Serial No.: 77/639,560
Attorney Ref. No.: 75,821

Applicant National Council on Family Relations responds to the Office Action dated

February 3, 2009, as follows.

REMARKS

The Examining Attorney has issued an initial refusal under Section 2(d) of the

Trademark Act on the basis that Applicant’s FAMILY Asterisk Design mark so resembles the

mark FAMILY (U.S. Registration No. 3,387,367) (the “Cited Mark”) as to be likely to cause

confusion, to cause mistake or to deceive. The Examiner has also required that Applicant

disclaim the wording “FAMILY.” Applicant has done so using the form in the Trademark

Electronic Application System.

According to the Examining Attorney, the FAMILY Asterisk Design is likely to cause

confusion with the Cited Mark because 1) the marks are similar in sound, connotation and

overall commercial impression; 2) the Cited Mark could be displayed in the same format as

Applicant’s FAMILY Asterisk Design; and 3) the goods associated with the marks are similar.

Applicant has carefully reviewed the Office Action and asserts that registration of

Applicant’s FAMILY Asterisk Design will not result in a likelihood of confusion with the Cited

Mark. There are fundamental distinctions with respect to the marks themselves, the associated

goods, marketing channels and channels of trade, and consumers are used to distinguishing

between marks containing the term FAMILY within the periodical industry, making confusion

unlikely in this case. As more fully articulated below, Applicant respectfully asserts that the

refusal is improper and requests approval of the application for publication.

I. There is No Likelihood of Confusion

The traditional analysis for likelihood of confusion between two marks is undertaken

according to the factors set out in In re Application of E.I. DuPont DeNemours & Co., 476 F.2d

1357, 1361 (CCPA 1973). The DuPont factors relevant in this case include:

• The dissimilarity and nature of the goods;
• The dissimilarity of established, likely-to-continue trade channels;
Serial No.: 77/639,560
Attorney Ref. No.: 75,821

• The conditions under which and buyers to whom sales are made, i.e. “impulse”
vs. careful, sophisticated purchasing;
• The number and nature of similar marks in use on similar goods; and
• The dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression.

When analyzed under these factors, Applicant’s FAMILY Asterisk Design is not likely to

cause confusion with the Cited Mark, for the following reasons.

A. The Goods Offered Under the Marks are Dissimilar

In determining the likelihood of confusion based upon the similarity or dissimilarity

between the goods or services, “[t]he issue is not whether the goods will be confused with each

other, but rather whether the public will be confused about their source.” TMEP § 1207.01(a)(i).

Therefore, “if the goods or services in question are not related or marketed in such a way that

they would be encountered by the same persons in situations that would create the incorrect

assumption that they originate from the same source, then, even if the marks are identical,

confusion is not likely.” Id.

The Cited Mark is used in association with a periodical publication, the contents of which

are directed to military families. Exhibit A is a printout from the home page of the website for the

publication, showing that the contents include coupons, recipes and articles directed to military

families. Furthermore, the Cited Mark is used in association with a “magazine,” according to the

description of services. “The use of the word [magazine] … typically indicates that the intended

audience is not specifically academic.” Magazine, n., The Oxford English Dictionary Online,

available at

http://dictionary.oed.com/cgi/entry/00299371?query_type=word&queryword=magazine&f (last

visited March 27, 2009), attached as Exhibit B.

By contrast, Applicant’s FAMILY Asterisk Design will be used in association with an

academic periodical publication (as made clear by the corresponding amendment to the

description of goods filed with this response) , the contents of which are directed to

professionals who work in the field of family life education. Exhibit C is a printout from

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Attorney Ref. No.: 75,821

Applicant’s website describing its two academic periodicals; Applicant intends to use the

FAMILY Asterisk Design with both of these. Furthermore, Applicant’s mark will be used in

association with a “journal,” according to the description of services. A journal is a periodical

“published for a special group, learned society, or profession.” Journal Definition,

Dictionary.com, available at http://dictionary.reference.com/browse/journal, attached as Exhibit

D.

