To the Commissioner for Trademarks:

Mark: ME (Stylized)

Class 35

Serial No: 90157205

OFFICE ACTION RESPONSE

This communication is in response to the Office Action dated January 14, 2021, issued against the above-referenced mark (“Applicant’s Mark” or “Mark”). In particular, the Examining Attorney refused registration of Applicant’s Mark based on a perceived likelihood of confusion with a prior registration for ME (U.S. Reg. No. 4853656) owned by Travis Berger (the “Cited Mark”).

Applicant, Chad Taylor, hereby responds to the Office Action as set forth below and respectfully requests that the Examiner withdraw the Section 2(d) refusal and approve Applicant’s Mark for publication.

Applicant respectfully submits there is no likelihood of confusion between his Mark and the Cited Mark. In determining if a likelihood of confusion exists, “[t]he issue is not whether the actual goods are likely to be confused but, rather, whether there is a likelihood of confusion as to the source of the goods.” TMEP § 1207.01. Thus, even in instances where the goods or services at issue are similar or identical, a likelihood of confusion will only be found if the relevant purchasing public would mistakenly believe that the applicant’s goods or services originated from the same source as the registrant’s goods or services. FBI v. Societe: “M. Bril & Co.”, 172 USPQ 310 (TTAB 1971). For a likelihood of confusion to exist, consumer confusion as to the source of the applicable goods or services must be “probable” not simply “possible.” Cohn v. Petsmart, Inc., 281 F.3d 837, 842 (9th Cir. 2002) (internal citations omitted); see also Elvis Presley Enterprises, Inc. v. Capece, 141 F.3d 188, 193 (5th Cir. 1998) (“Likelihood of confusion is synonymous with a probability of confusion, which is more than a mere possibility of confusion.”) (emphasis added).

The question of likelihood of confusion between marks is “not related to the nature of the mark but to its effect ‘when applied to the goods of the applicant.’ The only relevant application is made in the marketplace. The words ‘when applied’ do not refer to a mental exercise, but to all of the known circumstances surrounding the use of a mark.” In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1360-61 (C.C.P.A. 1973) (internal citations omitted). In determining whether there is a likelihood of confusion, courts look to many factors, e.g., the similarity of the marks in sight, sound, connotation and commercial impression, the relatedness of the goods or services, the channels of distribution of the goods and services, and the strength of the senior user's mark. Id. No single factor is dispositive and “each [factor] may from case to case play a dominant role.” Id. at 1357.

Here, application of the most relevant DuPont factors demonstrates that there is no likelihood of confusion between Applicant’s Mark and the Cited Mark because: (A) the marks are distinguishable in sight, sound, meaning, and overall commercial impression, (B) Applicant’s Mark and the Cited Mark are used in connection with dissimilar services, (C) Applicant utilizes different marketing channels and targets a different customer base than the Cited Mark, and (D) Applicant’s Mark and the Cited Mark have been coexisting in the marketplace for at least six years without any instances of confusion.

The mere fact that two marks incorporate common overlapping words does not render the marks too similar. See, e.g., Sun Banks of Fla., Inc. v. Sun Fed. S&L Ass'n, 651 F.2d 311, 316 (5th Cir. 1981) ("Sun Federal and Savings Loan Association" not confusingly similar to "Sun Banks"); Freedom Sav. & Loan Ass'n v. Way, 757 F.2d 1176, 1183 (11th Cir. 1985) ("Freedom Savings and Loan" and "Freedom Realty" marks "lack ... confusing similarity"); Mr. Hero Sandwich Sys., Inc. v. Roman Meal Co., 781 F.2d 884, 888 (Fed.Cir.1986) ("Romanburger" and "Roman" marks for food products "are not similar in appearance"); Amstar Corp. v. Domino’s Pizza, Inc., 615 F.2d 252, 260 (5th Cir. 1980) ("Domino's Pizza" not similar to "Domino sugar"); Bell Labs., Inc. v. Colonial Prods., 644 F.Supp. 542, 547 (S.D.Fla.1986) ("Final flip" and "Flip" marks for same product are "ultimately different and different sounding"); Little Caesar Enters. v. Pizza Caesar, Inc., 834 F.2d 568, 571 (6th Cir. 1987) ("Pizza Caesar U.S.A." not similar to "Little Caesar's") ; Conde Nast Publs., Inc. v. Miss Quality, Inc., 507 F.2d 1404, 1407 (C.C.P.A. 1975) ("Country Vogues" and "Vogue" publications "do not look or sound alike"); Pacquin-Lester Co. v. Charmaceuticals, Inc., 484 F.2d 1384 (C.C.P.A. 1973) ("Silk 'n' Satin" beauty and bath lotion and oil not similar to "Silk" face cream); Streetwise Maps v. VanDam, Inc., 159 F.3d 739, 744 (2d Cir. 1998) ("Streetwise" is not confusingly similar to "Street-Smart" for maps even though the names sound similar).

