WPCRAFTER Trademark Application Office Action Response

Attorneys at Law 111 Park Place *NJ DC Bar ®
Erik M. Pelton* Falls Church, VA 22046 ** VA DC & NY Bar

Benjamin D. Pelton** T: 703.525.8009 erikpelton.com
of counsel
F: 703.997.5349
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
May 18, 2018
Tasneem Hussain
Trademark Examining Attorney
Law Office 105
United States Patent and Trademark Office
RE: Serial No: 87486597

Mark: WPCRAFTER
Applicant: Amazing Ask, Inc.
Office Action Of: January 16, 2018
APPLICANT'S RESPONSE TO OFFICE ACTION
The following is the response of Applicant, Amazing Ask, Inc., by Counsel, to the Office
Action sent via email on January 16, 2018, by Examining Attorney Tasneem Hussain.
IDENTIFICATION OF SERVICES AMENDMENT

Applicant hereby amends the identification of goods and services, as follows:
Class 41: Educational services, namely, consumer-oriented video-based online training in
connection with building websites using on-line non-downloadable software for use in enabling
internet publishing
REQUEST FOR INFORMATION REQUIREMENT
The Examining Attorney requests that Applicant specify whether WORDPRESS® has
any connection with Applicant’s services, and if so, the extent and nature of the connection.
Applicant responds: Applicant’s services include helping others use WORDPRESS®.
page 2 Response to January 16, 2018 Office Action SN 87486597
Ex. Atty.: Tasneem Hussain
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LIKELIHOOD OF CONFUSION REFUSAL REGARDING REGISTRATION NOS.

5,333,439 AND 5,403,031
The Examining Attorney has refused registration of Applicant’s standard character
WPCRAFTER mark pursuant to Trademark Act Section 2(d), 15 U.S.C. § 1052(d), on the
ground that the mark is likely to be confused with CRAFTER in Registration No. 5,333,439, and
CRAFTER SOFTWARE & Design in Registration No. 5,403,031. For the following reasons,
Applicant respectfully disagrees with this finding and requests that the Examining Attorney
reconsider the statutory refusal and allow registration of Applicant’s mark.
Likelihood of confusion between two marks at the USPTO is determined by a review of
all of the relevant factors under the du Pont test. In re E.I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). Although the issue of likelihood of confusion typically
revolves around the similarity or dissimilarity of the marks and the relatedness of the goods or
services, “there is no mechanical test for determining likelihood of confusion and ‘each case
must be decided on its own facts.’” TMEP § 1207.01 (citing du Pont, 476 F.2d at 1361, 177
USPQ at 567). Each of the thirteen du Pont factors may be considered in weighing likelihood of
confusion, if raised, and any one may be dispositive. See TMEP § 1207.01. In some cases, a
determination that there is no likelihood of confusion may be appropriate, even where the marks
share common terms and the goods/services relate to a common industry, because these factors
are outweighed by other factors, such as differences in the relevant trade channels of the
goods/services, the presence in the marketplace of a significant number of similar marks in use
on similar goods/services, the existence of a valid consent agreement between the parties, or
another established fact probative of the effect of use. Id.
Table 1: Relevant Marks and Goods
Mark Goods/Services
Class 41: Educational services, namely, consumer-oriented
video-based online training in connection with building
websites using on-line non-downloadable software for use in
enabling internet publishing
Serial No.: 87/486,597
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Class 9: Computer software for use in the entry, management

and distribution of text, images, video and sound via the
Internet
Class 35: Business consulting services in the field of web
content management
Class 41: Training in the field of web content management
Class 42: Software as a service (SAAS) services featuring
software for web content management; Cloud computing
featuring software for use with web content management;
Computer services, namely, cloud hosting and managed
Registration No.: 5,333,439 hosting provider services; Server hosting and managed server
hosting; Development, installation and hosting and
maintenance of software for others
Class 9: Computer software for use in the entry, management
and distribution of text, images, video and sound via the
Internet
Class 35: Business consulting services in the field of web
content management
Class 41: Training in the field of web content management
Class 42: Software as a service (SAAS) services featuring
software for web content management; Cloud computing
featuring software for use with web content management;
Computer services, namely, cloud hosting and managed
hosting provider services; Server hosting and managed server
hosting; Development, installation and hosting and
Registration No.: 5,403,031
maintenance of software for others
Here, Applicant seeks registration of the standard character mark WPCRAFTER for
“Educational services, namely, consumer-oriented video-based online training in connection
with building websites using on-line non-downloadable software for use in enabling internet
publishing” in International Class 41. Applicant’s mark has been refused registration based on an
alleged likelihood of confusion with the standard character mark CRAFTER for various
computer software goods and services in International Classes 9, 35, 41, and 42, and CRAFTER
SOFTWARE & Design mark for various computer software goods and services in International
Classes 9, 35, 41, and 42. See Table 1, above. Applicant notes that both cited registrations are
owned by Crafter Software Corporation and feature identical identifications of goods and
services.
There is no likelihood that consumers will be confused as to the source of goods in
connection with each of these marks because Applicant’s mark is different in appearance, sound,
meaning, connotation, and commercial impression. The goods and services used in connection
with Applicant’s mark and the cited registrations are also different and operate in different
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channels of train, marketed toward different consumers. Further, the shared term, “CRAFTER,”
is relatively weak, both conceptually and commercially, when used in connection with software
and online training goods and services, and is thus entitled to a narrower scope of protection. 1
Finally, software goods and services are specialized and purchased by sophisticated consumers
who exercise a high degree of care due to the cost and privacy concerns associated with software
goods and services. Therefore, Applicant respectfully requests the Examining Attorney withdraw
her refusal and permit Applicant’s mark to be published on the Principal Register.
The Marks are Different in Sound, Appearance, Meaning, and Commercial Impression
Under du Pont, marks are compared for similarity or dissimilarity in their entireties as to
appearance, sound, connotation, and commercial impression. In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (CCPA 1973). “Marks tend to be perceived in
their entireties, and all components thereof must be given appropriate weight.” In re Hearst
Corporation, 982 F.2d 493, 494 (Fed. Cir. 1992) (citing Opryland USA, Inc. v. Great American
Music Show, Inc., 9970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992)); see also Juice Generation,
Inc. v. GS Enters. LLC, 794 F.3d 1334, 1340-41, 115 USPQ2d 1671, 1676 (Fed. Cir. 2015)
(noting that "the message of a whole phrase may well not be adequately captured by a dissection
and recombination"). Even when marks share a common portion, confusion is unlikely if they
create different commercial impressions. See Long John Distilleries, Ltd. v. Sazerac, 426 F.2d
1406, 166 USPQ 30 (CCPA 1970) (holding that although LONG JOHN and FRIAR JOHN
shared a common portion, they conveyed different commercial impressions).
Consumers are generally more inclined to focus on the first word, prefix or syllable in
any trademark or service mark. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2003); see also Presto
Prods., Inc. v. Nike-Pak Prods., Inc. 9 USPQ2d 1895, 1897 (TTAB 1988)(". . .it is often the first
part of the mark which most likely to be impressed upon the mind of a purchaser and
remembered. . ." when making purchasing decisions). Here, the first word in Applicant’s mark is
“WP,” which differentiated Applicant’s mark from the cited registration.
1
Note that Applicant is not attempting to collaterally attack the validity of the cited registrations. Rather, Applicant
merely asserts that the cited registrations are entitled to only a narrow scope of protection due to the relatively weak
and diluted nature of the shared term “CRAFTER.”
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When comparing Applicant’s WPCRAFTER mark in its entirety to the cited

