Frank A. Bonomo

Trademark Trial and Appeal Board

Sep 12, 2000

No. 75162539re (T.T.A.B. Sep. 12, 2000)

Paper No. 12
BAC
9/12/00
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Frank A. Bonomo
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Serial No. 75/162,539
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Request for Reconsideration
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Myron Amer of Myron Amer, P.C. for Frank A. Bonomo
Cynthia Sloan, Trademark Examining Attorney, Law Office 111
(Craig Taylor, Managing Attorney)
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Before Hohein, Chapman and McLeod, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
On August 7, 2000 the Board affirmed the Examining
Attorney’s refusal to register applicant’s mark under
Section 2(d) of the Trademark Act. On August 17, 2000
applicant filed a request for reconsideration.
Applicant contends that the while Board decided the
case on the record, the record was circumscribed by a
double standard. Specifically, applicant contends that its
references to “common experience” were rejected by the
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/162539
2
Board (Decision, footnote 4), but that the Board accepted
as facts the Examining Attorney’s statements that: (i)
applicant’s argument that its mark puts the onus on the
would-be smoker to resist smoking addiction, and
registrant’s mark puts the onus on the registrant to effect
treatment of heart disease is irrelevant, and (ii) because
the distinction between the marks is not made on a side-by-
side comparison, prospective purchasers would not pause or
analyze where the onus is placed with regard to the
involved services.1
The Board did not accept unsupported factual
statements of the Examining Attorney, nor did we, in
effect, take judicial notice of any statement made by the
Examining Attorney. Rather, the Board discussed our
consideration of the du Pont2 factor of the similarity or
dissimilarity of the marks by first stating established law
(e.g., marks must be considered in their entireties, not by
their component parts, and that the proper test in
determining likelihood of confusion is not a side-by-side

1 In its one and one-half page request for reconsideration,
applicant did not specify exactly which portion(s) of the August
7, 2000 decision are in error, quoting instead only from the
Examining Attorney’s brief. Upon a review of the record,
including our previous decision in this case, we presume that
applicant is referring to the Board’s discussion of the involved
marks. (Decision, pp. 5-7.)
2 In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973).
Ser. No. 75/162539
3
comparison of the marks, but rather is a determination
based on the similarity of the overall commercial
impressions of the involved marks3). We then noted the
differences between the involved marks, but found that
purchasers would be unlikely to remember the specific,
minor differences. Finally, we discussed the connotation
of both marks relating to fighting to save the reader’s
life, and that we simply did not agree with applicant’s
analysis that consumers would be aware of and pay close
attention to the differences in the marks and analyze the
marks in terms of the technical grammatical analysis

3 We note that in our August 7, 2000 decision, in referring to
the legal test that marks are considered in their entireties, we
paraphrased McCarthy as follows: “This principle is based on the
common sense observation that the overall impression is created
by the ordinary purchaser’s cursory reaction in the marketplace,
not from a meticulous comparison of possible legal differences or
similarities. See 3 J. Thomas McCarthy, McCarthy on Trademarks
and Unfair Competition, §23:41 (4th ed. 2000).” The precise
quote from §23:41 on the anti-dissection rule reads, in part, as
follows:
“The anti-dissection rule is based upon a
common sense observation of customer behavior:
the typical shopper does not retain all of the
individual details of a composite mark in his or
her mind, but retains only an overall, general
impression created by the composite as a whole.
It is the overall impression created by the mark
from the ordinary shopper’s cursory observation
in the marketplace that will or will not lead to
a likelihood of confusion, not the impression
created from a meticulous comparison as expressed
in carefully weighed legal briefs.”
This use by the Board of the words “common sense” (Decision, p.
5) was in the context of explaining the legal test, not setting
forth a factual finding in the case.
Ser. No. 75/162539
4
proposed by applicant. That is, we set forth the relevant
established law, and applied that law to the facts of the
case before us.
Inasmuch as we find no error in our August 7, 2000
decision, applicant’s request for reconsideration is
denied.
G. D. Hohein
B. A. Chapman
L. K. McLeod
Administrative Trademark Judges,
Trademark Trial and Appeal Board