Save A Life Foundation, Inc.
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 saving 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
United States Patent and Trademark Office (USPTO)
Office Action Response
Outgoing Trademark Office Action
Trademark Office Action Response
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). Applicants 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
Page 1 of 8
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respectfully submits that the refusal to register Applicant’s mark should be withdrawn.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 applicants mark is the
wording SAVE A LIFE, which is identical to registrants mark. The hyphens in
registrants 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 Applicants 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
Page 2 of 8
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 Applicants 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
impressionnamely 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. Applicants mark, on the other hand,
is pronounced as a sentence, with a pause between the words SAVE, A, LIFE, and
FOUNDATION, and denotes a organizationnot a devicethat 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 Actions refusal of Applicants 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
Page 3 of 8
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 registrants goods and
applicants publications and promotional services are in the first aid field. In
addition, applicants publications and promotional services could include
instructions and information about registrants 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, Applicants good/services and Registrants goods/services have
fundamentally different purposes. Applicants 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
Foundations web site at www.salf.org for additional information).
Page 4 of 8
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 Applicants goods
and services (including those identified in Applicants application), a consumer would
not likely be confused as to the source of Applicants goods/services and Registrants
good/services.
The Examining Attorney also cites to third-party registrations of marks as having
probative value to show that registrants life saving apparatus and applicants
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 Applicants identification also identifies
publications, first aid kits are quite distinct from Registrants 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
Page 5 of 8
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 confusiondespite 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 Applicants 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 Applicants mark and the 386 Registration. The
Examining Attorney, however does not provide any analysis as to how or why
Applicants and Registrants trade channels are similar or dissimilar. Applicant
Page 6 of 8
respectfully submits that Applicants established, likely-to-continue trade channels are
quite dissimilar from those of Registrant.
By the very nature of Applicants goods/services, identified as educational,
Applicants 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, Applicants 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.
Page 7 of 8
DuPont factor nos. 7 and 8, which pertain to actual confusion, likewise are
relevant to the extent that Applicant’s and Registrants 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 Applicants 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
Page 8 of 8
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). Applicants 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
Page 1 of 8
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 applicants mark is the
wording SAVE A LIFE, which is identical to registrants mark. The hyphens in
registrants 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 Applicants 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
Page 2 of 8
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 Applicants 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
impressionnamely 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. Applicants mark, on the other hand,
is pronounced as a sentence, with a pause between the words SAVE, A, LIFE, and
FOUNDATION, and denotes a organizationnot a devicethat 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 Actions refusal of Applicants 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
Page 3 of 8
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 registrants goods and
applicants publications and promotional services are in the first aid field. In
addition, applicants publications and promotional services could include
instructions and information about registrants 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, Applicants good/services and Registrants goods/services have
fundamentally different purposes. Applicants 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
Foundations web site at www.salf.org for additional information).
Page 4 of 8
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 Applicants goods
and services (including those identified in Applicants application), a consumer would
not likely be confused as to the source of Applicants goods/services and Registrants
good/services.
The Examining Attorney also cites to third-party registrations of marks as having
probative value to show that registrants life saving apparatus and applicants
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 Applicants identification also identifies
publications, first aid kits are quite distinct from Registrants 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
Page 5 of 8
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 confusiondespite 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 Applicants 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 Applicants mark and the 386 Registration. The
Examining Attorney, however does not provide any analysis as to how or why
Applicants and Registrants trade channels are similar or dissimilar. Applicant
Page 6 of 8
respectfully submits that Applicants established, likely-to-continue trade channels are
quite dissimilar from those of Registrant.
By the very nature of Applicants goods/services, identified as educational,
Applicants 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, Applicants 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.
Page 7 of 8
DuPont factor nos. 7 and 8, which pertain to actual confusion, likewise are
relevant to the extent that Applicant’s and Registrants 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 Applicants 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
Page 8 of 8