registrations, Applicant’s mark differs in sound and appearance. Applicant’s WPCRAFTER
mark begins with the unshared term “WP,” whereas the cited registrations both begin with the
term “CRAFTER.” The addition of “WP” to the mark is likely to be impressed upon a purchaser
or user of Applicant’s services, because it is the first word that appears in the mark. The cited
CRAFTER SOFTWARE & Design mark also differs in appearance because the mark consists of
two small gears in the top left corner and bottom left corner, as well as a larger gear between the
smaller gears that is shaped like the letter “C.” The larger “C” shaped gear wraps around the first
letter of the word “CRAFTER,” further drawing attention to the word “CRAFTER” which is
larger in size than the word “SOFTWARE” in the mark. Applicant’s WPCRAFTER mark does
not include any stylized gears and does not draw specific attention to the word “CRAFTER.”
Consequently, the CRAFTER SOFTWARE & Design mark stands out visually from Applicant’s
standard character WPCRAFTER mark. As demonstrated herein, “CRAFTER” is rather diluted
in the field of software and online software training goods and services, and thus the differences
between the marks are significant. Applicant’s use of “WP” is part of the sound and appearance
of its mark, further differentiating it from the cited marks.
The marks also differ in meaning, connotation, and commercial impression. When
material added to a registered mark creates a different overall commercial impression, the
additions are sufficient to avoid a finding of likely confusion. See Citigroup Inc. v. Capital City
Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011). The only shared
term among the marks is “CRAFTER,” which comes from the root word “CRAFT, meaning
“skill in planning, making, or executing” or “an occupation or trade requiring manual dexterity
or artistic skill.” See Exhibit A. The term “CRAFTER” in Applicant’s mark indicates that the
educational services are executed and designed for consumers who are building or engineering
websites based on internet publishing software. In the alternative, Applicant’s mark suggests that
Applicant is skilled in the art of internet publishing software and offers educational services
based on Applicant’s craft of website building. The cited CRAFTER mark
The cited registrations, however, differ in meaning and commercial impression. The cited
CRAFTER mark suggests that Registrant is skilled in making and executing computer software
goods and services. The cited CRAFTER SOFTWARE & Design mark also describes that
Registrant is skilled in making and executing computer software goods and services, and
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provides little to no alternative meaning because the word “SOFTWARE” in the mark is
disclaimed, due to its descriptive nature. Neither of the cited marks conveys the idea of
educational services, but rather alludes to tangible software goods or related computer services.
As a result, when the cumulative effect of these significant differences between
Applicant’s WPCRAFTER mark and the cited CRAFTER and CRAFTER SOFTWARE &
Design marks is given fair weight, particularly in light of the unshared, first term “WP” in
Applicant’s mark, the differences in sound and commercial impression, and the weakness of the
only term shared “CRAFTER” among the marks, this factor weighs against the likelihood of
confusion refusal.
“CRAFTER” is a Weak and Diluted Term

The term “CRAFTER” shared by Applicant’s mark and the cited marks is rather weak,
diluted, and entitled to a narrower scope of protection. Marks containing common elements are
not likely to be confused if “the matter common to the marks is not likely to be perceived by
purchasers as distinguishing source because it is merely descriptive or diluted.” TMEP §
1207.01(b)(iii); see, e.g., Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350
(Fed. Cir. 2004). Widespread third-party use of a term in USPTO registrations may be offered as
evidence of a term’s weakness and dilution with respect to a particular field and weighs in favor
of narrowing the scope of its protection against subsequent applications. Pizza Inn, Inc. v. Russo,
221 USPQ 281, 283 (TTAB 1983); Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1722, 396 F.3d 1369, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005) (holding that the
existence of widespread third-party use under the du Pont factors may serve to indicate the
weakness of a term in the context of its source identifying significance). Consequently, “the
addition of other matter to a highly suggestive or descriptive designation, whether such matter be
equally suggestive or even descriptive, or possibly nothing more than a variant of the term, may
be sufficient to distinguish them so as to avoid confusion in trade.” In re Hunke & Jochheim, 185
USPQ 188, 189 (TTAB 1975) (HIG DURABLE for stationery articles, including folders, binders
and paper, not confusingly similar to DURABUL for record books).
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The Shared Term is Conceptually Weak and Highly Suggestive

Although the marks share similar wording, the term “CRAFTER,” as used in the cited
registrations, is weak and highly suggestive. Here, the term shared among the marks, CRAFTER,
has diminished source identifying significance because it is highly suggestive. The word
“CRAFTER” is conceptually weak with respect to the relevant computer software and website
building industries. In that context, the term “CRAFTER” relates to “CRAFTSMANSHIP,” and
in the computer software industry, SOFTWARE CRAFTSMANSHIP is “an approach to
software development that emphasizes the coding skills of software developers.” See Exhibit B.
Hence, the term “CRAFTER” is conceptually weak because it is highly suggestive of software
goods and services and related skills of software programmers.
The word “CRAFTER” is also conceptually weak due to its large mass media presence
and attention. For example, in 2002, Pete McBreen published a book entitled “Software
Craftsmanship: The New Imperative,” which introduced the phrase SOFTWARE
CRAFTSMANSHIP as “a programmer-centric way to build software.” See Exhibit C. Many
articles and blog posts touch on the idea of SOFTWARE CRAFTSMANSHIP and comment
upon thoughts and concerns regarding the craft of programmers or software developers. See
Exhibits D-G. Consequently, the cited CRAFTER and CRAFTER SOFTWARE & Design marks
are entitled to a narrower scope of protection than stronger, less suggestive marks because the
term “CRAFTER” is conceptually weak in relation to computer software and related goods and
services.
“CRAFTER” is Commercially Weak and Diluted

“Where a party uses a weak mark, his competitors may come closer to his mark than
would be the case with a strong mark without violating his rights.” Sure-fit Products Company v.
Saltzson Drapery Company, 254 F.2d 158 (CCPA 1958). Widespread use of third-party
registrations of the term “CRAFTER” for computer software (goods and services) and online
software training services have weakened the trademark significance of the term and the scope of
protection afforded to the cited Registrant’s marks. Evidence establishing that the consuming
public is exposed to third-party use of similar marks on similar goods “is relevant to show that a
mark is relatively weak and entitled to only a narrow scope of protection.” Palm Bay Imports,
396 F.3d at 1373. If the common element of two marks is "weak" in that it is generic,
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descriptive, or highly suggestive of the named goods or services, it is unlikely that consumers
will be confused unless the overall combinations have other commonality. See, e.g., Juice
Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1338-40, 115 USPQ2d 1671, 1674-75
(remanded for consideration of whether and to what degree the phrase PEACE & LOVE was
suggestive or descriptive in the food-service industry); In re Bed & Breakfast Registry, 791 F.2d
157, 159 229 USPQ 818, 819 (Fed. Cir. 1986) (reversing TTAB’s holding that contemporaneous
use of BED & BREAKFAST REGISTRY for making lodging reservations for others in private
homes, and BED & BREAKFAST INTERNATIONAL for room booking agency services, is
likely to cause confusion, because, inter alia, the descriptive nature of the shared wording
weighed against a finding that the marks are confusingly similar); see also TMEP
§§1207.01(b)(iii), (b)(ix). In Jack Wolfskin Ausrustung Fur Draussen GmbH v. New Millennium
Sports, S.L.U., No. 2014-1789 (Fed. Cir. 2015), the Circuit noted that, “extensive evidence of
third party use and registration is ‘powerful on its face’ even where the specific extent and
impact of the usage has not been established.”
Here, there are at least 9 live use-based third-party marks on the Principal and
Supplemental Registers that include the term “CRAFTER” for various types of computer
software and online training software in International Classes 9, 35, 41, and 42. See Table 2,
below, and U.S. registration certificates attached as Exhibit H. For example, the marks have
SITE CRAFTERS, CRAFTER’S COMPANION, and CRAFTERMANIA all been permitted to
coexist on the trademark register even though each recites similar computer software and web
site development services.
Table 2: Third-party Registrations for CRAFTER for Software and Online Training Software
Mark Reg. No. Relevant Classes 9, 35, 41, and 42
Class 9: Downloadable computer software for
5179580 educational use featuring instruction in the craft
industry provided on data media; compact discs,
namely, magnetic discs, optical discs, all featuring
informative material in the field of crafting; DVDs
containing informative material relating to crafting;
CD-ROMs containing informative material relating to
crafting
4926978 Class 9: Computer game software for use on mobile
and cellular phones
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4561387 Class 9: Computer software for designing wire

