MODE MEDIA CORPORATION
Providing on-line communications links that transfer a website user to other local and global web pages
United States Patent and Trademark Office (USPTO)
Office Action Response
Outgoing Trademark Office Action
Trademark Office Action Response
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 abovereferenced application for registration (the
Application) of the mark BRASH (Applicants Mar ). Please enter the following
Amendment and consider the following Response to the Of?ce Action.
Al73232250 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 mens
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 mens 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 online 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 Applicants Mark under
Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), on the asserted ground that the
Applicants Mark when used in connection with Applicants 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 mens, boy’s, womens, 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 Registrants Goods). In addition, the Examining Attorney
has advised that the Applicants Mark may not be entitled to registration for Applicants 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 Applicants Services). The Applicant
1V732822503
4
respectfully appeals the EAs refusal and potential refusal on the basis that Applicants use of the
mark BRASH in connection with the services identi?ed in Section 1, above (as amended) (the
“Applicants Services), is not likely to cause confusion with the BRASH or BRASH (and
Design) marks (the “Registrants Marks) used in connection with the Registrants Goods or the
BRASI-I BRANDS mark (the Prior Applicants Mark) used in connection with the Prior
Applicants Services.
Applicant contends, as set forth in greater detail below, that Applicants Mark is not
confusingly similar to Registrants Marks or the Prior Applicants Mark (together, the Cited
Marks) because: (1) the Applicants class 45 services are distinguishable from the Registrants
Goods, and the Applicants Services (speci?cally, Applicants class 35 services) are
distinguishable from the Prior Applicants Services; (2) the Applicants established, likelyto-
continue trade channels (website marketed to men featuring information about the latest trends in
mens fashion, automobiles, ?tness, technology, and other popular mens 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 Applicants
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 Applicants 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 applicants 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 plaintiffs
streaming-media delivery and management software was suf?ciently distinct from defendants
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 defendants 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 defendants 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 mens
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 Registrants 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 mens fashion trends and the sale of apparel
itself.
A similar distinction can be made with respect to the Prior Applicants 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 Applicants BRASl-I website come to Applicant only after their brands have been developed
and take advantage of Applicants 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 Applicants Mark for the Prior
Applicants Mark or vice versa.
N732822503
8
The Applicants Services have completely different functions, purposes and goals than
those of the Registrants Goods and the Prior Applicants 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 Applicants 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 Registrants 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 Applicants Services of providing
advertising opportunities to third party advertisers. on the one hand, and the Prior Applicants
brand development strategy and design services, on the other.
N732822503
9
The Applicant respectfully submits that any similarity between Applicants Services and
either the Registrants 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 Applicants use of the Applicants Mark and either the Registrants or the
Prior Applicants use of their respective marks. That is particularly true where, as here (and as
discussed below), the parties established, likely-tocontinue trade channels are distinct, and, in
the case of the BRASH BRANDS application, the Applicants and Prior Applicants marks differ
as to sight, sound and commercial impression. As such, Applicants mark is entitled to
registration on the Principal Register.
2. The Respective Parties Existing and Likely-toContinue 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 Registrants Goods or the Prior Applicants 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) (applicants 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 applicants
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) (applicants LITTLE
PLUMBER liquid drain opener sold to consumers will not likely cause confusion with
opponents 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 Applicants Services and the goods and services provided
under the Cited Marks are marketed through very different channels of trade. With respect to the
Registrants 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 mens
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 Applicants 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 Applicants Services are marketed only to companies looking to create
and develop a brand, and Applicants 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 Applicants 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 Applicants 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 ae 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 brokers 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
selfpromotion, all weighed against a ?nding of confusion, and held that the broker had not
infringed the registrants mark. 19L. at 867.
:V735282250.Ii
l3
ln this case, there are substantially greater and more signi?cant differences between the
Applicants and Prior Applicants 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 Applicants 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, Applicants 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 Applicants
Services and the Prior Applicants 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, Applicants
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 Applicants 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 Applicants Mark for publication at an early date.
The Applicant respectfully requests that the EA telephone Rachelle A. Dubow. Esq. at
(617) 9518939 if the EA has any further questions regarding the Application.
Respectfully submitted,
-_
4’
David 0. Joheinson
Rachelle A. Dubow
Devon R. Sparrow
Bingham McCutchen LLP
One Federal Street
Boston, MA 02110
Attorneys for the Applicant,
Glam Media, Inc.
