To: STEPHA NIE FURGANG ADWA R(stephanie@ adwarivko.com)
`
`. U.S. Trademark A pplication Serial No. 98317055 - MICHAEL THE BULL - -
`Subject: 19317-TM
`
`Sent: June 10, 2025 09:03:45 PM EDT
`SentAs: tmng.notices@ uspto.gov
`
`Attachments
`
`screencapture-www-rodrigueznanneypa-com- 17496016676621
`screencapture-sextonweldon-com-17496017313261
`
`screencapture- sextonweldon-com-about-the-firm-17496017861471
`screencapture-www-goosmannlaw-com-17496019361831
`screencapture-blog-goosmannlaw-com-trial-lawyer-on-you-side-se- habla-espa-C3-B 101-the-
`benefits-of-being-bilingual-in-litigation- 17496019805081
`screencapture-www- pastranagarcia-com- 17496029241531
`screencapture-www- hopkinsroden-com-17496032002081
`screencapture-www-tomharanglaw-com-17496034964141
`screencapture-www-smclattomeys-com-17496035315801
`freedom.png
`
`United States Patent and Trademark Office (USPTO)
`Office Action (Official Letter) A bout A pplicant’s Trademark A pplication
`
`U.S. Application Serial No. 98317055
`Mark: MICHAEL THE BULL
`
`Correspondence A ddress:
`Stephanie Furgang A dwar
`Adwar Ivko LLC
`
`2 Executive Boulevard
`Suite 410
`
`Suffern NY 10901
`
`United States
`
`Applicant: Law Offices of Michael S. Lamonsoff, PLLC
`Reference/Docket No. 12317-TM
`
`Correspondence Email Address: stephanie@ adwarivko.com
`
`REQUEST FOR RECONSIDERATION AFTER FINAL ACTION DENIED
`
`Issue date: June 10, 2025
`
`Applicant’s request for reconsideration is denied. See 37 C.F.R. §2.63(b)(3). The trademark
`
`
`
`
`
`
`
`
`examining attorney has carefully reviewed applicant’s request and determined the request did not: (1)
`raise a new issue, (2) resolve all the outstanding issue(s), (3) provide any new or compelling evidence
`with regard to the outstanding issue(s), or (4) present analysis and arguments that were persuasive or
`shed new light on the outstanding issue(s). TMEP §§715.03(a)(ii)(B), 715.04(a).
`
`Accordingly, the following requirement(s) and/or refusal(s) made final in the Office action dated
`February 6, 2025 are maintained and continued:
`
`¢ Likelihood of Confusion Refusals
`See TMEP §§715.03(a)(ii)(B), 715.04(a).
`
`Applicant argues that the dominant element of its mark is the name MICHAEL. While this is the first
`word of applicant's mark, the overall commercial impression of the mark as a whole is of a person who
`is calling themselves "THE BULL" and more specifically, of a service provider who will be hard-
`charging and fight for his clients. Furthermore, applicant argues that the additional wording in the cited
`marks is distinct for various reasons, including that the translation of the foreign wording in some of the
`marks does not directly translate to the same wording in the applied-for mark. Nonetheless, all of the
`cited marks create the same overall commercial impression, namely, of an attorney who is calling
`themselves "THE BULL". The fact that these marks contain additional wording and can be
`distinguished from one another does not overcome the likelihood of confusion, because the marks still
`create the same overall commercial impression. Furthermore, not all of the cited marks contain
`additional wording to distinguish them from applicant's mark.
`
`Applicant argues that its activities are geographically separate from those of registrant, but
`misconstrues this as constituting a different market for the purpose of a likelihood of confusion refusal.
`
`Applicant seeks a federal registration, which is geographically unrestricted. The owner of a registration
`without specified limitations enjoys a presumption of exclusive right to nationwide use of the registered
`mark under Trademark Act Section 7(b), 15 U.S.C. §1057(b), regardless of its actual extent of use.
`Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1568, 218 USPQ 390, 393 (Fed. Cir.
`1983). Therefore, the geographical extent of applicant’s and registrant’s activities is not relevant to a
`likelihood of confusion determination.