partitions, cages, enclosures, and machine guarding
5450363 Class 42: Web site development for others; Web site
hosting services
5108992 Class 41: Entertainment, namely, a continuing music

show broadcast over radio; education services, namely,
providing classes, workshops, seminars, camps and
instruction in the field of songwriting; online journals,
namely, blogs featuring songwriting; publishing of
books, e-books, audio books, music and illustrations
4310189 Class 42: Computer services, namely, creating an on-
line community for registered users to participate in
discussions, get feedback from their peers, form virtual
communities, and engage in social networking services
in the field of arts, crafts and hobbies
3679545 Class 41: Educational services, namely, conducting
workshops, seminars, and demonstrations in the field of
craft and hobby, home, and design; On-line journals,
namely, blogs featuring craft and hobby, lifestyle, and
craft design information
3525438 Class 41: PROVIDING AN ON-LINE COMPUTER
DATABASE FOR EDUCATORS FEATURING
ALIGNED CURRICULUM INFORMATION
4338151 Class 35: On-line retail store services featuring a wide
variety of consumer goods of others; Providing a
website featuring an online marketplace for exchanging
goods and services with other users
In addition, there are at least ten (10) other common law users of “CRAFTERS” marks in
connection with website development, programming, and computer software goods and services.
See Table 3, below, and website screenshots attached as Exhibits I-R, hereto.
Table 3: Third-party Common Law CRAFTER Marks

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These third-party registrations and common law marks demonstrate that there is a
crowded field of marks that combine the term “CRAFTER” with one or more generic or
descriptive terms in the software and website building goods and services industry. There are
also several dozen live-based third-party registrations in connection with software goods and
services that include the term “CRAFT” in the mark. See Exhibit S. As a result, the term
“CRAFTER,” as used in the cited marks, is commercially weak and diluted, and entitled to a
narrower scope of protection.
Since “CRAFTER” is both conceptually and commercially very weak, the mere fact that
Applicant’s mark shares this term with the cited marks is not sufficient to support a likelihood of
confusion refusal. Rather, more weight must be accorded to the differences between the relevant
goods and services and any unshared elements of the marks, such as unshared terms, meanings,
and connotations. See Continental Grain Company v. Central Soya Company Inc., 69 F.3d 555
(Fed. Cir. 1995) (holding that “where the mark is a composite of a weak common part and a
modifying phrase … the common portion of the composite mark is to be given less weight on the
rationale that the public will look to other portions of the marks and will not be confused unless
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the other portions are similar”). In light of the relative weakness of the cited marks, and the
limited significance of the only term shared between the relevant marks, this factor weighs
against the likelihood of confusion refusal.
The Degree of Care and Sophistication of Consumers in the Relevant Services

Where purchasers are sophisticated and apply a high degree of care to the procurement of
services in this way, confusion is less likely to result. See, e.g., Astra Pharmaceutical Products v.
Beckman Instruments, 718 F.2d 1201, 1206 (1st Cir. 1983); In re American Olean Tile Co., 1
U.S.P.Q.2d 1823 (TTAB 1986). Circumstances suggesting care in purchasing may tend to
minimize the likelihood of confusion. See, e.g., In re N.A.D., Inc., 754 F.2d 996, 999-1000, 224
USPQ 969, 971 (Fed. Cir. 1985) (concluding that, because only sophisticated purchasers
exercising great care would purchase the relevant goods, there would be no likelihood of
confusion merely because of the similarity between the marks NARCO and
NARKOMED); Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d
1030, 1039 (TTAB 2016) (finding that, "even in the case of the least sophisticated purchaser, a
decision as important as choosing a senior living community will be made with some thought
and research, even when made hastily"); In re Homeland Vinyl Prods., Inc., 81 USPQ2d 1378,
1380, 1383 (TTAB 2006). “In a market with extremely sophisticated buyers, the likelihood of
consumer confusion cannot be presumed on the basis of similarity in trade name
alone.” Perini Corp. v. Perini Constr., Inc., 915 F. 2d 121, 128 (4th Cir. 1990).
Similar to Primrose, the least sophisticated purchaser of software programming goods
and services would at least research the companies with some thought before investing in the
goods and services, given that such services involve expensive decisions. Consumers are very
likely to invest time, energy, and research into selecting computer software goods and services
because such goods and services have a large effect on the successfulness of a company, and
data breach.
Applicant provides its services to “non-techies” who have no experience and expertise in
creating or building a website for their businesses. See Exhibit U. Registrant, on the other hand,
provides its goods and services to “developers, editors, and operat[ors]” who are experienced
experts in the software industry. See Exhibit V. As such, Registrant’s customer base is
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sophisticated and likely to exercise a high degree of care in connection with software goods and
services; and thus, this factor heavily weighs against a likelihood of confusion refusal.
Differences in Channels of Trade

In accessing the similarity of channels of trade and classes of consumers or users, courts
must determine whether there is likely to be an overlap between the respective purchasers/users
of the goods and services of the parties to confuse actual and potential purchasers/users.
Electronic Design & Sales v. Electronic Data Systems, 954 F.2d 713, 21 USPQ2d 1388, 1390
(Fed. Cir. 1992); see also TMEP §1207.01(a)(iii):
[W]here both applicant’s goods and opposer’s services are marketed and sold in
the medical and certain other fields, it is error to deny registration simply because
“applicant sells some of its goods in some of the same fields in which opposer
provides its services,” without determining who are the “relevant persons” within
each corporate customer. This is especially true where, as here, the Board
acknowledged that “applicant’s goods are specifically different and
noncompetitive.”
[Internal citations omitted]. Electronic Design & Sales v. Electronic Data Systems, 21 USPQ2d
at 1391.
Although both Applicant and the cited registrants operate in the software and website
building industry, the respective products and services of the parties are different and
noncompetitive. Applicant’s website building services are marketed towards “non-techies” or
individuals who are not trained or experienced in building websites. See Exhibit U. All of the
educational services in Applicant’s identification relate solely to individual consumers, rather
than large corporate entities or experienced software programmers. Applicant, therefore, has a
customer base of inexperienced consumers, seeking to build a website for their business. In
contrast, Registrant’s CRAFTER and CRAFTER SOFTWARE & Design marks are marketed
toward “developers, editors, and operat[ors]” who are experienced in software development and
programming goods and services. See Exhibit V. Registrant’s customers include large
corporations, such as AT&T, AppNexus, Papa John’s Pizza, Netgear, Mastercard, and the NFL.
See Exhibit W. Likewise, the same individuals who use Applicant’s building website services for
educational purposes are not the same individuals who buy high-end software products and
services for web content management. There is no basis for the Examining Attorney to presume
that the same individuals who use Applicant’s services are also the same individuals who
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purchase and use Registrant’s goods and services. None of the markets for the respective goods
overlap, and thus the parties’ channels of trade are separate and distinct.
Balancing the Factors