When comparing marks, the Examining Attorney must observe the “Anti-Dissection Rule,” which dictates that marks are not to be dissected, but rather are to be considered as a whole in a likelihood of confusion analysis. See TMEP § 1207.01 (citing In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 750-51 (Fed. Cir. 1985)); 4 McCarthy on Trademarks and Unfair Competition § 23:41 (4th ed.). Notwithstanding the “Anti-Dissection Rule,” it is well settled that one feature of a mark may be more significant than another, and it is not improper to give more weight to this dominant feature in determining the commercial impression created by the mark. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ at 751.

In comparing the marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead ‘whether the marks are sufficiently similar in terms of commercial impression’ such that persons who encounter the marks would be likely to assume a connection between the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted). The focus is on the recollection of the average purchaser, who normally retains a general rather than specific impression of a trademark. See, e.g., In re White Rock Distilleries, Inc., 92 USPQ2d 1282, 1284 (TTAB 2009).

Even in the circumstance where a junior user’s mark incorporates another’s mark in its entirety, “there is no rule that confusion is automatically likely[.]” J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 23:41 (4th ed. 2017) (emphasis added). In numerous cases, the TTAB has held that no likelihood of confusion existed between two marks for the same or related goods, despite the fact that one mark contained the whole of the other. See, e.g., Colgate-Palmolive Co. v. Carter-Wallace, Inc., 167 U.S.P.Q. 529 (C.C.P.A. 1970) (PEAK PERIOD not confusingly similar to PEAK); Lever Bros. Co. v. Barcolene Co., 174 U.S.P.Q. 392 (C.C.P.A. 1972) (ALL CLEAR not confusingly similar to ALL); In re Farm Fresh Catfish Co., 231 USPQ 495 (CATFISH BOBBERS not confusingly similar to BOBBER); In re Ferrero, 178 U.S.P.Q. 167 (C.C.P.A. 1973) (TIC TAC not confusingly similar to TIC TAC TOE); Conde Nast Publications, Inc. v. Miss Quality, Inc., 184 U.S.P.Q. 422 (C.C.P.A. 19 75) (COUNTRY VOGUES not confusingly similar to VOGUE); In re Merchandising Motivation, Inc., 184 U.S.P.Q. 364 (T.T.A.B. 1974) (MMI MENSWEAR not confusingly similar to MEN'S WEAR); Plus Products v. General Mills, Inc., 188 U.S.P.Q. 520 (T.T.A.B. 1975) (PROTEIN PLUS and PLUS not confusingly similar). “It is the impression which the mark as a whole creates on the average reasonably prudent buyer and not the parts thereof, which is important.” Little Caesar Enterprises, Inc. v. Pizza Caesar, Inc., 834 F.2d 568, 4 U.S.P.Q.2d 1942, 1944-45 (6th Cir. 1987) (citing 4 J. Thomas McCarthy, Trademarks and Unfair Competition § 23:15 (2d ed. 1984)).

Accordingly, for the reasons discussed below, Applicant respectfully asserts that its Mark and the Cited Mark are distinguishable in sight, sound, and meaning, and convey distinct overall commercial impressions such that there is no likelihood of confusion.

i. The Marks Look and Sound Different

In the present case, Applicant’s Mark and the Cited Mark are sufficiently distinguishable in visual appearance and sound to avoid consumer confusion. When a mark “is presented in standard characters, the owner of the mark is not limited to any particular depiction of the mark.” See TMEP 1207.01(c) (citing Cunningham v. Laser Golf Corp., 222 F.3d 943, 950, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000); In re Cox Enters., 82 USPQ2d 1040, 1044 (TTAB 2007)). “Consideration must be given to the fact that the marks usually will not be viewed side-by-side in the marketplace and a purchaser’s recollection of design marks is often of a general, rather than specific, nature; thus the marks may be confusingly similar despite differences between them.” Id. Further, when a mark consists of both words and design elements, “the fundamental rule in this situation is that the marks must be considered in their entireties” and not dissected into their component parts. See Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 1371, 116 USPQ2d 1129, 1134 (Fed. Cir. 2015); In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); Massey Junior Coll., Inc. v. Fashion Inst. of Tech., 492 F.2d 1399, 1402, 181 USPQ 272, 273-74 (C.C.P.A. 1974).

