Professional Documents
Culture Documents
xsl=text
Application serial no. 77405273 (MOMMIE DOCTOR , see mark) has been amended as follows:
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 ]
SIGNATURE(S)
Request for Reconsideration Signature
Signature: /CRS/ Date: 01/07/2009
Signatory's Name: Christopher R. Shiplett
Signatory's Position: Attorney of Record, VA Bar Member
The 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, which
includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an
associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not
currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing
a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to
withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or
Canadian 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.
Back
1 of 1 1/7/2009 2:58 PM
Attorneys at Law PO Box 100637 * NJ DC Bar
Erik M. Pelton* Arlington, VA 22210 ** VA Bar
Christopher R. Shiplett** T: 703.525.8009 *** VA DC & NY Bar
Benjamin D. Pelton*** F: 703.997.5349 erikpelton.com
of counsel
January 7, 2009
Ahsen Khan
Trademark Examining Attorney
Law Office 113
United States Patent and Trademark Office
The following is the response of the Applicant, AUI Management, by Counsel, to the
Final Office Action sent viaa email on September 29, 2008, by Examining Attorney Ahsen Khan.
Khan
its derivatives DOC and DR. appear in at least eighty four (84) third-party registrations for
similar services in Class 44. See Exhibits 3 and 4. Clearly both MOM- and DOC- are highly
diluted as applied to the relevant services.
The Examining Attorney argues that Registrant’s mark is a relatively strong mark
because it is the only mark in Class 44 combining the terms MOMMIE and DOC. However, the
combination of the terms MOMMIE and DOC does not create a unitary or composite phrase in
which the terms lose their individual descriptive character, and in fact, the composite mark
MOMMIEDOC is itself descriptive. Registrant’s information is health information and it is of
interest to mothers. See Exhibit 5. The composite MOMMIEDOC merely describes the function
of Registrant’s services and a characteristic of the consumers of Registrant’s services. Because
the composite does not change the descriptive nature of its component words, the composite
itself remains descriptive and is granted only a limited scope of protection.
The individual terms that make up the registered mark are highly diluted and descriptive
as applied to Registrant’s services. Furthermore, the composite of the two words that forms
Registrant’s mark retains its descriptive character as applied to Registrant’s services. Customers
are used to seeing these descriptive words applied to services like Applicant’s and Registrants,
and would therefore be more aware of seemingly small differences in the marks that distinguish
the source of the respective services.
Registrant’s offers informational services by which the parents of children can learn about the
health and nutrition of those children. Applicant offers clinical medical services that, by their
nature, are limited to adult females.
Finally, when applied to their respective services, the marks have very different
connotations. MOMMIEDOCS, as applied to Registrant’s services, connotes that the providers
of the website are mothers and doctors, and can bridge the gap between nervous parents and the
often inscrutable language of medicine. MOMMY DOCTORS, as applied to Applicant’s
services, connotes that Applicants are doctors that provide medical services to women who are
not yet mothers, but hope to become mothers.
Conclusion
Because of the highly diluted nature of the words that comprise both marks, the
descriptive character of the composites that are the marks, the differences in the services, and the
different connotations each mark carries when applied to the respective services, it is not likely
that consumers will be confused as to the source of Applicant’s and Registrant’s services when
consumers encounter them in association with the respective marks. Therefore Applicant
respectfully requests that the Examining Attorney reconsider the final refusal and allow
Applicant’s mark to proceed to publication.
The Applicant has responded to all issues raised in the Office Action. If any further
information or response is required, please contact Applicant's attorney. The attorney may be
reached by telephone at 703-525-8009.
Exhibit List
Exhibit 1 – Table of Class 44 Registrations Containing MOM, MOMMIE, or MOMMY
Exhibit 2 – U.S. Registration Nos. 2755219, 2819034, 2878840, 2946592, 3257402, 3402476,
3514686, 3465193, 3351542, 3367341, 3460872, 3438564, 3483872, 2756106,
2941714, 3027734, 3197407, 3116445, 3319868, 3123507, 3123515, 3219648,
3455418, 3289021, 3251758, 3268297, and 3540434
Exhibit 3 – Table of Class 44 Registrations Containing DOCTOR or a derivative thereof
Exhibit 4 – U.S. Registration Nos. 3534689, 3529759, 3517447, 3522849, 3530254, 3553102,
3553103, 3498694, 3530685, 2824045, 2866546, 3039857, 2855915, 2944892,
2956895, 2813070, 2879256, 2897154, 2823504, 3127536, 3060942, 2875044,
3149431, 3110019, 2922903, 2957084, 2939916, 2991992, 3415553, 3003065,
2997447, 3034638, 3048956, 3044933, 3001443, 3096629, 3091305, 3240391,
page 5 Request For Reconsideration SN 77405273
Ex. Atty.: Ahsen Khan
Law Office 115
EXHIBIT 1:
Table of Class 44 Registrations Containing MOM, MOMMIE, or MOMMY
S/N 77405273
Response To Office Action
Exhibit 3
Page 1 of 18
3149431 DOCTOR B Preparing and placing advertising for others, namely, the
placing of advertisments for those offering pain
management and pain diminution services Providing