In conclusion, Applicant’s WPCRAFTER mark differs from Registrant’s CRAFTER and
CRAFTER SOFTWARE & Design marks in sound, appearance, connotation, and commercial
impression. Applicant’s mark begins with a unshared first word “WP,” distinguishing it from
Registrant’s marks. The only similarity among the marks arises merely from the common
presence of the rather weak and diluted term “CRAFTER.” As is often the case, this factor is
outweighed by “the presence in the marketplace of a significant number of similar marks in use
on similar goods/services,” which indicates that consumers will be likely to focus on the
significant unshared wording, meaning, and overall commercial impression of Applicant’s entire
mark when considering the source of Applicant’s services. TMEP § 1207.01. The evidence also
demonstrates that there are differences in channels of trade and customer base for the three
marks. Applicant’s services are marketed toward an inexperienced consumer, whereas
Registrant’s goods and services are advertised and sold to large corporations and their respective
software programming and development teams. The field of software goods and services is also
rather sophisticated and the degree of care with which consumers purchase goods and services is
high, considering the costs and consequences of website breaches. Therefore, there is no
likelihood that consumers will be confused as to the source of Applicant’s services, and
Applicant respectfully requests that the Examining Attorney withdraw the refusal with respect to
cited Registration Nos. 5,333,439 and 5,403,031.
FALSE SUGGESTION REFUSAL UNDER SECTION 2(A)

The Examining Attorney has refused registration of Applicant’s standard character
WPCRAFTER mark pursuant to Trademark Act Section 2(a), 15 U.S.C. §1052(a), on the basis
that Applicant’s mark falsely suggests a connection with WORDPRESS®. For the following
reasons, Applicant respectfully disagrees with this finding and requests that the Examining
Attorney reconsider the statutory refusal and allow registration of Applicant’s mark.
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The Mark Does Not Consist of or Include a False Suggestion of a Connection

Under Section 2(a) of the Act, the registration of a mark that “consists of or comprises
matter that may falsely suggest a connection with persons, institutions, beliefs, or national
symbols” is prohibited. In re Pedersen, 109 USPQ2d 1185, 1188 (TTAB 2013). To establish
that an applied-for mark falsely suggests a connection with a person or an institution, the
following is required:
(1) The mark sought to be registered is the same as, or a close approximation of,
the name or identity previously used by another person or institution.
(2) The mark would be recognized as such, in that it points uniquely and
unmistakably to that person or institution.
(3) The person or institution identified in the mark is not connected with the
goods sold or services performed by applicant under the mark.
(4) The fame or reputation of the named person or institution is of such a nature
that a connection with such person or institution would be presumed when
applicant’s mark is used on its goods and/or services.
In re Pedersen, 109 USPQ2d at 1188-89; In re Jackson Int’l Trading Co., 103 USPQ2d 1417,
1419 (TTAB 2012); TMEP §1203.03(c)(i).
Evolving out of the rights of privacy and publicity, the false suggestion of a connection
under § 2(a) of the Trademark Act was intended to preclude registration of a mark which
conflicts with another’s rights, even though not founded on the familiar test of likelihood of
confusion. University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 703 F.2d 1372,
1376, 217 USPQ 505, 509 (Fed. Cir. 1983). A party’s interest in its identity does not depend for
its existence on the adoption and use of a technical trademark, a party must nevertheless have a
protectable interest in a name (or its equivalent). The key factor in the false suggestion analysis,
therefore, is whether Applicant’s mark is a close approximation of WordPress’ name or identity,
i.e., a right in which WordPress possesses a protectable interest. If the Examining Attorney’s
false suggestion claim fails on this ground, the remaining factors are moot. See The Board of
Trustees of The University of Alabama and Paul W. Bryant, Jr. v. William Pitts, Jr. and
Christopher Blackburn, 107 USPQ2d 2001 (TTAB 2013) [precedential].
There is no evidence that WORDPRESS® has ever used the word “WP” in connection
with its goods and services. Nor is there any evidence that WORDPRESS® uses or promotes the
word “WP,” in a manner that would constitute the WORDPRESS®’s identity. In fact, on its
website, WORDPRESS® explicitly states, “[t]he abbreviation “WP” is not covered by the
WordPress trademarks and you [other businesses/companies] are free to use it in any way you
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see fit.” See Exhibit T. Accordingly, there is no basis for the Examining Attorney to conclude
that the term “WP” in Applicant’s mark constitutes a false suggestion in connection with
WORDPRESS® because the term “WP” is not previously used by WORDPRESS® and
WORDPRESS® claims no rights in the term.
In addition, there are 22 other live-based third-party registered marks in the field of
software that use the term “WP” in their trademark. See Table 4, below, and U.S. registration
certificates attached as Exhibit X. All of the below-referenced marks are registered on the
Principal Register and relate to software and website building goods and services. There is also
no indication of consent from WORDPRESS® for the mark owners of the below-referenced
registrations to use the word “WP” in their respective marks.
Table 4: Third-party Registrations for WP for Software and Online Training Software
Mark Reg. No. Relevant Software/Website Classes
Class 42: Technical support services, namely,
5334903 ongoing 24/7 troubleshooting of open source
computer software problems
5281107 designing web based forms

5281098 designing web based forms
Class 9: Downloadable software for use in

5245535 managing content for content management systems

managing product sales information and product
5254538 distribution information for affiliate programs and
tracking sales commissions from such affiliate
programs.
Class 42: Web site design; Web site design
consultancy; Web site development for others; Web
5203786 site hosting services; Computer software design;
Computer services, namely, cloud hosting provider
services; Computer services, namely, integration of
private and public cloud computing environments;
Consulting services in the field of cloud
computing; Creating web pages for others; Creating
and designing web pages for others; Creating and
maintaining web sites for others; Creating,
designing and maintaining web sites; Design of
Law Office 105
home pages and web sites; Designing web pages

for others; Designing and creating web sites for
others; Hosting of web sites; Hosting the web sites
of others; Installation of computer software;
Managing web sites for others; Providing virtual
computer systems and virtual computer
environments through cloud computing; Rental of
web servers; Technical consulting services in the
fields of datacenter architecture, public and private
cloud computing solutions, and evaluation and
implementation of internet technology and
services; Technical support services, namely,
remote and on-site infrastructure management
services for monitoring, administration and
management of public and private cloud computing
IT and application systems; Testing of
computer software; Updating and maintaining
cloud-based computer software through online
updates
Class 42: Software as a service services
featuring software for web page optimization;
5307030 computer software design for the optimization of
web site traffic and data traffic; maintenance of
computer software; updating of computer software
Class 42: Computer services, namely, designing

and implementing web sites for others; computer
services, namely, monitoring, testing, analyzing,
and reporting on the Internet traffic control and
5026825 content control of the web sites of others;
computer software consultancy in the field of web
site development and management of website
content via content management system (CMS)
platforms
Class 42: Updating websites of others through
4922037 updating functionality software used to support the
websites
Class 9: Computer software for healthcare
4886328 management
Class 9: Computer software development tools