Furthermore, it is improper to simply ignore the design elements because such marks are “visualized.” In Re Covalinski, 113 U.S.P.Q.2d 1166 (T.T.A.B. 2014) (finding REDNECK RACEGIRL & Design not confusingly similar to word registration for RACEGIRL for identical goods of clothing). When taking into consideration of the marks in their entirety, “it is entirely appropriate to accord greater importance to the more distinctive elements in the marks.” Id (citing In re Nat'l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985)). In Covalinski, the Board found that there is no likelihood of confusion when the commercial impression of the “mark is dominated by its design element.” Id. (finding that the two Rs used for REDNECK RACEGIRL were the dominant portion due to the larger size text of the Rs, together with the other design components that draw more attention to the Rs).

In addition, if the marks have common features, with similar goods and similar channels of trade, a comparison of the similarities and dissimilarities must be taken into consideration to determine the overall impression on whether the marks are confusingly similar. In re Electrolyte, 929 F.2d. 647 (emphasis added). In re Electrolyte, the Board denied registration of K+ & Design on the grounds of prior registration for K+EFF & Design for similar goods, because the Board determined that the textual elements of the marks were too similar. Id. The Federal Circuit determined that design elements of the marks are “viewed” rather than just spoken and the Board should take into consideration not only the vocalizable elements of the marks, but also the visual indica. Id.

Here, there is no likelihood of confusion when taking into consideration the vocalizable elements, the visual indica and dominant portion of the marks due to the more dominant feature of the Applicant’s Mark being “M” rather than the “ME.” Applicant’s Mark comprises a stylized M placed directly above the stylized E that is placed on its back. The two stylized letters almost meet together, creating a blank space individual “M.” The M is the most dominant portion of the mark when compared to the two individual letters, “M” and “E,” and appears to consumers in the following format:

The Cited Mark consists of the literal text “ME” and is pronounced like the word “me.” Although the marks technically share the letters “M” and “E”, consumers will see only the dominant letter “M” and pronounce Applicant’s Mark as “em” versus “me.” These differences in sight and sound cannot be ignored and should be enough to signal to consumers that the goods provided under the respective marks are not related.

Accordingly, Applicant submits that, when viewed in its entirety, Applicant’s Mark has a very different visual appearance and sound from the Cited Mark, making consumer confusion highly unlikely.

ii. The Marks Have Different Meanings and Convey Different Overall Commercial Impressions.

Applicant respectfully submits that the meanings and commercial impressions created by the parties’ marks, particularly when applied to their respective services, is distinguishable. Specifically, Applicant uses his Mark in connection with his other marks, MENTOR and MENTOR EMPIRE, for promoting and encouraging people to give their time and knowledge to others in the form of mentoring. The retail services provided under Applicant’s Mark are marketed and sold to those who have joined the mentoring community and/or those who would like to recognize someone that gives their time to be a mentor. See Printouts from Applicant’s website at https://www.mentorempire.com, attached hereto as Exhibit 1. As such, consumers encountering Applicant’s Mark in the marketplace will conjure up a unique mental impression of seeing the “M” for MENTOR or possibly MENTOR EMPIRE, which is very different and totally lacking from the commercial impressions conveyed by the word “ME.”

In contrast, Registrant’s use of the term “ME” refers to Monthly Express another mark used for the same services. Furthermore, when viewing how Registrant uses its mark, it becomes clear that ME may have a double meaning. First, it stands for registrant’s “monthly express” subscription boxes and, second, “ME” refers to products used for self-care contained within the subscription boxes. See Registrant’s Specimens Submitted & Printout of Subscription Box Ramblings “Monthly Express March 2016 Subscription Box Review,” attached hereto as Exhibits 2 & 3. Indeed, Monthly Express appears to be luxury retailer monthly subscription box, ranging in price from $100 to $129 per month. See Printout from University of Tasmania “What Makes us Sign up to Subscription Boxes” and My Subscription Addiction “Monthly Express” attached hereto as Exhibits 4 & 5.

In a subscription box relationship, a consumer will agree to pay a certain monthly fee to receive a monthly box containing products of a certain niche. See Printout of Fashionista “A Brief History of How Subscription Boxes Changed the Way We shop for Beauty Products,” attached hereto as Exhibit 6. Depending on the subscription agreed to, the box will contain trial sized and/or full sized products at a significantly less cost, providing the consumer with an opportunity explore new products within a specific niche of goods without having to pay the full price to do so. Id. If the consumer wants more of a specific product within the box, the consumer can typically go to the service provider’s online retail store and purchase more of the specific goods, generally with a discount included for being a subscriber. Id.

