cause confusion with the BRASH or BRASH (and

Design) marks (the “Registrant’s Marks”) used in connection with the Registrant‘s Goods or the

BRASI-I BRANDS mark (the “Prior Applicant’s Mark”) used in connection with the Prior

Applicant’s Services.

Applicant contends, as set forth in greater detail below, that Applicant’s Mark is not

confusingly similar to Registrant’s Marks or the Prior Applicant’s Mark (together, the “Cited

Marks”) because: (1) the Applicant’s class 45 services are distinguishable from the Registrant’s

Goods, and the Applicant’s Services (speci?cally, Applicant’s class 35 services) are

distinguishable from the Prior Applicant’s Services; (2) the Applicant’s established, likely—to-

continue trade channels (website marketed to men featuring information about the latest trends in

men’s fashion, automobiles, ?tness, technology, and other popular men’s topics) are suf?ciently

distinct from those employed by the Registrant (online retail shop selling t-shirts, sweatshirts and

caps) and those employed by the Prior Applicant (creative agency providing brand strategy and

design services), making it highly unlikely that relevant consumers would encounter Applicant’s

Mark and the Cited Marks together or even in close proximity; and (3) in the ease of the BRASH

BRANDS application, the parties’ respective marks are distinguishable in terms of appearance,

sound, connotation and commercial impression. See In re 1%.]. du Pont de Nemours & Co., 476

F.2d 1357, 177 U.S.P.Q. (BNA) 563 (C.C.P.A. 1973).

B. No Likelihood of Confusion.

The fact that two or more marks may share some similarities is not, by itself, dispositive

of the issue of likelihood of confusion. Confusion can be considered unlikely even in a case

where the two marks are identical or share common terms, as long as other factors in the analysis

.M7132822503
5

of confusing similarity outweigh the marks’ similarities, such as where the goods and/or services

are different and highly specialized, the channels of trade are different, and other factors weigh

in favor of the marks’ ultimate distinguishability. The test for determining whether two marks

are confusingly similar includes the following signi?cant factors, among others: (1) the

relatedness of the goods and/or services identified by each mark; (2) the similarity in the

channels of trade; and (3) the similarity or dissimilarity of the marks in their entireties as to

appearance, sound, connotation and/or commercial impression. See T.M.E.P. § 1207.01 (2007).

The Examining Attorney must consider these factors, along with other pertinent factors “if

relevant evidence is contained in the record.” T.M.E.P. § 1207.01 (citing In re Majestic

Distilling Co.. 315 F.3d 1311, 1315 (Fed. Cir. 2003)). No one factor is determinative of the

likelihood of confusion. Rather, the Examining Attorney must look at the cumulative effect of

the factors. The factors are interrelated and must be considered together as an “amalgam.” See

Sun Fun Prods. v. Suntan Resources & Dev. lnc.. 656 F. 2d 186, 189, 213 U.S.P.Q. 91, 93 (5″‘

Cir. 1981).

l. The Goods and Services Provided Under the Cited Marks are
Distinguishable From the Applicant’s Services.

In resolving a con?ict based on an alleged likelihood of confusion, the concern should

lay with the practicalities of the commercial world, with which the trademark laws deal, rather

than with the “mere theoretical possibilities” of confusion or de minimis situations. Witco

Chemical Com an v. Whit?eld Chemical Com an Inc.. 164 U.S.P. . 43. 44 CCPA 1969 .

See also In re Massey-Ferguson. Inc., 222 U.S.P.Q. 367 (T.T.A.B. 1983) (finding that the remote

possibility of confusion was not enough to deny registration where the applicant’s services

involved manufacturing farm equipment and maintaining spare parts inventories and the

registrant produced computer hardware items, even though the parties’ marks, ECOM and E-

COM. were virtually identical).
A/732822503
6

Applicant notes that “the issue of whether or not two [goods and/or services] are related

does not revolve around the question of whether a term can be used that describes them both, or

whether both can be classi?ed under the same general category.” Electronic Data Sys. Com. v.

EDSA Micro Corp, 23 U.S.P.Q.2d 1460. 1463 (T.T.A.B. 1992) (?nding that all computer

software programs are not related). In Electronic Data Sys. C039, the T.T.A.B. rejected “the

view that a relationship exists between goods and services simply because each involves the use

of computers.” See also Everest Capital Ltd. v. Everest Funds Mgmt., I..L.C.. et al., 393 F.3d

755, 73 U.S.P.Q.2d 1580 (8th Cir. 2005) (upholding ajury decision that EVEREST CAPITAL,

used in connection with investment advisor and hedge fund services, is not likely to be confused

with EVEREST FUNDS MANAGEMENT, used in connection with investment advisory and

mutual funds services).