4659071
Class 9: Downloadable software for use in design

4758917 and managing content on a website
Class 42: Web site design; Web site development

5155126 for others
Law Office 105
Class 42: hosting and maintenance of websites for

others; technical support services in the field of
website design and maintenance; providing remote
backup and recovery of computer data for websites;
4669695 website data migration services; providing security
for websites, namely, design, hosting and
maintenance of website security software used to
protect websites against attacks, hacking and
malware
Class 9: Software for checking compatibility of
4454908 themes and plugins
Class 9: Software for designing and managing

4454906 content of a website
Class 9: Data-processing equipment, namely,

downloadable computer software and recorded
computer programs for use as website content
management system (CMS) platforms and for
management of web site content via mobile devices
Class 42: Computer services, namely, designing
4303301 and implementing web sites for others; computer
services, namely, monitoring, testing, analyzing,
and reporting on the Internet traffic control and
content control of the web sites of others;
computer software consultancy in the field of web
site development and management of website
content via content management system (CMS)
platforms
Class 42: Providing temporary use of a web-
4371721 based software application for use in customer
relationship management
Class 38: Providing an on-line forum for web-
4854860 site development resources
Class 35: Advertising services; On-line advertising

4275426 services for others
Class 42: Website development for others
Class 9: Computer software for use
by website authors and developers in the
4141205 optimization of websites and of the display
of website information and web pages prior to
transmission of websites and web pages to mobile
devices
Class 9: Software for designing and
4461842 managing content of websites, including
multilingual websites
Law Office 105
There is no evidence that WORDPRESS® opposed any of the above-referenced

trademarks or expressed any issues with the registration of those marks. Accordingly,
Applicant’s WPCRAFTER mark does not consist of or include a false suggestion of a connection
to WORDPRESS® and WORDPRESS® claims no right to the term “WP,” and Applicant
requests that the refusal be withdrawn.
The Applicant has responded to all issues raised in the Office Action. If any further
information or response is required, please contact the Applicant's attorney. The attorney may be
reached by telephone at 703-525-8009.
Respectfully submitted,
Erik M. Pelton, Esq.

Attorney for Applicant
Exhibits:
Exhibit A: Definition of “craft,” Merriam-Webster’s Online Dictionary,

https://www.merriam-webster.com/dictionary/crafter (last visited May 15, 2018).
Exhibit B: Software craftsmanship, WIKIPEDIA,

https://en.wikipedia.org/wiki/Software_craftsmanship (last visited May 15, 2018).
Exhibit C: Software Craftsmanship: The New Imperative, AMAZON,

https://www.amazon.com/Software-Craftsmanship-Imperative-Pete-
McBreen/dp/0201733862 (last visited May 15, 2018).
Exhibit D: Ben Linders, Becoming Software Craftsmen, InfoQ (Nov. 20, 2014),
https://www.infoq.com/news/2014/11/becoming-software-craftsmen.
Exhibit E: Coman Hamilton, Software Craftsmanship – why you should be proud to be a

developer, JAXENTER (Sept. 3, 2015), https://jaxenter.com/software-
craftsmanship-why-you-should-be-proud-to-be-a-developer-119970.html.
Exhibit F: Dan North, Programming is Not a Craft, DAN NORTH & ASSOCIATES (Jan. 11,
2011), https://dannorth.net/2011/01/11/programming-is-not-a-craft/.
Law Office 105
Exhibit G: Home page, CODURANCE, https://codurance.com/ (last visited May 15, 2018).
Exhibit H: Third-party Registration Certificate Nos. 5179580; 4926978; 4561387; 5450363;

5108992; 4310189; 3679545; 3525438; and 4338151.
Exhibit I: Home page, WEB CRAFTERS, http://www.webcraftersdesign.com/ (last visited

May 15, 2018).
Exhibit J: About, PAGECRAFTER, https://pagecrafter.com/about/ (last visited May 15, 2018).
Exhibit K: About Us, The Game Crafter, https://help.thegamecrafter.com/article/148-about-

us (last visited May 15, 2018).
Exhibit L: About, PI CRAFTERS, https://www.picrafters.com/about.html (last visited May 15,

2018).
Exhibit M: Capabilities, BITCRAFTER MEDIA CORPORATION,

http://www.bitcrafter.com/capabilities/capabilities.htm (last visited May 15,
2018).
Exhibit N: About C3, C3 CUSTOM CODE CRAFTERS,

http://www.customcodecrafters.com/article/2/about_c3 (last visited May 15,
2018).
Exhibit O: Home page, IWEBCRAFTER, https://iwebcrafter.com/ (last visited May 15, 2018).
Exhibit P: My Work, ANJALI WEB CRAFTER, http://www.webcrafteranjali.com/my-work-

websites.html (last visited May 15, 2018).
Exhibit Q: About, NETCRAFTER SOLUTIONS, https://netcraftersolutions.com/about/ (last

visited May 15, 2018).
Exhibit R: Home page, SURVEY CRAFTER,

https://www.surveycrafter.com/interim2/default.asp (last visited May 15, 2018).
Exhibit S: TESS Search Results for ((*craft*)[BI] and (software)[GS] and (live)[LD] not
(0)[RN]) (last accessed May 16, 2018).
Exhibit T: Trademark Policy, WORDPRESS FOUNDATION,

https://wordpressfoundation.org/trademark-policy/ (last visited May 16, 2018).
Exhibit U: Home page, WPCRAFTER, https://www.wpcrafter.com/ (last visited May 16,

2018).
Law Office 105
Exhibit V: About: Company Overview, CRAFTER SOFTWARE,

https://www.craftersoftware.com/about/company (last visited May 16, 2018).
Exhibit W: About: Our Customers, CRAFTER SOFTWARE,

https://www.craftersoftware.com/about/customers (last visited May 16, 2018).
Exhibit X: Third-party Registration Certificate Nos. 5334903; 5281107; 5281098; 5245535;