medical information on the subject of pain and pain
mangement
3135232 Optometry services
3127536 SANA SANA COLITA DE RANA, printed materials, namely, booklets, pamphlets and
VISITA A TU DOCTOR PARA UNA brochures regarding health education, health awareness
VIDA SANA and general health issues Conducting educational
programs on the topic of health education, health
awareness and general health issues, directed to
physicians, health care professionals, patients and the
public via the internet, television, and radio broadcasting;
conducting educational seminars and programs in the
field of health education, health awareness and general
S/N 77405273
Response To Office Action
Exhibit 3
Page 11 of 18
3060942 DR. SEARS ZONE APPROVED Educational services, namely, conducting workshops,
seminars and classes in the fields of diet, health and
nutrition; providing on-line magazines, newsletters,
bulletins, in the fields of diet, health, and nutrition;
providing on-line newsletters in the fields of diet,health
and nutrition by e-mail catering services; restaurant,
café and snack bar services
computer services, namely, providing counseling
services, information, and educational information in the
fields of diet, health, and nutrition via the Internet;
counseling services in the fields of diet, health, and
nutrition; providing information in the fields of diet,
health, and nutrition via email
3060071 Neuropsychological, Forensic and Psychological
diagnostic and treatment services, for persons suffering
from cognitive disturbances and other psychological
impairments
2956895 DOCTOR'S VISIONWORKS Retail store services featuring optical goods Optician
services and optometric services
2944892 MEDICAL SERVICES IN THE NATURE OF A
PHYSICIAN'S MEDICAL PRACTICE
2879256 "WE PUT THE DOCTOR IN THE cosmetics of medical grade clinical skin care services,
DAY SPA" namely, laser hair removal, facial and skin photo
rejuvenation and microdermabrasion, hair styling,
manicures and pedicures
2875044 DOCTOR EVIDENCE providing medical information
2866546 THE FOOD DOCTOR Nutrition advisory services, nutrition consultation, and
nutrition counseling; providing information via the
Internet in the field of nutrition
2855915 Medical Services
S/N 77405273
Response To Office Action
Exhibit 3
Page 18 of 18
2823504 DR. HEALY'S DIET Weight reduction diet planning and supervision
2813070 DR. RATH'S HEALTH ALLIANCE pharmaceutical preparations for use in the treatment of
heart disease and heart conditions, diabetes, menstrual
disorders, blood pressure problems, cardiovascular
problems, lipid metabolism disorders, asthma, arthritis,
arthrosis, tinnitus, periodontosis, anemia, cell
deficiencies, and cancer; vitamins and minerals for
medical purposes; food supplements for non-medical
purposes, consisting primarily of vitamins, amino acids
and trace elements; dietetic supplements for non-medical
use, namely amino acids and trace elements in the nature
of dietary supplements; nutritionally fortified beverages
printed materials, namely books, pamphlets, magazines,
journals, newspapers, and printed teaching and
educational materials, in the fields of health care,
preventative health care, nutritional supplements, dietary
supplements, vitamins and mineral supplements
mineral and carbonated water; other non-alcoholic
beverages, namely fruit drinks and fruit juices;
preparations, namely syrups, powders, and tablets for
making fortified beverages education and training,
namely classes, seminars, conferences and workshops, in
the fields of health care, preventative health care and
nutritional supplements scientific research services
medical services; physician services; consultation
services in the fields of preventative health care, health
care and nutrition
APPLICATION NO. 77405273
RESPONSE TO OFFICE ACTION OF September 29, 2008
EXHIBIT 2:
Registrations
APPLICATION NO. 77405273
RESPONSE TO OFFICE ACTION OF September 29, 2008
EXHIBIT 3:
Table of Class 44 Registrations Containing DOCTOR or a derivative thereof
S/N 77405273
Response To Office Action
Exhibit 1
Page 1 of 5
2941714 A PLACE FOR MOM referral services of sources of elder care Consulting
services in the field of providing assisted living facilities
for the elderly Consulting services in the field of health
care for the elderly
2878840 health counseling services, namely, assisting individuals
to stop smoking; providing health information regarding
the dangers of perinatal smoking and associated
childhood illness; collection and analysis of health data
regarding smoking cessation
EXHIBIT 4:
Registrations
APPLICATION NO. 77405273
RESPONSE TO OFFICE ACTION OF September 29, 2008
EXHIBIT 5:
Excerpts From Registrant's Website
Welcome to MommyDocs! http://www.mommydocs.com/
Search: GO
Blog MD
January 4, 2009
Copyright © 2008 MommyDocs® LLC Dr. Jamie Freishtat & Dr. Rachel Schreiber Designed by nextdaysite.com
1 of 1 1/7/2009 2:24 PM
TEAS Submit Service ver 2.50 http://teasroa.uspto.gov/rfr/teas.service?page=12&form.ackMail=uspto%...
Your Request for Reconsideration after Final Action Was Submitted Succes
Success!
We have received your form for serial number 77405273. We will send an Email summary of the form to
"uspto@tm4smallbiz.com", which will be your official confirmation of receipt. For electronically-submitted forms, the U
will not mail any additional paper confirmation.
NOTE: Do NOT send a duplicate paper copy of this filing to the USPTO, as it will interfere with the proper processing o
electronic submission.
Thank you.
STAMP:
USPTO/RFR-69.17.37.98-20090107145819726790-77405273-430547941cbf85d310d56a4ef744d690ee-N/A-N/A-2009010714
1 of 1 1/7/2009 2:58 PM