throbber
PTO Form 1957 (Rev 9/2005)
`
`OMB No. 0651-0050 (Exp. 07/31/2017)
`
`Response to Office Action
`
`Input Field
`
`SERIAL NUMBER
`
`LAW OFFICE ASSIGNED
`
`MARK SECTION
`
`MARK
`
`LITERAL ELEMENT
`
`STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`MARK STATEMENT
`
`EVIDENCE SECTION
`
`        EVIDENCE FILE NAME(S)
`
`       ORIGINAL PDF FILE
`
`       CONVERTED PDF FILE(S)
`       (6 pages)
`
`The table below presents the data as entered.
`
`Entered
`
`86299454
`
`LAW OFFICE 113
`
`http://tsdr.uspto.gov/img/86299454/large
`
`LIVING VIDEO PORTRAITS
`
`YES
`
`YES
`
`The mark consists of standard characters, without claim to any particular font style,
`size or color.
`
`evi_73394320-20150126171037335437_._LivingVideoPortraits-ROA.pdf
`
`\\TICRS\EXPORT16\IMAGEOUT16\862\994\86299454\xml4\ROA0002.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\862\994\86299454\xml4\ROA0003.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\862\994\86299454\xml4\ROA0004.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\862\994\86299454\xml4\ROA0005.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\862\994\86299454\xml4\ROA0006.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\862\994\86299454\xml4\ROA0007.JPG
`
`DESCRIPTION OF EVIDENCE FILE
`
`.pdf arguments in response to the 2(d) refusal.
`
`ADDITIONAL STATEMENTS SECTION
`
`DISCLAIMER
`
`NEW ATTORNEY SECTION
`
`No claim is made to the exclusive right to use video portraits apart from the mark as
`shown.
`
`NAME
`
`FIRM NAME
`
`STREET
`
`CITY
`
`STATE
`
`ZIP/POSTAL CODE
`
`COUNTRY
`
`PHONE
`
`EMAIL
`
`Antonio Vann
`
`Dunlap Bennett & Ludwig PLLC
`
`211 Church St SE
`
`Leesburg
`
`Virginia
`
`20175
`
`United States
`
`855.226.9661
`
`ip@dbllawyers.com
`
`       
`       
`       
`       
`       
`

`

`AUTHORIZED EMAIL COMMUNICATION
`
`Yes
`
`CORRESPONDENCE SECTION
`
`ORIGINAL ADDRESS
`
`NEW CORRESPONDENCE SECTION
`
`NAME
`
`FIRM NAME
`
`STREET
`
`CITY
`
`STATE
`
`ZIP/POSTAL CODE
`
`COUNTRY
`
`PHONE
`
`EMAIL
`
`AUTHORIZED EMAIL COMMUNICATION
`
`SIGNATURE SECTION
`
`RESPONSE SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`SIGNATORY'S PHONE NUMBER
`
`DATE SIGNED
`
`AUTHORIZED SIGNATORY
`
`FILING INFORMATION SECTION
`
`SUBMIT DATE
`
`TEAS STAMP
`
`MOVINGSTORIES
`426 BRIGHTON DAM RD
`BROOKEVILLE
`Maryland (MD)
`US
`20833-2017
`
`Antonio Vann
`
`Dunlap Bennett & Ludwig PLLC
`
`211 Church St SE
`
`Leesburg
`
`Virginia
`
`20175
`
`United States
`
`855.226.9661
`
`ip@dbllawyers.com
`
`Yes
`
`/avann/
`
`Antonio G. Vann
`
`Attorney of Record, VA Bar Member
`
`855.226.9661
`
`01/26/2015
`
`YES
`
`Mon Jan 26 17:24:30 EST 2015
`
`USPTO/ROA-XX.XX.XX.XX-201
`50126172430623887-8629945
`4-530611cea8241a219fe28a1
`42744beae78f16171332a5512
`f672302c5e15159b-N/A-N/A-
`20150126171037335437
`
`PTO Form 1957 (Rev 9/2005)
`
`OMB No. 0651-0050 (Exp. 07/31/2017)
`
`To the Commissioner for Trademarks:
`
`Response to Office Action
`
`Application serial no. 86299454 LIVING VIDEO PORTRAITS(Standard Characters, see http://tsdr.uspto.gov/img/86299454/large) has been
`
`