5254538; 5203786; 5307030; 5026825; 4922037; 4886328; 4659071; 4758917;
5155126; 4669695; 4454908; 4454906; 4303301; 4371721; 4854860; 4275426;
4141205; and 4461842.
APPLICATION NO. 87486597
RESPONSE TO OFFICE ACTION OF January 16, 2018
EXHIBIT A :
Definition of “craft,” Merriam-Webster’s Online Dictionary,
https://www.merriam-webster.com/dictionary/crafter (last visited May
15, 2018).
EXHIBIT B :
Software craftsmanship, WIKIPEDIA,
https://en.wikipedia.org/wiki/Software_craftsmanship (last visited May
15, 2018).
EXHIBIT C :
Software Craftsmanship: The New Imperative, AMAZON,
https://www.amazon.com/Software-Craftsmanship-Imperative-Pete-
McBreen/dp/0201733862 (last visited May 15, 2018).
EXHIBIT D :
Ben Linders, Becoming Software Craftsmen, InfoQ (Nov. 20, 2014),
https://www.infoq.com/news/2014/11/becoming-software-craftsmen.
EXHIBIT E :
Coman Hamilton, Software Craftsmanship – why you should be proud
to be a developer, JAXENTER (Sept. 3, 2015),
https://jaxenter.com/software-craftsmanship-why-you-should-be-proud-
to-be-a-developer-119970.html.
EXHIBIT F :
Dan North, Programming is Not a Craft, DAN NORTH &
ASSOCIATES (Jan. 11, 2011),
https://dannorth.net/2011/01/11/programming-is-not-a-craft/.
EXHIBIT G :
Home page, CODURANCE, https://codurance.com/ (last visited May
15, 2018).
EXHIBIT H :
Third-party Registration Certificate Nos. 5179580; 4926978; 4561387;
5450363; 5108992; 4310189; 3679545; 3525438; and 4338151.
Reg. No. 5,179,580 Crafter's Companion Limited (UNITED KINGDOM limited company (ltd.) )
11 Collingwood Street, Coundon
Registered Apr. 11, 2017 Bishop Auckland UNITED KINGDOM DL148LG
CLASS 7: (Based on Use in Commerce) Machines and machine tools for use in the craft
Int. Cl.: 7, 8, 9, 16 industry, namely, for embossing, die-cutting, laminating, labelling, sticker-making; machines
and machine tools for the production of craft articles, namely, machines and machine tools for
Trademark the production of embossed materials, dies, laminated materials, labels, stickers; machines
and machine tools for the production of paper and cardboard articles; die-cutting machines;
Principal Register cutting dies for use with machines; embossing machines
FIRST USE 4-30-2016; IN COMMERCE 7-31-2016
CLASS 8: (Based on 44(e)) Hand tools and implements for use in the craft industry, namely,
cutting tools, planers, trimmers, styluses, rollers, distressers, and scoring tools; hand tools and
implements for the production of craft, paper, card and cardboard articles, namely, cutting
tools, planers, trimmers, styluses, rollers, distressers, and scoring tools; hand tools and
implements in the form of shaped boards for use as templates in the production of paper and
cardboard articles; hand tools and implements for the production of envelopes, namely,
shaped boards, grooved boards and scoring tools; hand tools and implements for the
production of boxes, namely, cutting tools, planers, trimmers, styluses, rollers, distressers,
shaped boards, grooved boards, and scoring tools; hand tools and implements for the
production of greeting cards and envelopes, namely, cutting tools, planers, trimmers, styluses,
rollers, distressers, shaped boards, grooved boards, and scoring tools; hand tools and
implements for the production of 3-Dimensional (3D) cards and envelopes, namely, cutting
tools, planers, trimmers, styluses, rollers, distressers, shaped boards, grooved boards, and
scoring tools; hand tools and implements for scoring paper and cardboard, namely, cutting
tools, grooved boards and scorers, namely, scoring knives; hand tools and implements
comprising scoring knives, scoring tools and shaped boards with guide lines to facilitate the
scoring of paper and cardboard articles; hand tools and implements for embossing card and
paper, namely, hand-operated press machine for paper embossing; hand tools for die cutting;
hand tools for embossing, namely, hand-operated press machines for paper embossing
CLASS 9: (Based on 44(e)) Downloadable computer software for educational use featuring
instruction in the craft industry provided on data media; compact discs, namely, magnetic
discs, optical discs, all featuring informative material in the field of crafting; DVDs
containing informative material relating to crafting; CD-ROMs containing informative
material relating to crafting
CLASS 16: (Based on 44(e)) Paper; cardboard and goods made from these materials, namely,
gift boxes, stickers, occasion cards, greeting cards, envelopes; stationery; cards, namely,
occasion cards, greeting cards; greeting cards; printed matter, namely, educational materials,
printed guides, newsletters, patterns in the field of crafting and crafts; brochures about
crafting and crafts; books, namely, scrapbooks, coloring books, books in the fields of crafting
and sewing; catalogues in the fields of crafting and sewing; magazines in the fields of crafting
and sewing; postcards; posters; calendars; pictures; publications, namely, books, handouts,
workbooks, patterns in the fields of crafts and creative leisure activities; bookbinding
materials; photographic prints; adhesives for stationery or household purposes; adhesives for
craft purposes, namely, craft glue for stationery or household purposes; artists' materials,
namely, paint, brushes, charcoal, pencils, pens, glitter, mica, modelling clay, gliding paste,
modeling wax; paint brushes; printed instructional and teaching materials in the fields of
crafts and creative leisure activities; plastic bags for packaging; decals; labels, namely,
address labels, adhesive labels, mailing labels; printing blocks; paper for craft purposes; paper
sheets, namely, drawing paper, writing paper, crafting paper; coloured paper sheets, namely,
drawing paper, writing paper, crafting paper; writing paper; drawing paper; wrapping paper;
craft paper; carbon paper; crepe paper; copying paper; decoupage sheets, namely, craft paper;
stickers; cards for craft purposes, namely, craft paper; card sheets, namely, craft paper;
coloured cards, namely, craft paper; albums, namely, event album, memory books, photo
albums, scrapbook albums, sticker albums; loose-leaf binders; files, namely, card files,
document files, file folders; folders; envelopes; writing pads; note books; scrapbooks;
notebooks; pocket memorandum books; drawing pads; writing books; drawing books;
stencils, namely, craft templates for drawing, marking, colouring; writing instruments; pens;
felt writing pens; ball-point pens; rollerball pens; gel ink roller ball pens; brush pens for
stationery or household purposes; marking pens; pencils; pencil lead holders; coloured
pencils; brushes, namely, artists' brushes, drawing brushes, eraser dusting brushes, paint
brushes, writing brushes, crafting brushes, embossing brushes; writing brushes; markers; felt
tip markers; white board markers; highlighter pens; paint markers; writing ink and ink
reservoirs; inks for pads; pre-inked stamps; ink pads for stamps; replenishing ink for stamps;
replenishing ink for ink pads; glue for stationery or household purposes; glue for craft
purposes; gums, namely, adhesives for stationery or household purposes; gums, namely,
adhesives for craft purposes in the nature of stationery and household purposes; adhesive
tapes for stationery or household purposes; adhesive tapes for craft purposes in the nature of
stationery or household purposes; self-adhesive tapes for stationery or household purposes;
self-adhesive tapes for craft purposes in the nature of stationery or household purposes;
double-sided adhesive tapes for stationery or household purposes; double-side adhesive tapes
for craft purposes in the nature of stationery or household purposes; stamps, namely, seals;
paperclips; erasing products, namely, ink erasers, rubber erasers, chalk erasers; correcting
fluids, namely, for ink, for type, for documents, for printing blocks; correction pens; indian
inks; marking chalk for stationery purposes; pen nibs; paper knives, namely, paper cutters;
pencil leads; white boards, namely, dry erase boards; erasers for white boards; pen cases;
boxes for pens; school supplies, namely, writing instruments, pens, pencils, erasers, markers,
highlighter pens, notebooks, paper, pencil sharpeners for stationery purposes; rulers, namely,
drafting rulers, drawing rulers, ungraduated rulers; pencil sharpeners; non-electric staplers;
staples; water-colours; crayons; pastels; oil pastels; charcoal pencils; paint boxes; palettes for
painters; painter's easels; canvas for painting; pastel brushes for painting; pastel sponges for
painting; water brushes for painting; brush washers, namely, a stand that holds water for
cleaning paint brushes; water colour boxes; rubber stamps; stamping devices for office use,
namely, address stamps, date stamps, impression stamps, ink stamps; stamp blocks, namely,
mounts for stamps; rubber stamps; stamps, namely, numbering stamps, sealing stamps,
impression stamps, ink stamps; hand punches for paper and cardboard; tracing and marking
templates for drawing, marking; hand tools and implements for use in the craft industry,
namely, ink stamps, rubber stamps, stencils, artist's brushes, and writing brushes; hand tools
and implements for the production of craft, paper, card and cardboard articles, namely, ink
stamps, rubber stamps, stencils, artist's brushes, and writing brushes; hand tools and
implements for the production of boxes, namely, ink stamps, rubber stamps, stencils, artist's
brushes, and writing brushes; hand tools and implements for the production of greeting cards
and envelopes, namely, ink stamps, rubber stamps, stencils, artist's brushes, and writing
brushes; hand tools and implements for the production of 3-Dimensional (3D) cards and
envelopes, namely, ink stamps, rubber stamps, stencils, artist's brushes, and writing brushes
THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY

PARTICULAR FONT STYLE, SIZE OR COLOR
OWNER OF EUROPEAN UNION REG. NO. 007538192, DATED 09-01-2009, RENEWED
Page: 2 of 4 / RN # 5179580
AS REG. NO. 007538192 , EXPIRES 01-20-2019
No claim is made to the exclusive right to use the following apart from the mark as shown:
"CRAFTER'S"
SER. NO. 87-023,628, FILED 05-03-2016

JEANE YOO, EXAMINING ATTORNEY
Page: 3 of 4 / RN # 5179580
Reg. No. 5,108,992 LaBate, Chelsea (UNITED STATES INDIVIDUAL)
70 Madison Ave
Registered Dec. 27, 2016 Asheville, NC 28801
CLASS 41: Entertainment, namely, a continuing music show broadcast over radio; education
Int. Cl.: 41 services, namely, providing classes, workshops, seminars, camps and instruction in the field
of songwriting; online journals, namely, blogs featuring songwriting; publishing of books, e-
Service Mark books, audio books, music and illustrations
Principal Register FIRST USE 2-17-2015; IN COMMERCE 2-17-2016

SER. NO. 87-036,173, FILED 05-13-2016

MONICA L BEGGS, EXAMINING ATTORNEY
Reg. No. 5,450,363 Patrick W. Maloney (CALIFORNIA SOLE PROPRIETORSHIP), DBA Applied Information
Technology
Registered Apr. 17, 2018 640 Coleraine Ct
Sunnyvale, CALIFORNIA 94087
Int. Cl.: 42 CLASS 42: Web site development for others; Web site hosting services
Service Mark FIRST USE 8-18-2017; IN COMMERCE 8-18-2017
Supplemental Register THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY
"SITE"
SER. NO. 87-446,634, FILED P.R. 05-11-2017; AM. S.R. 09-12-2017

EXHIBIT I :
Home page, WEB CRAFTERS, http://www.webcraftersdesign.com/
(last visited May 15, 2018).
EXHIBIT J :
About, PAGECRAFTER, https://pagecrafter.com/about/ (last visited
May 15, 2018).
EXHIBIT K :
About Us, The Game Crafter,
https://help.thegamecrafter.com/article/148-about-us (last visited May
15, 2018).
EXHIBIT L :
About, PI CRAFTERS, https://www.picrafters.com/about.html (last
visited May 15, 2018).
EXHIBIT M :
Capabilities, BITCRAFTER MEDIA CORPORATION,
http://www.bitcrafter.com/capabilities/capabilities.htm (last visited May
15, 2018).
EXHIBIT N :
About C3, C3 CUSTOM CODE CRAFTERS,
http://www.customcodecrafters.com/article/2/about_c3 (last visited May
15, 2018).
EXHIBIT O :
Home page, IWEBCRAFTER, https://iwebcrafter.com/ (last visited
May 15, 2018).
EXHIBIT P :
My Work, ANJALI WEB CRAFTER,
http://www.webcrafteranjali.com/my-work-websites.html (last visited
May 15, 2018).
EXHIBIT Q :
About, NETCRAFTER SOLUTIONS,
https://netcraftersolutions.com/about/ (last visited May 15, 2018).
EXHIBIT R :
Home page, SURVEY CRAFTER,
https://www.surveycrafter.com/interim2/default.asp (last visited May
15, 2018).
EXHIBIT S :
TESS Search Results for ((*craft*)[BI] and (software)[GS] and
(live)[LD] not (0)[RN]) (last accessed May 16, 2018).
EXHIBIT T :
Trademark Policy, WORDPRESS FOUNDATION,
https://wordpressfoundation.org/trademark-policy/ (last visited May 16,
2018).
EXHIBIT U :
Home page, WPCRAFTER, https://www.wpcrafter.com/ (last visited
May 16, 2018).
EXHIBIT V :
About: Company Overview, CRAFTER SOFTWARE,
https://www.craftersoftware.com/about/company (last visited May 16,
2018).
EXHIBIT W :
About: Our Customers, CRAFTER SOFTWARE,
https://www.craftersoftware.com/about/customers (last visited May 16,
2018).
EXHIBIT X :
Third-party Registration Certificate Nos. 5334903; 5281107; 5281098;
5245535; 5254538; 5203786; 5307030; 5026825; 4922037; 4886328;
4659071; 4758917; 5155126; 4669695; 4454908; 4454906; 4303301;
4371721; 4854860; 4275426; 4141205; and 4461842.
Reg. No. 5,307,030 WP Media (FRANCE CORPORATION)
17 Rue Des Archers
Registered Oct. 10, 2017 Lyon, FRANCE 69002
CLASS 42: Software as a service services featuring software for web page optimization;
Int. Cl.: 42 computer software design for the optimization of web site traffic and data traffic;
maintenance of computer software; updating of computer software
Service Mark
Principal Register
"WP"
SER. NO. 86-689,395, FILED 07-10-2015

Reg. No. 5,026,825 Sick Marketing (NEVADA LIMITED LIABILITY COMPANY)
Suite 300
Registered Aug. 23, 2016 4730 S. Fort Apache Rd
Las Vegas, NV 89126
Int. Cl.: 42 CLASS 42: Computer services, namely, designing and implementing web sites for others;
computer services, namely, monitoring, testing, analyzing, and reporting on the Internet
Service Mark traffic control and content control of the web sites of others; computer software consultancy
in the field of web site development and management of website content via content
Principal Register management system (CMS) platforms

SER. NO. 86-875,010, FILED 01-14-2016

SAIMA MAKHDOOM, EXAMINING ATTORNEY
Reg. No. 5,155,126 RDS Consulting, LLC (UTAH LIMITED LIABILITY COMPANY)
1755 E 200 N
Registered Mar. 07, 2017 Spanish Fork, UT 84660
CLASS 42: Web site design; Web site development for others
Int. Cl.: 42
Service Mark
Principal Register PARTICULAR FONT STYLE, SIZE OR COLOR
"WP"
SER. NO. 87-100,162, FILED 07-12-2016

CHRISTOPHER M LAW, EXAMINING ATTORNEY
Reg. No. 5,254,538 Sandhills Development, LLC (KANSAS LIMITED LIABILITY COMPANY)
111 West 2nd Street, Suite E
Registered Aug. 01, 2017 Hutchinson, KS 67501
CLASS 9: Downloadable computer software for managing product sales information and
Int. Cl.: 9 product distribution information for affiliate programs and tracking sales commissions from
such affiliate programs
Trademark
Principal Register
SER. NO. 87-163,201, FILED 09-07-2016