Here, Registrant is clearly taking advantage that ME is not only a reference to its additional mark, Monthly Express, it is also a marketing strategy solidifying that the goods provided on a monthly basis are to be used at home during your self-care “ME Time.” The goods provided contained a wide variety of self-care spa/relaxation treatments to everyday beauty products. See Exhibits 2 & 3. When a consumer receives the goods from Registrant, included is an insert emphasizing that “It’s ME Time” and identifying the products inside are to be-used for taking care of oneself. Id. Given this, Applicant submits that its Mark and the Cited Mark have very different meanings, which renders confusion unlikely.

Finally, while Applicant recognizes that this is not the appropriate forum to challenge a cited registration, Applicant believes it is important to note that the Cited Mark may no longer be in use and may not be renewed by the upcoming renewal deadline (as discussed below). See Exhibit 5 and Printout of Monthly Express website, attached hereto as Exhibit 7.

B. Applicant’s Services Are Sufficiently Unrelated to the Services Offered under the Cited Mark.

Applicant further submits that any likelihood of confusion is eliminated by the fact that the services offered under the involved marks are not related. In a likelihood of confusion analysis, the goods and services identified by the marks must be compared to determine if they are related or if the marketing activities associated with each are such that consumers are likely to be confused as to their origin. In re August Storck KG, 218 U.S.P.Q. 823 (TTAB 1983); In re Int’l Telephone and Telegraph Corp., 197 U.S.P.Q. 910 (TTAB 1978); Guardian products Co. v. Scott Paper Co., 200 U.S.P.Q. 738 (TTAB 1978). Moreover, if the marks at issue are similar, the commercial relationship between the goods or services of the respective parties must be considered to fully determine whether or not there is a likelihood of consumer confusion. In re Concordia Int’l Forwarding Corp., 222 U.S.P.Q. 355 (TTAB 1983). Courts have held that even when two types of goods and/or services fall within the same general field it does not mean they are sufficiently similar to create a likelihood of confusion. Harlem Wizards Entertainment Basketball, Inc. v. NBA Properties, Inc., 952 F. Supp. 1084, 1095 (D.N.J. 1997). In Harlem Wizards, the court considered two very similar marks, each used in conjunction with a basketball team, and held that confusion between the two marks was unlikely. Id. In coming to this conclusion, the court reasoned that the plaintiff’s theatrical brand of “show basketball” was markedly different from the competitive basketball played by the defendant in the NBA and “when every aspect of the two teams is compared, there is a glaring dissimilarity. Any similarity between the teams is superficial and the result of creating over-inclusive categories that are irrelevant to the likelihood of confusion.” Id. (emphasis added).

Furthermore, with regard to likelihood of confusion there is no per se rule that certain goods and/or services are related. TMEP § 1207(a)(iv) (citing In re British Bulldog, Ltd., 224 U.S.P.Q. 854, 855-56 (TTAB 1984)). Instead, the facts of each case must be considered in light of the varying circumstances and the commercial impressions conveyed by each mark. See British Bulldog, 224 U.S.P.Q. at 856. “The issue of whether or not two products are related does not revolve around the question of whether a term can be used that describes them both, or whether both can be classified under the same general category.” Electronic Data Systems Corp. v. EDSA Micro Corp., 23 U.S.P.Q.2d 1460, 1463 (TTAB 1992); McGraw-Hill, Inc. v. Comstock Partners, Inc., 743 F. Supp. 1029, 1034 (S.D.N.Y. 1990) (“while [both parties] furnish products related to the broad field of finance, [they] are completely unrelated as night and day.”).

Here, Applicant’s and Registrant’s respective services operate in different niches of retail services and are not likely to be confused. Specifically, Applicant’s Mark is used in connection retail services for a variety of clothing and sporting goods for men and women intended to give honor to those that participate in mentorship programs. On the other hand, Registrant’s niche of retail services are consumers searching for a cost effective way of trying new products for self-care and “ME Time,” in the form of a monthly subscription box. See Exhibits 2-6.