N7328225013
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 abovereferenced application for registration (the
Application) of the mark BRASH (Applicants Mar ). Please enter the following
Amendment and consider the following Response to the Of?ce Action.
Al73232250 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 mens
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 mens 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 online 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 Applicants Mark under
Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), on the asserted ground that the
Applicants Mark when used in connection with Applicants 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 mens, boy’s, womens, 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 Registrants Goods). In addition, the Examining Attorney
has advised that the Applicants Mark may not be entitled to registration for Applicants 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 Applicants Services). The Applicant
1V732822503
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respectfully appeals the EAs refusal and potential refusal on the basis that Applicants use of the
mark BRASH in connection with the services identi?ed in Section 1, above (as amended) (the
“Applicants Services), is not likely to cause confusion with the BRASH or BRASH (and
Design) marks (the “Registrants Marks) used in connection with the Registrants Goods or the
BRASI-I BRANDS mark (the Prior Applicants Mark) used in connection with the Prior
Applicants Services.
Applicant contends, as set forth in greater detail below, that Applicants Mark is not
confusingly similar to Registrants Marks or the Prior Applicants Mark (together, the Cited
Marks) because: (1) the Applicants class 45 services are distinguishable from the Registrants
Goods, and the Applicants Services (speci?cally, Applicants class 35 services) are
distinguishable from the Prior Applicants Services; (2) the Applicants established, likelyto-
continue trade channels (website marketed to men featuring information about the latest trends in
mens fashion, automobiles, ?tness, technology, and other popular mens 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 Applicants
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 Applicants 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 applicants 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
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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 plaintiffs
streaming-media delivery and management software was suf?ciently distinct from defendants
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 defendants 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 defendants 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 mens
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 Registrants 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 mens fashion trends and the sale of apparel
itself.
A similar distinction can be made with respect to the Prior Applicants 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 Applicants BRASl-I website come to Applicant only after their brands have been developed
and take advantage of Applicants 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 Applicants Mark for the Prior
Applicants Mark or vice versa.
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8
The Applicants Services have completely different functions, purposes and goals than
those of the Registrants Goods and the Prior Applicants 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 Applicants 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 Registrants 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 Applicants Services of providing
advertising opportunities to third party advertisers. on the one hand, and the Prior Applicants
brand development strategy and design services, on the other.
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9
The Applicant respectfully submits that any similarity between Applicants Services and
either the Registrants 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 Applicants use of the Applicants Mark and either the Registrants or the
Prior Applicants use of their respective marks. That is particularly true where, as here (and as
discussed below), the parties established, likely-tocontinue trade channels are distinct, and, in
the case of the BRASH BRANDS application, the Applicants and Prior Applicants marks differ
as to sight, sound and commercial impression. As such, Applicants mark is entitled to
registration on the Principal Register.
2. The Respective Parties Existing and Likely-toContinue 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 Registrants Goods or the Prior Applicants 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) (applicants 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 applicants
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) (applicants LITTLE
PLUMBER liquid drain opener sold to consumers will not likely cause confusion with
opponents 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 Applicants Services and the goods and services provided
under the Cited Marks are marketed through very different channels of trade. With respect to the
Registrants 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 mens
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 Applicants 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 Applicants Services are marketed only to companies looking to create
and develop a brand, and Applicants 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 Applicants 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 Applicants 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 ae 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 brokers 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
selfpromotion, all weighed against a ?nding of confusion, and held that the broker had not
infringed the registrants mark. 19L. at 867.
:V735282250.Ii
l3
ln this case, there are substantially greater and more signi?cant differences between the
Applicants and Prior Applicants 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 Applicants 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, Applicants 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 Applicants
Services and the Prior Applicants 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, Applicants
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 Applicants 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 Applicants Mark for publication at an early date.
The Applicant respectfully requests that the EA telephone Rachelle A. Dubow. Esq. at
(617) 9518939 if the EA has any further questions regarding the Application.
Respectfully submitted,
-_
4’
David 0. Joheinson
Rachelle A. Dubow
Devon R. Sparrow
Bingham McCutchen LLP
One Federal Street
Boston, MA 02110
Attorneys for the Applicant,
Glam Media, Inc.
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