IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
(Case No. 007153.00002)

In re Application of
Examining Atty.: Cynthia Sloan
Save A Life Foundation, Inc.
Law Office: 116
Serial No.: 77/083237

Filed: January 15, 2007

Mark: SAVE A LIFE
FOUNDATION

ARGUMENT

Likelihood of Confusion – Section 2(d)

The Examining Attorney has refused registration of Applicant’s mark on the

ground that there is an alleged likelihood of confusion between Applicant’s mark and a

prior registration for the mark SAVE-A-LIFE, Reg. No. 2,940,386 (“the ‘386

Registration”). Applicant’s mark is used for:

Promoting public awareness of the need for emergency preparedness; promoting
public awareness of life saving techniques, first aid techniques or CPR
techniques; and

Educational publications, namely, training manuals in the field of emergency
preparedness, life saving techniques, first aid techniques or CPR techniques;
manuals in the field of emergency preparedness, life save techniques, first aid
techniques or CPR techniques; publications, namely, brochures, booklets, and
teaching materials in the field of emergency preparedness, life saving techniques,
first aid techniques or CPR techniques.

Applicant has applied for protection for the above uses in International Classes 16 and

35, respectively. The ‘386 Registration is used for “anti-choking devices, namely, a life-

saving apparatus to facilitate self-administered performance of the anti-choking first aid

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technique (International Class 9). For the reasons explained herein, Applicant

respectfully submits that the refusal to register Applicant’s mark should be withdrawn.

It is well settled that in assessing the likelihood of confusion between marks, the

Office must look to the thirteen factors established by the Court of Customs and Patent

Appeals in the case of In re E.I. duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ

563, 567 (C.C.P.A. 1973). Not all of the thirteen factors will be relevant in a particular

case. Here, the Examining Attorney states that DuPont factor nos. 1-3 are the most

relevant in this case. Applicant also believes that factors 5 and 7-8 are significant.

Therefore, Applicant will address each of factors 1-3, 5 and 7-8 below.

DuPont Factor No. 1: The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

The Office Action states that the “dominant feature of applicant’s mark is the

wording SAVE A LIFE, which is identical to registrant’s mark. The hyphens in

registrant’s mark do not change the commercial impression of the word.”

Applicant respectfully disagrees. When a mark contains everyday words, “the

differences rather than the similarities become more noticeable.” Revlon Inc. v. Jerell

Inc., 11 USPQ2d 1612, 1616 (S.D.N.Y. 1989). Here, both marks contain the “everyday”

words “SAVE,” “A,” and “LIFE.” As such, the use of the hyphens in the ‘386

Registration, and the absence of hyphens in Applicant’s mark become more noticeable.

Moreover, as required by the Office Action, Applicant has disclaimed

“FOUNDATION” apart from the mark as shown. While Applicant acknowledges that

“[d]isclaimed matter is typically less significant or less dominant when comparing

marks,” as the Office Action points out, “a disclaimed portion of a mark certainly cannot

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be ignored, and the marks must be compared in their entireties . . . .” (Office Action at

2).

Along these lines, Applicant respectfully submits that the Office Action has not

fully considered the entirety of Applicant’s mark, “SAVE A LIFE FOUNDATION.” As

defined in the evidence provided with the Office Action, a foundation is “an institution

founded and supported by an endowment.” Foundations are often educational in nature,

and thus “SAVE A LIFE FOUNDATION” conveys a very distinct connotation and

impression—namely that of an educational organization. By contrast, the ‘386

Registration lacks this connotation and impression.

As a final note, hyphens are used to allow ordinarily separate words to be joined

as a single word. Thus, the ‘386 Registration rolls off the tongue as one word, “SAVE-

A-LIFE,” and is used to denote a life-saving device. Applicant’s mark, on the other hand,

is pronounced as a sentence, with a pause between the words “SAVE,” “A,” “LIFE,” and

“FOUNDATION,” and denotes a organization—not a device—that provides educational

publications and manuals in the fields of emergency preparedness and life-saving

techniques, as well as promoting awareness of emergency preparedness. Accordingly,

Applicant respectfully submits that the connotations, commercial impressions, sound and

appearance of the marks are dissimilar and weigh against a likelihood of confusion.

DuPont Factor No. 2: The similarity or dissimilarity and nature of the goods or
services as described in an application or registration or in
connection with which a prior mark is in use.

The Office Action’s refusal of Applicant’s mark also rests on the premise that

Applicant’s publications, manuals and public awareness campaigns, and Registrant’s

products each fall within the “first aid field,” and thus there must be a likelihood of

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confusion between the marks because the goods and services fall into that same category.

Specifically, the Office Action states:

The parties’ goods/services are directly related because registrant’s goods and
applicant’s publications and promotional services are in the first aid field. In
addition, applicant’s publications and promotional services could include
instructions and information about registrant’s goods. The use of highly similar
marks on these goods/services would likely cause confusion as to their source.

(Office Action at 3).

Applicant respectfully disagrees. It is well settled that there is no per se rule that

merely because two products are in the same general category, there is a likelihood of

confusion. Interstate Brands v. Celestial Seasonings, Inc., 198 USPQ 151 (CCPA 1978);

Hi-Country Foods Corp. v. Hi Country Beef Jerky, 4 USPQ2d 1169 (TTAB 1987) and In

re Mars, Inc., 222 USPQ 938 (Fed. Cir. 1984). In Mars, supra, for example, the Federal

Circuit found no likelihood of confusion between CANYON for candy bars and

CANYON for fresh citrus fruits. Applicant respectfully submits that the fact situation

presented herein is analogous to the fact situation in In re Mars, and that both Applicant’s

goods/services and Registrant’s goods/services, in the “first aid field,” can co-exist

without a likelihood of confusion.