The court in RealNetworks Inc. v. QSA Toolworks LLC was also charged with

determining whether a likelihood of confusion existed between two software products marketed

under the identical HELIX trademark. The RealNetworks court held that the plaintiff’s

streaming-media delivery and management software was suf?ciently distinct from defendant’s

software – which was used for creating applications which manage and modify information in

relational databases – as to preclude a likelihood of confusion among consumers. RealNetworks

Inc. v. QSA ToolWorks LLC, 92 U.S.P.Q.2d 1720 (W.D.Wash. 2009). In reaching its decision,

the court stressed that it had failed to ?nd any of the defendant‘s applications which overlapped

with the core functionality of the plaintiff’s streaming media delivery and management software.

E. at 1724. Even though the parties each produced computer software under an identical mark,

and even though the defendant’s software was used in conjunction with media-streaming

programs like the plaintiffs, the court held that the nexus between the goods in question was not

suf?cient to establish a likelihood of confusion.
7

In the present case, the Applicant is in the business of providing online information

geared and marketed to teenage and adult males in a variety of popular subjects, such as men‘s

fashion, celebrities, music, sports, books, technology and ?tness. In sharp contrast, the

Registrant is in the business of producing t-shirts, sweatshirts and caps for men, women and

children. See screenshots from Registrant‘s website, located at www.jenniferkroslak.com,

submitted herewith as Exhibit A. While the Applicant provides information in the ?eld of

fashion, it does not itself engage in the design, manufacturing or sale of apparel. Logically, if

the Electronic Data Sys. Com. Board found that all computer software programs are not related

merely because they fall under the same general category, then surely a distinction can be made

between a website providing general information on men’s fashion trends and the sale of apparel

itself.

A similar distinction can be made with respect to the Prior Applicant’s Services. The

Prior Applicant is a company designed to assist businesses in developing their public presence in

the market, whether that be through creating a marketing and advertising scheme, identifying and

targeting a particular market or consumer group, or creating a brand identity for its clients. Sec

screenshots from Brash Holdings‘ website, located at www.brashbrands.com, submitted herewith

as Exhibit B. While the Applicant does place the advertisements of others on its website in

order to generate revenue, it does not itself create brand strategies or designs. In fact, advertisers

on Applicant’s BRASl-I website come to Applicant only after their brands have been developed

and take advantage of Applicant’s advertising opportunities to obtain visibility for their brands.

The Applicant does not compete in any way with the Prior Applicant, and as such. there is

simply no likelihood that consumers would confuse the Applicant’s Mark for the Prior

Applicant‘s Mark or vice versa.

N732822503
8

The Applicant’s Services have completely different functions, purposes and goals than

those of the Registrant’s Goods and the Prior Applicant’s Services. In the words of the

RealNetworks court. “the core functionality” of the respective parties’ goods and services do not

overlap, and on this basis, the Applicant respectfully submits there is no likelihood of consumer

confusion between the marks.

Although the Examining Attorney bases her ?nding of a likelihood of confusion on the

grounds that the respective parties’ marks, goods and services are nearly identical, the Applicant

respectfully asserts that the goods and services sold under the respective parties~ marks are not

only mt identical but in fact very distinct by virtue of the divergent “core functionality” of the

respective parties’ products and services and the manners in which they are delivered to

consumers. ‘llic present circumstances are much like those in Electronic Data Sys. Corp. and

RealNetworks Inc., where the respective parties produced the same type of goods and/or services

within the same general ?eld of business. In both cases, the Board and court refused to ?nd any

relationship between the parties” goods and services simply because each involved the use of

computers (Electronic Data Sys. Corp.) or the production of software (RealNetworks lnc.). It

therefore follows that the alleged relatedness of the Applicant’s male-targeted online

informational services in ?elds of interest to men, including fashion generally, on the one hand,

and the t-shirts, sweatshirts and caps sold under the Registrant’s Marks, on the other, does not

hinge on “the question of whether a term can be used that describes them both, or whether both

can be classi?ed under the same general category.” Electronic Data Sys. C03}, 23 U.S.P.Q.2d at

1463. The same is true for the alleged relatedness of the Applicant‘s Services of providing

advertising opportunities to third party advertisers. on the one hand, and the Prior Applicant’s

brand development strategy and design services, on the other.

