20081231 Mommy Doctor Office Action Response

equest for Reconsideration after Final Action http://teasroa.uspto.gov/rfr/xslt.service?xsl=text1 of 1 1/7/2009 2:58 PM

PTO Form 1930 (Rev 9/2007)OMB No. 0651-0050 (Exp. 4/30/2009)

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no.

77405273

(MOMMIE DOCTOR , seemark ) has been amended as follows:

ARGUMENT(S)In response to the substantive refusal(s), please note the following:

Please see the actual argument text attached within the Evidence section.

EVIDENCE

Evidence in the nature of substantive arguments and evidentiary attachments has been attached.Evidence-1[evi_69173798-144824579_._20081231_MOMMY_DOCTOR_Office_Action_Response_-_FINAL.pdf ]

CORRESPONDENCE ADDRESS CHANGE

Applicant proposes to amend the following:

Current:

AUI MANAGEMENT GROUP AUI MANAGEMENT GROUP 150 STATE HWY 160 STE 8-354 PAHRUMP, NV 89048

Proposed:

Erik M. Pelton of Erik M. Pelton & Associates, PLLC, having an address of PO Box 100637 Arlington, Virginia United States 22210, whosee-mail address is uspto@tm4smallbiz.com, whose phone number is 703-525-8009 and whose fax number is 703-525-8089.

SIGNATURE(S)Request for Reconsideration Signature

Signature: /CRS/ Date: 01/07/2009Signatory's Name: Christopher R. ShiplettSignatory's Position: Attorney of Record, VA Bar MemberThe signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, whichincludes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or anassociate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent notcurrently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filinga signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative towithdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney orCanadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.The applicant is not filing a Notice of Appeal in conjunction with this Request for Reconsideration.

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Attorneys at Law

PO Box 10Erik M. Pelton* Arlington, VChristopher R. Shiplett** T: 703.525.Benjamin D. Pelton*** F: 703.997.

of counsel

IN THE UNITED

January 7, 2009Ahsen KhanTrademark Examining AttorneyLaw Office 113United States Patent and TrademRE: Serial No: 77Mark:

M

Applicant: AOffice Action Of: Se

APPLICANT

The following is the respFinal Office Action sent via ema

LIKELIHOOD OF CONFUSI

The Examining AttorneyTrademark Act Section 2(d), 15confused with the mark in Regisrespectfully disagrees with the fistatutory refusal and allow registLikelihood of confusionof the relevant factors under the1357, 177 USPQ 563 (CCPA19confusion analysis are the simila

Foods, Inc. v. Fort Howard Pap

marks are different enough, giveunlikely prospective purchasersshows the respective marks and

637 * NJ DC BarA 22210 ** VA Bar8009 *** VA DC & NY Bar5349 erikpelton.com

TATES PATENT AND TRADEMARK OF

ark Office05273

MMIE DOCTOR

I Managementpt

ember 29, 2008

'S REQUEST FOR RECONSIDERATION

onse of the Applicant, AUI Management, by Coil on September 29, 2008, by Examining Attorn

ON REFUSAL

has refused registration of the proposed mark pU.S.C. § 1052(d), on the grounds that the mark ration No. 3470348. For the following reasons,ndings and requests that the Examining Attorneration of the Applicant’s mark.etween two marks at the PTO is determined by

DuPont

test.

In re E.I. du Pont de Nemours & C

3). The two key considerations in ex parte likelrity of the marks and the similarity of the goods

r Co.,

544 F.2d 1098, 192 USPQ 24 (CCPA 19n the dilution of the material common betweenould confuse the source of the respective serviervices:

ICE

unsel, to theey Ahsen Khan.ur

suant tois likely to bethe Applicanty reconsider thea review of all

o.,

476 F.2dihood of .

See Federated

76). Here thehem, that it isces. Table 1

page 2 Request For Reconsideration SN 77405273 Ex. Atty.: Ahsen Khan Law Office 115

Table 1: Marks and Services

Applicant RegistrantMark Relevant Goods or Services Osteopathic, obstetric, andgynecologic servicesProviding a website featuringinformation in the field of child health and nutrition

Differences in the Marks

Under

DuPont

, the marks are compared for similarity or dissimilarity in their entireties asto appearance, sound, connotation and commercial impression.

In re E. I. du Pont de Nemours &Co.

, 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). Marks containing commonelements are not likely to be confused if: “(1) the marks in their entireties convey significantlydifferent commercial impressions, or (2) the matter common to the marks is not likely to beperceived by purchasers as distinguishing source because it is merely descriptive or diluted.”

See, e.g., In re Farm Fresh Catfish Co.

, 231 USPQ 495 (TTAB 1986) (CATFISH BOBBERS(with "CATFISH" disclaimed) for fish held not likely to be confused with BOBBER forrestaurant services);

In re Shawnee Milling Co.

, 225 USPQ 747 (TTAB 1985) (GOLDENCRUST for flour held not likely to be confused with ADOLPH'S GOLD'N CRUST and design(with "GOLD'N CRUST" disclaimed) for coating and seasoning for food items). Here, thematerial common between the marks is the derivation of “MOM,” as “MOMMIE” or“MOMMY,” and the derivation of “DOCTOR” as “DOCTOR” or “DOC.” In the field of healthcare related services in Class 44, both MOM, in its multiple derivations, and DOCTOR, in itsmultiple derivations, are highly diluted and therefore extremely weak source identifiers.Additionally, the terms are descriptive of the services, and are therefore weak.The existence of a term in several third party registrations indicates the weakness of theterm.

AMF Inc. v. American League Products, Inc.

474 F.2d 1403, 1406, 177 USPQ 268, 269-7-(CCPA 1973). Here, MOM, MOMMY, or MOMMIE appear in at least twenty-seven (27) thirdparty registrations for similar services in Class 44.

See Exhibits 1 and 2

. Similarly, DOCTOR or