`

`amended as follows:
`
`EVIDENCE
`Evidence in the nature of .pdf arguments in response to the 2(d) refusal. has been attached.
`Original PDF file:
`evi_73394320-20150126171037335437_._LivingVideoPortraits-ROA.pdf
`Converted PDF file(s) ( 6 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`Evidence-5
`Evidence-6
`
`ATTORNEY ADDRESS
`Applicant proposes to amend the following:
`Proposed:
`Antonio Vann of Dunlap Bennett & Ludwig PLLC, having an address of
`211 Church St SE Leesburg, Virginia 20175
`United States
`ip@dbllawyers.com
`855.226.9661
`
`CORRESPONDENCE ADDRESS CHANGE
`Applicant proposes to amend the following:
`Current:
`MOVINGSTORIES
`426 BRIGHTON DAM RD
`BROOKEVILLE
`Maryland (MD)
`US
`20833-2017
`
`Proposed:
`Antonio Vann of Dunlap Bennett & Ludwig PLLC, having an address of
`211 Church St SE Leesburg, Virginia 20175
`United States
`ip@dbllawyers.com
`855.226.9661
`
`ADDITIONAL STATEMENTS
`Disclaimer
`No claim is made to the exclusive right to use video portraits apart from the mark as shown.
`
`SIGNATURE(S)
`Response Signature
`Signature: /avann/     Date: 01/26/2015
`Signatory's Name: Antonio G. Vann
`Signatory's Position: Attorney of Record, VA Bar Member
`
`Signatory's Phone Number: 855.226.9661
`
`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.
`
`Mailing Address:    Antonio Vann
`   Dunlap Bennett & Ludwig PLLC
`   211 Church St SE
`   Leesburg, Virginia 20175
`
`Serial Number: 86299454
`Internet Transmission Date: Mon Jan 26 17:24:30 EST 2015
`TEAS Stamp: USPTO/ROA-XX.XX.XX.XX-201501261724306238
`87-86299454-530611cea8241a219fe28a142744
`beae78f16171332a5512f672302c5e15159b-N/A
`-N/A-20150126171037335437
`
`        
`

`

`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`Applicant:
`Serial No.:
`
`MovingStories
`86299454
`
`Elizabeth F. Jackson
`Trademark Atty:
`LIVING VIDEO PORTRAITS
`Word Mark:
`
`
`RESPONSE TO SEPTEMBER 15, 2014 OFFICE ACTION
`
`
`This Response is filed in reply to the Office Action e-mailed on September 15, 2014. The Applicant
`
`respectfully submits the following response. Applicant submits that the above-identified trademark
`
`application for LIVING VIDEO PORTRAITS is in condition for allowance to publication.
`
`Potential Section 2(d) — Likelihood of Confusion
`
`Applicant submits a preliminary response to the potential section 2(d) refusal; however, Applicant reserves
`
`all rights to provide a detailed and more descriptive response if Examining Attorney Elizabeth F. Jackson
`
`raises a Section 2(d) refusal in a subsequent Office Action.
`
`APPLICANT’S MARK
`
`CITED REGISTRATION NO. 4232790
`
`LIVING VIDEO PORTRAITS
`
`Class 41: Videography and Photography services
`Applicant’s Specimen:
`
`a
`
`/l,)I
`a
`T H E R E
`
`Living Video Diaries
`
`Class 09: Audio and video recordings featuring
`narration with images and activities of a person in
`the nature of personal journals
`
`Relevant Details:
`Disclaimer of “LIVING VIDEO DIARIES”
`
`