N732822503
9

The Applicant respectfully submits that any similarity between Applicant’s Services and

either the Registrant’s Goods or the Prior Applicant’s Services is tangential at best and wholly

insuf?cient to ?nd the respective parties’ goods and services “related” for purposes of a

likelihood of confusion refusal. Relying on the factors set forth above, as well as the precedent

set in Witco Chemical Co., the Applicant submits that, rather than relying on “mere theoretical

possibilities” of confusion or de minimis situations, the concern in this case should be with the

practicalities of the commercial world. See Witco Chemical Co., 164 U.S.P.Q. 43, 44 (CCPA

1969). On this basis, the Applicant respectfully submits that there is simply no likelihood of

confusion between the Applicant’s use of the Applicant’s Mark and either the Registrant‘s or the

Prior Applicant‘s use of their respective marks. That is particularly true where, as here (and as

discussed below), the parties’ established, likely-to—continue trade channels are distinct, and, in

the case of the BRASH BRANDS application, the Applicant’s and Prior Applicant’s marks differ

as to sight, sound and commercial impression. As such, Applicant’s mark is entitled to

registration on the Principal Register.

2. The Respective Parties’ Existing and Likely-to—Continue Channels of
Trade are Distinguishable.

An additional factor in determining likelihood of confusion is “the similarity or

dissimilarity of established, likely to continue trade channels.” T.M.E.P. § 1207.01 For there to

be confusion as to source, connection or sponsorship of the goods and/or services of the

Applicant, on the one hand, and the Registrant’s Goods or the Prior Applicant‘s Services, on the

other, the respective parties‘ goods/services would have to be of such a nature that they would

come to the attention of the same kinds of purchasers. See In re Shipp, 4 U.S.P.Q.Zd 1174

(T.T.A.B. 1987) (applicant’s PURITAN mark for laundry and dry cleaning services rendered to

consumers will not likely cause confusion with the cited trademark PURITAN for commercial

A1732822503
10

dry cleaning machine ?lters sold only to dry cleaning professionals; it is unlikely that applicant’s

customers would ever encounter any of the commercial goods sold under the cited mark); Oxford

Industries. Inc. v. JBJ Fabrics Inc., 6 US. P.Q.2d 1756 (S.D.N.Y. 1988) (where plaintiff sells

JBJ garments through retail channels to consumers, defendant, a fabric printer, doing business

under the JBJ mark, sells its converted fabric to garment manufacturers; the parties’ products are

“marketed through distinctly different channels of commerce”; no likely confusion found); Local

Trademarks, Inc. v. Handy Boys, Inc., 16 U.S.P.Q.2d 1156 (T.T.A.B. 1990) (applicant’s LITTLE

PLUMBER liquid drain opener sold to consumers will not likely cause confusion with

opponent’s LITTLE PLUMBER advertising agency services for professional plumbing

contractors; because the goods and services are sold through different channels. there is no

likelihood of confusion).

As in the cases cited above, the Applicant’s Services and the goods and services provided

under the Cited Marks are marketed through very different channels of trade. With respect to the

Registrant’s Marks, the Applicant notes that the Registrant markets her goods to a very particular

group – consumers looking to directly purchase a speci?c brand of clothing items designed for

men. women, and children. In sharp contrast, the Applicant does go_t sell its own branded goods,

nor does it market its services to consumers looking to purchase a particular item produced by a

speci?c manufacturer. Rather, it provides a wide variety of information to a vast consumer

group of internet users about issues of interest to men, a component of which pertains to men’s

fashion. The circumstances in the present case are very much like those in Local Trademarks,

where no likelihood of confusion was found based on the fact that one party directed its services

to the niche group of plumbing contractors, while the other marketed its product to the general

public.

N7328225UJ3
ll

The In re Shipp case is instructive when comparing the channels of trade utilized by the

Applicant and the Prior Applicant. As stated above, the Applicant markets its advertising

services to businesses looking to place their developed brand in front of male consumers. In

contrast, the Prior Applicant’s services are directed to a very narrow, speci?c group of

consumers – professional companies seeking assistance in their brand development and design

strategy. As the Prior Applicant’s Services are marketed only to companies looking to create

and develop a brand, and Applicant’s advertising services are – logically – only employed by

companies with an existing, developed brand, inevitably the channels of trade in which the

Applicant and the Prior Applicant market their respective services differ dramatically. Such

fundamental differences in the respective parties’ target customers and channels of trade provide

additional critical evidence that the services offered by the Applicant and the goods and services

offered by the Cited Owners will almost certainly never come to the attention of the same

purchasers, making confusion highly unlikely. Under the precedent set in Local Trademarks and

In re Shipp, the present circumstances allow for the coexistence of the respective parties” marks

on the Principal Register without causing a likelihood of confusion.