In this case, Applicant’s good/services and Registrant’s goods/services have

fundamentally different purposes. Applicant’s publications, manuals, and promotional

campaigns, etc., are educational in the all-encompassing area of first aid, including

publications and campaigns for children and workplace bystanders, among others, and

spanning such areas as training on cardio pulmonary resuscitation (CPR) and use of an

automatic external defibrillator (AED) device (If relevant, please see Save A Life

Foundation’s web site at www.salf.org for additional information).

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The ‘386 Registration, on the other hand, appears to pertain to only one specific

good: a “life-saving apparatus to facilitate self-administered performance of the anti-

choking first aid technique.” Applicant respectfully submits that because Applicant is not

in the business of providing life-saving devices, or any other sort of device, and because a

consumer would be aware of this fact after even a cursory glance at Applicant’s goods

and services (including those identified in Applicant’s application), a consumer would

not likely be confused as to the source of Applicant’s goods/services and Registrant’s

good/services.

The Examining Attorney also cites to third-party registrations of marks as having

“probative value” to show that “registrant’s life saving apparatus and applicant’s

publications, are of a kind that may emanate from a single source.” Quite simply, the

third-party registrations on which the Office Action appears to rely primarily identify

publications and first aid kits. While Applicant’s identification also identifies

publications, first aid kits are quite distinct from Registrant’s self-administering anti-

choking devices (indeed, the first aid kits in the third-party registrations include, for

example, “latex gloves,” “iodine pads” and “flashlights”). Thus, Applicant respectfully

submits that the third-party registrations are not relevant to the issues at hand.

Furthermore, the Examining Attorney fails to cite to other third-party registrations

which indicate that similar marks for goods/services in the “first aid field” in

International Classes 42 and 05 may coexist without a likelihood of confusion. For

example, First Aid Only, Inc owns the registration for the design and word mark FIRST

AID ONLY, Reg. No. 3177591 (the ‘591 Registration), for “first aid kits,” inter alia, in

International Class 05. In addition, National Safety Council Chartered Corporation owns

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the registration for the design and word mark FIRST AID INSTITUTE, Reg. 2081946

(the ‘946 Registration), for “distributorship services in the field of first aid, health and

safety related products, namely educational and training products” in International Class

42. Both the ‘591 Registration and the ‘946 Registration incorporate the words of the

mark with a “cross” design. These two registered marks appear to co-exist in the

marketplace without a likelihood of confusion—despite the fact that they are similar

marks in the “first aid field.” Similar to the co-existence of the ‘591 Registration and the

‘946 Registration, Applicant submits that its mark for general publications and

promotional services in the “first aid field” can co-exist with the ‘386 Registration, which

narrowly protects anti-choking devices, without a likelihood of confusion.

Finally, Applicant notes that it owned U.S. Reg. No. 1,922,602 for “SAVE A

LIFE FOUNDATION” (design) for “promoting public awareness of the importance of

knowing various life-saving skills such as first aid and CPR (cardiopulmonary

resuscitation)” (“the ‘602 Registration”). Although the ‘602 registration was cancelled

on July 6, 2006, it was alive in 2001 but was not cited as being “confusingly similar”

during prosecution of the ‘386 Registration in 2001. Thus, it seems paradoxical that the

‘386 Registration is being cited against Applicant’s application, which is for an identical

word mark with a similar identification.

DuPont Factor No. 3: The similarity or dissimilarity of established, likely-to-
continue trade channels.

The Examining Attorney also cites to Dupont Factor No. 3 as probative of a

likelihood of confusion between Applicant’s mark and the ‘386 Registration. The

Examining Attorney, however does not provide any analysis as to how or why

Applicant’s and Registrant’s trade channels are similar or dissimilar. Applicant

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respectfully submits that Applicant’s “established, likely-to-continue trade channels” are

quite dissimilar from those of Registrant.

By the very nature of Applicant’s goods/services, identified as “educational,”

Applicant’s established trade channels are through institutions and schools (or other

child- and young adult- related programs) and other public awareness campaigns that

provide training and awareness in the field of first aid. Registrant, on the other hand,

seems to provide an off-the-shelf device which would not be distributed through

institutions and schools and instead through product trade channels such as medical

supply, pharmacies, etc.

Thus, Applicant respectfully submits that its “established, likely-to-continue trade

channels” for its goods/services are unique compared to those of Registrant, which

further indicates that the two marks are not likely to confuse consumers as to the source

of the two parties’ goods/services.

DuPont Factor No. 5: The fame of the prior mark (sales, advertising, length of
use).

DuPont factor no. 5, the fame of the prior mark, is relevant because there is no

evidence that Registrant’s mark has established any claim to fame. Indeed, registration

no. 2,940,386 states a date of first use of approximately three years ago (October, 15,

2004), so there has been little time for it to develop fame. If anything, Applicant’s mark

has more fame, as it has been used for more than 14 years (as noted in the registration).

DuPont Factor No. 7: The nature and extent of any actual confusion.

DuPont Factor No. 8: The length of time during and conditions under which there
has been concurrent use without evidence of actual
confusion.

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DuPont factor nos. 7 and 8, which pertain to actual confusion, likewise are

relevant to the extent that Applicant’s and Registrant’s marks has been in use for at least

three years without any evidence of actual confusion of which Applicant is aware.

For the reasons set forth above, the refusal to register Applicant’s mark pursuant

to Section 2(d) of the Trademark Act should be withdrawn.

Respectfully submitted,

Date: November 8, 2007 By: /Richard S. Stockton/
Richard S. Stockton
Attorney for Applicant

BANNER & WITCOFF, LTD.
Ten S. Wacker Dr. Ste. 3000
Chicago, Illinois 60606
Telephone: (312) 463-5000
Facsimile: (312) 463-5001

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