`

`Preliminary Response with Reservation ofRights
`
`The USPTO suggests that it will refuse registration of Applicant’s mark, LIVING VIDEO
`
`VIDEO DIARIES & design, in US. Registration No. 4232790. “[T]he question of confusion is related
`
`not to the nature of the mark but to its effect ‘when applied to the goods of the applicant.” In re E. I.
`
`du Pont de Nemours & Ca, 476 F.2d 1357, 1360, 177 USPQ 563, 566 (C.C.P.A. 1973). The United
`
`States Court of Customs and Patent Appeals listed thirteen factors to weigh in the likelihood of
`
`confusion analysis and stated that all of the factors must be considered “when of record.” Id. at 1361.
`
`The Examining Attorney has indicated that similarity of the marks, similarity of the goods and/or
`
`services, and similarity of trade channels of the goods and /or services weigh against the Applicant’s
`
`mark. However, Applicant respectfully asserts that when all factors are weighed, the majority weighs
`
`against the existence of a likelihood of contusion.
`
`PORTRAITS, “because of a likelihood of confusion with registered mark ALWAYS THERE LIVING
`
`dominant portion the registrant’s mark is “ALWAYS THERE & design.” The dominant portion of the
`
`THE MARKS DO NOT APPEAR CONFUSINGLY SIMILAR
`
`The first factor is the similarity of the conflicting designations, including in their appearance, sound,
`
`meaning or connotation, and commercial impression. In re E. I. du Pont de Nemours & Ca, 476 F.2d
`
`1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). A similar phrase found in two marks is not
`
`dispositive of a confusing similarity between the marks when the marks give off different commercial
`
`expressions. See Kellogg C0. V. Pack’em Enterprises, Inc, 951 F.2d 330 (Fed. Cir. 1991).
`
`When Applicant’s mark (LIVING VIDEO PORTRAITS), and Registrant’s mark (ALWAYS THERE
`
`LIVING VIDEO DIARIES & Design) are compared, the appearance is not similar in that the
`
`

`

`cited registration greatly differs from the Applicant’s mark. Furthermore, Applicant has provided a
`
`specimen for the Examining Attorney to consider, which further supports the position that confusion is
`
`unlikely to occur. Visually, the phrase LIVING VIDEO PORTRAITS is easily distinguished from the
`
`designs and phrase incorporated in the Registrant’s ALWAYS THERE LIVING VIDEO DIARIES
`
`mark.
`
`Phonetically, the marks do not sound similar, as the Applicant’s mark consists of seven syllables, and
`
`the Registrants mark consists of eleven syllables.
`
`The two marks give distinctly different commercial impressions and Visual representations. The
`
`Applicant’s mark, as applied for, incorporates no designs while the Registrant’s mark is highly
`
`stylized and includes a distinct design element. These differences create a substantially different
`
`commercial impression. For at least these reasons, Applicant asserts that the mark LIVING VIDEO
`
`PORTRAITS is significantly different than the mark ALWAYS THERE LIVING VIDEO DIARIES
`
`& design to avoid a likelihood of confusion.
`
`not confusing similar to PEAK); Servo Corp. Am. v. Servo—Tek Prod. Co., 289 F. 2d 955, 981 129
`
`the likelihood of confusion between two marks. See US Trust v. US. States Trust Co., 210 F. Supp. 2d
`
`THE ADDITIONAL TERM IN THE CITED REGISTRA TION ELIMINA TES CONFUSION
`
`Courts have long held that the addition of different terms to a common element appreciably reduces
`
`9, 27—28 (D. Mass 2002) (UNITED STATES TRUST COMPANY not confusingly similar to UNITED
`
`STATES TRUST COMPANY OF BOSTON, both for financial services); Colgate Palmolive Co. v.
`
`Carter-Wallace, Inc, 432 F.2d 1400, 1402, 167 US. P. Q. 529, 530 (C.C.P.A. 1970) (PEAK PERIOD
`
`