`
`Applicant once again argues that the sophistication of the relevant consumers mitigates a finding of
`likelihood of confusion. The fact that purchasers are sophisticated or knowledgeable in a particular
`field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks
`or immune from source confusion. TMEP §1207.01(d)(vii); see, e.g., In re Charger Ventures LLC, 64
`F.4th 1375, 1383 (Fed. Cir. 2023); Stone Lion Cap. Partners, LP v. Lion Cap. LLP, 746 F.3d. 1317,
`1325 (Fed. Cir. 2014). Further, where the purchasers consist of both professionals and the public, the
`standard of care for purchasing the goods is that of the least sophisticated potential purchaser. In re
`Samsung Display Co., Ser. No. 90502617, 2024 TTAB LEXIS 258, at *23 (2024) (citing Stone Lion
`Cap. Partners, LP v. Lion Cap. LLP, 746 F.3d. at 1325); In re FCA US LLC, Ser. No. 85650654, 2018
`TTAB LEXIS 116, at *29 (2018), aff'd per curiam, 778 Fed. A ppx. 962 (Fed. Cir. 2019).
`
`The purported lack of fame of the cited mark, as argued by applicant, is not significant to the issue of
`likelihood of confusion in ex parte examination. See In re Davey Prods. Pty Ltd., 92 USPQ2d 1198,
`1204 (TTAB 2009) (citing In re Thomas, 79 USPQ2d 1021, 1027 n.11 (TTAB 2006)); TMEP
`§1207.01(d)(ix). Because the types of evidence bearing on the fame of a registered mark include the
`volume of sales, advertising expenditures, and length of use of the mark, and such evidence normally is
`
`
`
`
`
`
`
`
`not publicly available, trademark examining attorneys are not expected to submit evidence regarding
`the fame of a cited registered mark in ex parte proceedings. TMEP §1207.01(d)(ix); see In re Mr.
`Recipe, LLC, 118 USPQ2d 1084, 1086 (TTAB 2016) (citing In re Thomas, 79 USPQ2d at 1027 n.11).
`When no evidence of fame has been provided, this du Pont factor is usually treated as neutral. See In re
`Mr. Recipe, LLC, 118 USPQ2d at 1086. Thus, in this case, this factor is considered neutral for purposes
`of determining likelihood of confusion.
`
`Applicant argues that it had previously registered marks over which the cited marks then registered.
`However, prior decisions and actions of other trademark examining attorneys in applications for other
`marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial and
`Appeal Board. TMEP §1207.01(d)(vi); see In re USA Warriors Ice Hockey Program, Inc., 122
`USPQ2d 1790, 1793 n.10 (TTAB 2017). Each case is decided on its own facts, and each mark stands
`on its own merits. In re Cordua Rests., Inc., 823 F.3d 594, 600, 118 USPQ2d 1632, 1635 (Fed. Cir.
`2016) (citing In re Shinnecock Smoke Shop, 571 F.3d 1171, 1174, 91 USPQ2d 1218, 1221 (Fed. Cir.
`2009); In re Nett Designs, Inc., 236 F.3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir.
`2001)). Trademark rights are not static, and applicant's now-canceled registrations have no bearing on
`the likelihood of confusion refusal at issue now. Similarly, the examination of the unrelated PITBULL
`applications mentioned by applicant also have no bearing on whether applicant's and registrant's THE
`BULL marks for use with identical services are confusingly similar. Relative to applicant's argument
`that there has not been any confusion between the parties, “‘[A] showing of actual confusion is not
`necessary to establish a likelihood of confusion.’” In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123
`USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156,
`1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); TMEP §1207.01(d)(ii). “[T]he relevant test is
`likelihood of confusion, not actual confusion.” In re Detroit Athletic Co., 903 F.3d 1297, 1309, 128
`USPQ2d 1047, 1053 (Fed. Cir. 2018) (emphasis in original). “Uncorroborated statements of no known
`instances of actual confusion . . . are of little evidentiary value,” especially in ex parte examination. In
`re Majestic Distilling Co., 315 F.3d 1311, 1317, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003).
`
`Applicant enumerates the remaining DuPont factors and concludes that because these do not weigh in
`favor of a likelihood of confusion, they therefore weigh against a likelihood of confusion. This is
`inaccurate. Rather, the factors are neutral and have no bearing on the balance of factors. In this case,
`the balance of factors in favor of a likelihood of confusion is determined by the confusing similarity of
`the marks and the highly related nature of the services.