JEFFREY S DEFORD, EXAMINING ATTORNEY
Reg. No. 5,203,786 Neuralab Inc (NEW YORK CORPORATION), DBA Neuralab ,
1350 Avenue of the Americas 2nd floor
Registered May 16, 2017 1350 Avenue of the Americas 2nd floor
New YORK, NY 10019
Int. Cl.: 42 CLASS 42: Web site design; Web site design consultancy; Web site development for others;
Web site hosting services; Computer software design; Computer services, namely, cloud
Service Mark hosting provider services; Computer services, namely, integration of private and public cloud
computing environments; Consulting services in the field of cloud computing; Creating web
Principal Register pages for others; Creating and designing web pages for others; Creating and maintaining web
sites for others; Creating, designing and maintaining web sites; Design of home pages and
web sites; Designing web pages for others; Designing and creating web sites for others;
Hosting of web sites; Hosting the web sites of others; Installation of computer software;
Managing web sites for others; Providing virtual computer systems and virtual computer
environments through cloud computing; Rental of web servers; Technical consulting services
in the fields of datacenter architecture, public and private cloud computing solutions, and
evaluation and implementation of internet technology and services; Technical support
services, namely, remote and on-site infrastructure management services for monitoring,
administration and management of public and private cloud computing IT and application
systems; Testing of computer software; Updating and maintaining cloud-based computer
software through online updates

SER. NO. 87-182,220, FILED 09-24-2016

CHRISTOPHER M LAW, EXAMINING ATTORNEY
Reg. No. 5,245,535 Runcommand, LLC (OREGON LIMITED LIABILITY COMPANY)
Suite 204
Registered Jul. 18, 2017 18840 SW Boones Ferry Road
Tualatin, OR 97062
Int. Cl.: 9 CLASS 9: Downloadable software for use in managing content for content management
systems
Trademark
Principal Register
SER. NO. 87-273,912, FILED 12-19-2016

BRENT MARCUS RADCLIFF, EXAMINING ATTORNEY
Reg. No. 5,281,098 WPForms LLC (FLORIDA LIMITED LIABILITY COMPANY)
7732 Maywood Crest Dr.
Registered Sep. 05, 2017 West Palm Beach, FL 33412
CLASS 9: Downloadable computer software for designing web based forms

Int. Cl.: 9
Trademark
Principal Register PARTICULAR FONT STYLE, SIZE OR COLOR
SER. NO. 87-335,442, FILED 02-14-2017

WILLIAM T VERHOSEK, EXAMINING ATTORNEY
Reg. No. 5,281,107 WPForms LLC (FLORIDA LIMITED LIABILITY COMPANY)
7732 Maywood Crest Dr.
Registered Sep. 05, 2017 West Palm Beach, FL 33412
CLASS 9: Downloadable computer software for designing web based forms

Int. Cl.: 9
Trademark
The mark consists of the word "wpforms" with a cartoon bear waving to the left of the word.
Principal Register
SER. NO. 87-335,619, FILED 02-14-2017
WILLIAM T VERHOSEK, EXAMINING ATTORNEY
Reg. No. 5,334,903 Valius Digital (CALIFORNIA PARTNERSHIP)
430 Mast Ct.
Registered Nov. 14, 2017 Dixon, CALIFORNIA 95620
CLASS 42: Technical support services, namely, ongoing 24/7 troubleshooting of open source
Int. Cl.: 42 computer software problems
Service Mark FIRST USE 2-1-2016; IN COMMERCE 3-1-2016
Principal Register THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY
"WP"
The wording "VALIUS" has no meaning in a foreign language.
SER. NO. 87-412,988, FILED 04-16-2017

WPCRAFTER Trademark Application Office Action Response

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Attorneys at Law 111 Park Place *NJ DC Bar ®

Erik M. Pelton* Falls Church, VA 22046 ** VA DC & NY Bar

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

May 18, 2018

RE: Serial No: 87486597

APPLICANT'S RESPONSE TO OFFICE ACTION

IDENTIFICATION OF SERVICES AMENDMENT

REQUEST FOR INFORMATION REQUIREMENT

LIKELIHOOD OF CONFUSION REFUSAL REGARDING REGISTRATION NOS.

Table 1: Relevant Marks and Goods

Class 9: Computer software for use in the entry, management

When comparing Applicant’s WPCRAFTER mark in its entirety to the cited

“CRAFTER” is a Weak and Diluted Term

The Shared Term is Conceptually Weak and Highly Suggestive

“CRAFTER” is Commercially Weak and Diluted

4561387 Class 9: Computer software for designing wire

5108992 Class 41: Entertainment, namely, a continuing music

Table 3: Third-party Common Law CRAFTER Marks

The Degree of Care and Sophistication of Consumers in the Relevant Services

Differences in Channels of Trade

Balancing the Factors

FALSE SUGGESTION REFUSAL UNDER SECTION 2(A)

The Mark Does Not Consist of or Include a False Suggestion of a Connection

Class 9: Downloadable computer software for

Class 9: Downloadable software for use in

Class 9: Downloadable computer software for

home pages and web sites; Designing web pages

Class 42: Computer services, namely, designing

Class 9: Computer software development tools

Class 9: Downloadable software for use in design

Class 42: Web site design; Web site development

Class 42: hosting and maintenance of websites for

Class 9: Software for designing and managing

Class 9: Data-processing equipment, namely,

Class 35: Advertising services; On-line advertising

There is no evidence that WORDPRESS® opposed any of the above-referenced

Erik M. Pelton, Esq.

Exhibit A: Definition of “craft,” Merriam-Webster’s Online Dictionary,

Exhibit B: Software craftsmanship, WIKIPEDIA,

Exhibit C: Software Craftsmanship: The New Imperative, AMAZON,

Exhibit E: Coman Hamilton, Software Craftsmanship – why you should be proud to be a

Exhibit H: Third-party Registration Certificate Nos. 5179580; 4926978; 4561387; 5450363;

Exhibit I: Home page, WEB CRAFTERS, http://www.webcraftersdesign.com/ (last visited

Exhibit J: About, PAGECRAFTER, https://pagecrafter.com/about/ (last visited May 15, 2018).

Exhibit K: About Us, The Game Crafter, https://help.thegamecrafter.com/article/148-about-

Exhibit L: About, PI CRAFTERS, https://www.picrafters.com/about.html (last visited May 15,

Exhibit M: Capabilities, BITCRAFTER MEDIA CORPORATION,

Exhibit N: About C3, C3 CUSTOM CODE CRAFTERS,

Exhibit P: My Work, ANJALI WEB CRAFTER, http://www.webcrafteranjali.com/my-work-

Exhibit Q: About, NETCRAFTER SOLUTIONS, https://netcraftersolutions.com/about/ (last

Exhibit R: Home page, SURVEY CRAFTER,

Exhibit T: Trademark Policy, WORDPRESS FOUNDATION,

Exhibit U: Home page, WPCRAFTER, https://www.wpcrafter.com/ (last visited May 16,

Exhibit V: About: Company Overview, CRAFTER SOFTWARE,

Exhibit W: About: Our Customers, CRAFTER SOFTWARE,

Exhibit X: Third-party Registration Certificate Nos. 5334903; 5281107; 5281098; 5245535;

FIRST USE 4-30-2016; IN COMMERCE 7-31-2016

THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY

OWNER OF EUROPEAN UNION REG. NO. 007538192, DATED 09-01-2009, RENEWED

SER. NO. 87-023,628, FILED 05-03-2016

Principal Register FIRST USE 2-17-2015; IN COMMERCE 2-17-2016

THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY

SER. NO. 87-036,173, FILED 05-13-2016