Based on the foregoing, namely, differences in the respective parties’ goods and services

and their channels of trade, the Applicant respectfully submits that its BRASH mark is

suf?ciently distinguishable from the Cited Marks as to avoid a likelihood of confusion in the

minds of consumers. Moreover, as discussed further below, the appearance, sound, meaning and

commercial impression provided under the Applicant’s and Prior Applicant’s marks are

suf?ciently distinct as to distinguish these two marks even further. As such, Applicant

respectfully submits that its BRASH mark is entitled to registration on the Principal Register.
l2

3. The Applicant’s Mark is Dissimilar to the BRASH BRANDS Mark
in Appearance, Sound, Connotation and Commercial Impression.

When determining whether a likelihood of confusion exists between two marks, the

points of comparison for a word mark are appearance, sound, meaning. and commercial

impression. Palm Bay Imports, Inc. v. Veuve Clicquo! Ponsardin Maison Fondee en 1 772, 396

F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005), citing In re E. I. du Pont a’e Nemours &

Ca. 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). See T.M.E.P. § 1207.01.

A number of these points were examined by the court in NEC Electronics. Inc. v. New

England Circuit Sales. Inc. In that case, the owner of a federal registration for the acronym

mark NEC for electronic components including computer chips brought an infringement action

against an independent computer chip broker who marketed his goods under the mark NECS.

NEC Electronics. Inc. v. New England Circuit Sales, Inc., 722 F.Supp. 861, 862, 13 U.S.P.Q. 2d

1058 (D.Mass. 1989). The parties’ marks were nearly identical, distinguishable by only the

addition of the letter “S” in the broker’s mark. The registrant sold ninety-eight percent of its

product to original equipment manufacturers, which would then incorporate these products into

numerous types of electrical goods. I_d. at 862. The broker, on the other hand, sold seventy

percent of its product to other independent chip distributors. Q The court found that both

companies sold, within the same industry, similar (and in some circumstances the same) goods,

and had both advertised in the same trade publications. used direct mail solicitation and

conducted extensive business by telephone. I_d_. at 862-63. Moreover, it found the parties had

even sought to sell to some of the same organizations. Lg Nevertheless, after careful

consideration of the relevant factors, the NEC Electronics court held that the nature of the

products, the sophistication of the prospective consumers, and the particular nature of the parties”

self—promotion, all weighed against a ?nding of confusion, and held that the broker had not

infringed the registrant‘s mark. 19L. at 867.

:V735282250.Ii
l3

ln this case, there are substantially greater and more signi?cant differences between the

Applicant’s and Prior Applicant‘s marks, as well as their respective services and customers, than

in the NEC Electronics case, and these signi?cant differences outweigh the marks’ similarities.

At the outset, Applicant notes that its mark is distinct from the cited BRASH BRANDS mark in

sight, sound, and appearance. While Applicant’s BRASH mark shares the term “BRASH” with

the BRASH BRANDS mark, the inclusion of the term “BRANDS” in the cited prior application

distinguishes the marks as a whole. This term, when coupled with the term “BRASH,”

immediately conveys a distinct impression in the mind of consumers, namely, one of a branding

agency that specializes in developing brands that are risque, brazen or loud in nature. In

contrast, Applicant’s Mark conveys merely an ambiguous concept of these qualities and provides

no concept of the speci?c nature of its services. On this basis, the Applicant asserts that the

marks not only differ materially in sound, appearance and meaning, they also create different

commercial impressions. This is especially true in light of the holding in NEC Electronics,

where the acronym marks were distinguished by only a single letter, yet no likelihood of

confusion was found even where the parties sold the same goods in the same industry via the

same means of advertising.

When taken into consideration with the signi?cant differences between the Applicant’s

Services and the Prior Applicant’s Services, coupled with the distinctions between the parties”

channels of trade. both of which effectively eliminate altogether the possibility that consumers

would encounter the marks together or even in close proximity, the Applicant respectfully

submits that consumer confusion is highly unlikely in the present case. As such, Applicant‘s

BRASH mark is entitled to registration on the Principal Register.

1V732822503
14
Q CONCLUSION

For the reasons set forth in detail above, Applicant submits that Applicant’s Mark is

entitled to registration on the Principal Register. By this Response, the Applicant believes it has

satisfactorily addressed the issues raised by the EA in the Of?ce Action, and. therefore.

respectfully requests that the EA approve Applicant’s Mark for publication at an early date.

The Applicant respectfully requests that the EA telephone Rachelle A. Dubow. Esq. at

(617) 951—8939 if the EA has any further questions regarding the Application.

Respectfully submitted,
-_
‘4’

David 0. Johe‘inson
Rachelle A. Dubow
Devon R. Sparrow
Bingham McCutchen LLP
One Federal Street
Boston, MA 02110

Attorneys for the Applicant,
Glam Media, Inc.

N7328225013