`
`For the foregoing reasons, applicant's arguments have been considered and found unpersuasive. The
`refusal to register the applied-for mark under Trademark Act Section 2(d) is maintained and
`continued.
`
`If applicant has already filed an appeal with the Trademark Trial and Appeal Board, the Board will
`be notified to resume the appeal. See TMEP §715.04(a).
`
`If applicant has not filed an appeal and time remains in the response period for the final Office
`action, applicant has the remainder of that time to (1) file another request for reconsideration that
`complies with and/or overcomes any outstanding final requirement(s) and/or refusal(s), and/or (2) file a
`notice of appeal to the Board. TMEP §715.03(a)(ii)(B).
`
`
`
`
`
`
`
`
`/Laura Golden/
`
`Laura Golden
`
`Examining A ttorney
`LO103--LAW OFFICE 103
`(571) 272-3928
`Laura.Golden@ USPTO.GOV
`
`
`
`
`
`
`
`
`https:/www.rodrigueznanneypa.com/
`
`at 08:27:51, 06/10/2025
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`https://blog.goosmanniaw.com/trial-lawyer-on-you-side/se-habla-espa%C3%B 10l-the-benefits-of-being-bilingual-in-litigation
`at 08:33:13, 06/10/2025
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`Se Habla Espanol: The benefits of
`being bilingual in litigation.
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`By William Hale | 6, November 2020
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`fin v &
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`READ POST
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`~~ twa nae
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`® Tags: | Litigation & Trial
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`Being the national language, English is by far the most common language spoken in the United States. However, there
`isa section of the /ho either do not speak much English or are at least more comfortable in their
`native (non-English) language. With that in mind, being able to speak a second language is a useful skill for attorneys.
`Being bilingual myself (I speak English and Spanish), | have seen this firsthand. This blog attempts to discuss a couple of
`those benefits,
`
`Communicating with Clients
`
`Probably the most obvious benefit is being able to communicate with your client directly. | have been on the other side
`
`of cases where the defense attorney provided by the insurance carrier does not speak the same language as the
`defendant (their client). The use of an interpreter slows everything down as it is not as easy for the attorney to meet with
`their client. Being able to speak the same language as your client prevents the language from getting in the way or
`slowing down the process. Being able to speak the client's native language allows them to more accurately convey
`their wishes and more actively participate in obtaining justice for themselves.
`
`Access to Justice
`
`‘When a person cannot speak English, they often either do not know what resources are available to them or cannot
`effectively access the means to get justice for wrongs done to them. There are also nefarious individuals who take
`advantage of non-English speakers because they know it is harder for them to do something about it. While it is
`possible for an interpreter to be used, it can often be a much slower, frustrating, and expensive procedure that is a real
`deterrent to those seeking assistance. Speaking the client's language can solve a lot of those problems.
`
`Verifying Translation
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`Since English is the official language in the United States, all official court proceedings, depositions, etc. must be done in
`English with the use of an interpreter if needed. This is true even in cases where the attorneys on both sides and the
`judge all speak the same non-English language. However, in such cases there is still a benefit to being bilingual. That
`ability helps to ensure that the ion is being done during such a if there isa it
`can be or clarified to ensure the i ion on record is accurate.
`
`If you need an attorney that speaks your language, contact the trial attorneys at the Goosmann Law Firm, PLC, in our
`Omaha, Sioux City, and Sioux Falls offices where we have attorneys who are fluent in both Spanish and French.
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`CONTACT U:
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`DISCLAIMER: The information in this blog post ("post’) is provided for general informational purposes only, and may not reflect the current law in your jurisdiction. By visiting this
`website, blog, or post you understand that there is no attorney client relationship between you and the Goosmann Law Firm attorneys and website publisher. No information
`contained in this post should be construed as legal advice from Goosmann Law Firm, PLC, or the individual author, nor is it intended to be a substitute for legal counsel on any subject
`matter. No reader of this post should act or refrain from acting on the basis of any information included in, or accessible through, this Post without seeking the appropriate legal or
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`other professional advice on the particular facts and circumstances at issue from a lawyer licensed in the recipient's state, country or other appropriate licensing jurisdiction.
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