No likelihood of confusion has been found where the marks were used in association

with different goods, even when the goods fell within the same class and the marks were

identical. See, e.g., United Foods, Inc. v. United Airlines, Inc., 41 USPQ2d 1653, 1662 (TTAB

1995) (finding no likelihood of confusion between UNITED EXPRESS for transportation of

freight by truck and UNITED EXPRESS (Stylized) for air transportation of passengers and

freight); In re Donnay Int’l., 31 USPQ2d 1953 (TTAB 1994) (finding no likelihood of confusion

between GHOST for tennis equipment and THE GHOST for soccer equipment). This situation

is analogous to that in United Foods, where both companies provided transportation services,

but the services were of such a different nature that confusion was not likely. Although both the

FAMILY Asterisk Design and the Cited Mark are used in association with publications, the

publications are very different in nature. It is highly unlikely that a member of a military family

familiar with the magazine provided under the Cited Mark in order to locate articles related to

being a member of a military family will see an academic journal and become confused as to the

origin of the academic journal. Likewise, it is highly unlikely that an academic or professional

familiar with the journal provided in association with the FAMILY Asterisk Design in order to

locate articles related to the field of family life education will see a magazine relating exclusively

to military families and become confused as to the origin of the magazine.

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Serial No.: 77/639,560
Attorney Ref. No.: 75,821

B. The Channels of Trade and Purchase Conditions for the Goods Offered
Under the Marks are Dissimilar

Where two similar marks are used in association with goods or services that are sold in

different channels of trade and marketed to different groups of consumers, those two marks are

not confusingly similar. See M2 Software, Inc. v. M2 Communications, Inc., 450 F.3d 1378, 78

USPQ2d 1944 (Fed. Cir. 2006). Even where two manufacturers marketed products intended for

computer users under the similar marks EMPOWER and ENPOWER, there was no likelihood of

confusion due in part to the fact that the channels of trade were very different: one product was

marketed wholesale or retail, while the other was marketed outside of retail channels. PC Club

v. Primex Technologies, Inc., 32 Fed. Appx. 576; 2002 U.S. App. LEXIS 4982 (Fed. Cir. 2002).

The Cited Mark is used in association with a magazine marketed only to the families of

members of the military. It is, according to its website, “Distributed exclusively at military

commissaries – one of the benefits of shopping on base!” and “available FREE OF CHARGE at

U.S. military commissaries worldwide, starting the middle each month [sic].” See Exhibit A,

attached. By contrast, Applicant’s mark will be used in association with professional journals

which have been and will continue to be marketed through channels focused on professionals

and academic libraries in the field of family life education. Applicant’s journals are available only

to those who pay for them or who have access to an academic library that pays for them. One

“is the leading research journal in the family field and has been so for over 60 years,” while the

other’s audience includes “educators in academic and community settings, researchers with an

applied or evaluation focus, family practitioners, and family policy specialists.” See Exhibit C,

attached.

In light of the very different distribution methods employed by each mark owner, it is

highly unlikely that consumers would ever encounter one publication when seeking the other, or

that the same consumers would even encounter both publications. There is therefore no

opportunity for confusion to arise.

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Serial No.: 77/639,560
Attorney Ref. No.: 75,821

C. The Purchases Are of a Different Nature

“[S]ophistication is important and often dispositive because ‘[s]ophisticated consumers

may be expected to exercise greater care.’ … “[T]here is always less likelihood of confusion

where goods are expensive and purchased after careful consideration.’” Electronic Design &

Sales, Inc. v. Electronic Data Systems Corporation, 954 F.2d 713, 718, 21 USPQ2d 1388 (Fed.

Cir. 1992) (citing Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482, 489,

212 USPQ 246, 252 (1st Cir. 1981); Astra Pharmaceutical Prods. v. Beckman Instruments, 718

F.2d 1201, 1206, 220 USPQ 786, 790 (1st Cir. 1983)).

Here, the Cited Mark is used in association with what can loosely be described as an

impulse “purchase.” The mark is used in association with a publication that consumers obtain

for free at military commissaries. A copy can be obtained any time a person is in a commissary.

The consumers are not generally sophisticated, nor need they pay much attention to their

“purchase.” The particular military base family focus of the audience for the Cited Mark was

acknowledged and relied on by the applicant for the Cited Mark when it was under prosecution.

See Exhibit E.