Therefore, although the parties’ products relate to the broader category of retail services, simply lumping them together because they fall within the same broad industry is inappropriate. Rather, the determinative factor at issue is, and should be, whether the services are marketed to and consumed by similar buyers in such a manner that would likely cause those purchasers to believe that the products emanate from the same source. Here, Applicant submits that the differences between the parties’ respective services are sufficient to enable relevant consumers to differentiate between the marks and avoid confusion.

C. Applicant Employs Different Marketing Channels and Targets a Different Customer Base Than the Cited Mark.

Applicant submits that any risk of confusion becomes virtually nonexistent when one considers how consumers will actually encounter the respective marks out in the marketplace. Methods of marketing and channels of distribution are factors to be considered in determining likelihood of confusion. See du Pont, 177 U.S.P.Q. 563. “[I]f the goods of one party are sold to one class of buyers in a different marketing context than the goods of another seller, the likelihood that a single group of buyers will be confused by similar trademarks is less than if both parties sold their goods through the same channels of distribution.” See J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION sec. 24:51 (2013). Additionally, courts have frequently found no likelihood of confusion when one mark user sells exclusively at retail and the other sells exclusively to commercial buyers. See id. (citing Dawn Donut Co. v. Hart’s Food Stores, Inc., 267 F.2d 358 (2d Cir. 1959); David Crystal, Inc. v. Soo Valley Co., 471 F.2d 1245 (C.C.P.A 1973); Alpha Industries, Inc. v. Alpha Steel Tube & Shapes, Inc., 616 F.2d 440 (9th Cir. 1980)).

Furthermore, even when related goods or services are distributed in differing marketing channels, the courts have often found no likelihood of confusion. See Paul Sachs Originals v. Sachs, 325 F.2d 212 (9th Cir. 1963) (finding no likelihood of customer confusion when girl’s dresses and women’s dresses sold to different customers in different stores); Field Enterprises Educ. Corp. v. Cove Industries, Inc., 297 F. Supp. 989 (E.D.N.Y. 1969) (finding different channels of encyclopedia distribution door to door sales versus department store sales). In Este Lauder Inc. v. Gap, Inc., 108 F.3d 1503 (2d Cir. 1997), the court distinguished marketing channels by the characteristics of the customers and the location of the sales. Plaintiff sold its personal care products only through prestigious retail stores while the defendant sold to a younger group of buyers through its own “Gap Old Navy” stores. The court found that while the customers could overlap, the differences in locations and the target markets were sufficient to prevent the likelihood of confusion. See id. Additionally, in determining the dissimilarity of trade channels, the Sixth Circuit considers "how and to whom the respective goods or services of the parties are sold. Where the parties have different customers and market their goods or services in different ways, the likelihood of confusion decreases." Therma-Scan, Inc. v. Thermoscan, Inc., 63 U.S.P.Q.2d 1659, 1666 (6th Cir. 2002) (internal citation omitted). In that decision, the court held that the focus should be on the targeted consumers and marketing methods employed rather than rely solely on the fact that both THERMA-SCAN and THERMOSCAN enjoyed an Internet presence.

In this case, Applicant’s and Registrant’s products are marketed to different groups of consumers in different channels of trade. In particular, Applicant’s products are sold only through Applicant’s website. See Exhibit 1. Further, ME retail services are marketed specifically to mentors or to those customers looking to buy a gift for a mentor. In contrast, Registrant’s ME services consist of selling monthly subscription boxes containing new at home self-care products. See Exhibits 2-6. Therefore, the target purchaser of Registrant’s services are individuals who are interested in receiving a monthly subscription box containing various self-care products, giving consumers an opportunity to try a new product at significantly discounted cost compared to purchasing the product from a retailer, whereas, Applicant’s target customer is a specific subset of the general public that either provides or receives mentoring.

Given the divergent channels of marketing and target customers of Applicant and registrant, as well as the other differences between the parties’ marks as noted above, Applicant respectfully submits that there is no likelihood of confusion between Applicant’s Mark and the cited registration for ME.

II. ALTERNATIVE REQUEST FOR SUSPENSION.

In the alternative, if the Examining Attorney is unpersuaded by the arguments set forth above and is inclined to issue a final refusal under §2(d) of the Trademark Act, Applicant respectfully requests that the Examiner suspend Applicant’s application. Specifically, the Cited Mark must file its Section 8 Declaration by November 17, 2021, with the grace period expiring on May 17, 2022. If the Registrant fails to timely file the § 8 maintenance documents and the Cited Mark is cancelled, it will no longer be a bar to registration of Applicant’s Mark. As such, Applicant believes that he has good cause to request to suspend action on his application pending the outcome of the maintaining or cancellation of the Cited Mark.