Conversely, the FAMILY Asterisk Design is used in association with goods marketed to

sophisticated consumers. Professionals and academic libraries selecting journals to which they

wish to subscribe will not make the choice lightly, as the purchase of such publications generally

requires a fairly substantial investment and a sharp subject-matter focus is needed, e.g., $141

for a personal annual subscription and $974 for an institutional annual subscription for the

Journal of Marriage and Family. See Exhibit F, attached, consisting of a price list of annual

subscription costs for the Journal of Marriage and Family. That these journals are available only

to a select group is illustrated by their circulation rates: Family Relations has a circulation of

4,060 and the Journal of Marriage and Family has a circulation of 6,000. See Exhibit G,

attached, showing circulation information provided to potential advertisers in these two journals.

Only a limited group will ever see the FAMILY Asterisk Design or the associated goods.

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Serial No.: 77/639,560
Attorney Ref. No.: 75,821

Given the differences in the nature of the purchases and the availability of the goods,

there is no opportunity for confusion to arise.

D. The Cited Mark is Weak and Diluted

“If the common element of two marks is ‘weak’ in that it is generic, descriptive or highly

suggestive of the named goods or services, consumers typically will be able to avoid confusion

unless the overall combinations have other commonality.” See TMEP § 1207.01(b)(viii) (citing

In re Bed & Breakfast Registry, 229 USPQ 818 (Fed. Cir. 1986); The U.S. Shoe Corp. v.

Chapman, 229 USPQ 74 (TTAB 1985) (COBBLER’S OUTLET for shoes held not confusingly

similar to CALIFORNIA COBBLERS (Stylized) for shoes); and In re Istituto Sieroterapico E

Vaccinogeno, Toscano “SCLAVO” S.P.A., 226 USPQ 1035 (TTAB 1985) (ASO QUANTUM,

with ASO disclaimed, for diagnostic laboratory reagents held not confusingly similar to

QUANTUM I for laboratory instrument for analyzing body fluids).

On this basis, numerous courts have held that in the likelihood of confusion analysis, the

common weak or descriptive portions of the marks receive little consideration, and the inquiry

should focus on the nondescriptive elements. See, e.g., Tektronix, Inc. v. Daktronics, Inc.,187

USPQ 213 (TTAB 1975) (finding no likelihood of confusion between TEKTRONIX and

DAKTRONICS marks for electronic voting booths because the “TRONICS” suffix is descriptive

of electronics); Land-O-Nod Co. v. Paulison, 220 USPQ 61 (TTAB 1983) (finding no likelihood of

confusion between CHIROPRACTIC and CHIROMATIC marks because “CHIRO” is highly

suggestive of health support); In re Bed & Breakfast Registry, 791 F.2d 157 (Fed. Cir. 1986)

(finding no likelihood of confusion between BED AND BREAKFAST REGISTRY and BED AND

BREAKFAST INTERNATIONAL marks because “BED AND BREAKFAST” is highly

descriptive); Alltel Corp. v. Actel Integrated Communications, Inc., 42 F. Supp. 2d 1265 (S.D.

Ala. 1999) (denying preliminary injunction because “TEL” component common to the marks

ALLTEL and ACTEL is descriptive of telephone services); Beech-Nut, Inc. v. Warner-Lambert

Co., 346 F. Supp. 547 (S.D.N.Y. 1972), aff’d, 480 F.2d 801 (2d Cir. 1973) (finding “small

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Serial No.: 77/639,560
Attorney Ref. No.: 75,821

variations” between BREATH SAVERS and BREATH PLEASERS marks used on mints

enough to avoid confusion since the term “BREATH” is highly descriptive and “free as the air”);

Madison Reprographics, Inc. v. Cook’s Reprographics, Inc., 552 N.W.2d 440 (Wis. App. 1996)

(“When the word common to the two designations is generic, . . . the focus of the inquiry is upon

the confusing similarity of the non-generic portions.”).

Although the Cited Mark is registered on the Principal Register, it is not fanciful, arbitrary

or even suggestive; it is descriptive at best and was only afforded Principal Register registration

under Section 2(f). There are, according to the PTO’s TESS database, 423 marks registered in

Class 16 that contain the term FAMILY. Exhibit H is a printout listing these marks. The table

below lists the seven marks containing the term FAMILY or its foreign equivalent that the

Trademark Office has registered in association with periodicals, magazines and journals in the

one year since the registration of the Cited Mark.

Mark Reg. No. Description of Goods/Services Disclaimer

HEALTHY FAMILY 3,482,725 Class 16: Printed publications, namely, a magazine column, magazines N/A
DINNERS and books that contain recipes that are calorie-, fat- and sodium-
conscious and recipes that showcase a wide variety of fruits and
vegetables, all focusing on the importance of nutrition in a family’s life
Class 43: Providing via the internet recipes that are calorie-, fat- and
sodium-conscious and recipes that showcase a wide variety of fruits
and vegetables, all focusing on the importance of nutrition in a family’s
life
FAMILIA ALWAYS 3,469,377 Class 16: Magazine featuring family pride N/A

FAMILY NORTH 3,407,630 Class 16: Magazine featuring public policy N/A
CAROLINA

FAMILIA 3593660 Class 16: Magazine in the field of family lifestyles N/A
SALUDABLE
FOCUS ON THE 3,567,358 Class 16: Periodic magazine featuring information of interest to children N/A
FAMILY
CLUBHOUSE JR.
CREATIVE 3,565,290 Class 16: A series of books and periodical publications in the field of N/A
FAMILY holiday celebrations, parties, decorating, cooking and family activities
TRADITIONS &
IDEAS
FAITH & FAMILY 3,397,201 Class 16: Magazine paper; Magazines featuring articles and stories N/A
concerning Catholic family life

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Serial No.: 77/639,560
Attorney Ref. No.: 75,821

Exhibit I is a series of printouts with the details regarding the registrations listed above.

In addition, the Cited Mark has coexisted on the Principal Register with Reg. No.

1,403,090, for the mark FAMILY used in association with “puzzle magazines,” for nearly twenty

years. See Exhibit E, a Response to Office Action filed by the owner of the Cited Mark in

response to a Section 2(d) refusal based upon likelihood of confusion with Reg. No. 1,403,090

and Exhibit J, a printout with the details of Reg. No. 1,403,090.

The goods associated with the Cited Mark and Reg. No. 1,403,090 have a great deal

more in common with one another than those associated with the FAMILY Asterisk Design.

Both are magazines. Both are marketed to non-specialists. Both are potential impulse

purchases. Conversely, Applicant’s goods are academic journals marketed to a narrow and

select group of specialists and are not an impulse purchase. If the Cited Mark has co-existed

happily with an identical mark on more-similar goods for decades with no known instances of

confusion (see Exhibit J, attached), Applicant’s FAMILY Asterisk Design should cause no

problems in the marketplace.

E. The Marks Are Visually Dissimilar

Under du Pont, “the first factor requires examination of ‘the similarity or dissimilarity of

the marks in their entireties as to appearance, sound, connotation and commercial impression.”

TMEP § 1207.01(b) (emphasis added). In considering this factor, “[a]ll relevant facts pertaining

to the appearance and connotation must be considered,” Recot, Inc. v. M.C. Becton, 214 F.3d

1322, 1329, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000), and “the emphasis must be on the

recollection of the average purchaser who normally retains a general, rather than specific,

impression of trademarks.” TMEP § 1207.01(b). Furthermore, “[i]t is axiomatic that a mark

should not be dissected and considered piecemeal; rather, it must be considered as a whole in

determining likelihood of confusion.” Franklin Mint Corporation v. Master Manufacturing Co.,

667 F.2d 1005, 1007, 212 USPQ 233 (CCPA 1981).

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Serial No.: 77/639,560
Attorney Ref. No.: 75,821

In focusing solely on the shared wording (FAMILY), the Examiner has improperly

dissected the FAMILY Asterisk Design mark, discounting two crucial aspects of Applicant’s

mark: the color scheme and the graphical representation of the word FAMILY in the shape of a

flower or asterisk. These two features dominate the overall appearance of the mark. It is

unlikely that a consumer would retain the word FAMILY as the primary impression left by this

mark; rather, the colors and the shape are more likely to be retained, leaving little room for

confusion with the Cited Mark.

CONCLUSION

Given that the goods associated with the Cited Mark and FAMILY Asterisk Design are

dissimilar, the goods associated with the marks will be marketed to different groups, the

purchasers of the goods associated with the FAMILY Asterisk Design mark will be

sophisticated and the two marks are themselves dissimilar, confusion is unlikely. Accordingly,

Applicant respectfully requests that the Examining Attorney reconsider and withdraw her refusal

of registration based on Section 2(d) of the Lanham Act.

In light of the foregoing Response, Applicant submits that its application appears to be in

proper form for publication. A Notice of Publication is respectfully requested.

Attachments: Exhibits A – J

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