`

`U.S.P.Q. 352, 353 (C.C.P.A. 1961) (SERVOSPEED not confusingly similar to SERVO); Sweats
`
`Fashions, Inc. V. Pannill Knitting Co., 833 F. 2d 1560, 1564, 4 U.S.P.Q. 2d 1793, 1796 (Fed. Cir.
`
`1987) (SWEATS not confusing similar to ULTRA SWEATS), both for sportswear); Gen. Mills Inc. V.
`
`Kellog Co., 824 F. 2d 622, 627, 3 U.S.P.Q. 2d 1442, 1446 (8th Cir. 1987) (OATMEAL RAISIN
`
`CRISP not confusingly similar to APPLE RASIN CRISP, both for breakfast cereal); Consol. Cigar v.
`
`RJR Tobacco Co., 491 F.2d 1265, 1267, 181 U.S.P.Q. 44, 45 (C.C.P.A. 1974) (DUTCH APPLE for
`
`pipe tobacco not confusingly similar to DUTCH MASTERS for cigars).
`
`In this case, the additional
`
`elements strongly prevent confusion from occurring between LIVING VIDEO PORTRAITS and
`
`ALWAYS THERE LIVING VIDEO DIARIES & design.
`
`GOODS/SER VICES ARE NOT SIMILAR
`
`The second factor is the similarity or dissimilarity and the nature of the goods or services as described
`
`in an application or registration or in connection with a prior use of the mark. In re E. I. du Pont de
`
`Nemours & Ca, 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). Applicant’s services are
`
`“videography and photography services” under class 041. The cited registration covers “audio and
`
`video recordings featuring narration with images and activities of a person in the nature of personal
`
`The common element between the Applicant and Registrant’s mark is “living video.” However, the
`
`journals” under class 009. The scope of the registrant’s goods is very narrow, specifically limiting the
`
`audio and video recordings to reflect personal journals. The Applicant’s services are broader and
`
`different, specifically Applicant also offers photography services. Under these facts, the services and
`
`goods are not similar.
`
`THE COMMON ELEMENT IS DISCLAIMED BY THE REGISTRANT
`
`

`

`registrant has no claim to the exclusive right to use “LIVING VIDEO DIARIES,” as it is disclaimed.
`
`The disclaimer is substantial proof that there is no likelihood of confusion.
`
`N0 SUBSTANTIAL LIKELIHOOD 0F CONFUSION
`
`by cited registrations "[a] showing of mere possibility of confusion is not enough; a substantial
`
`likelihood that the public will be confused must be shown." Omaha Natl. Bank, 633 F. Supp. at 234,
`
`229 U.S.P.Q. at 52. Applying the factors set forth in Du Pont, and absent “substantial doubt,” In re
`
`Mars, Inc., 741 F. 2d 395, 396 222 U.S.P.Q. 938 (Fed. Cir. 1984), registration of Applicant’s mark is
`
`appropriate. Taking into consideration the differences in the mark, the disclaimer of the common
`
`elements, and the difference in the services/goods, the 2(d) refusal fails to establish that the likelihood
`
`of confilsion is substantial. Applicant respectfillly submits that the mark for LIVING VIDEO
`
`PORTRAITS does not create a likelihood of COIlfilSiOIl with ALWAYS THERE LIVING VIDEO
`
`When determining whether an Applicant’s mark creates a likelihood of confusion, with marks covered
`
`publication.
`
`DIARIES & design.
`
`CONCLUSION
`
`Applicant has fully responded to the Office Action. Majority of the ‘DuPont’ factors weigh in the
`
`Applicant’s favor. Furthermore, for at least the above reasons, Applicant asserts that Applicant’s
`
`mark, LIVING VIDEO PORTRAITS, is sufficiently distinct from the cited registration to avoid
`
`consumer confusion. Applicant respectfully submits in good faith that all potential 2(d) refusals,
`
`rejections, and/or objections have been overcome and that the applied for mark is in condition for
`
`

`

`Antonio G. Vann (VSB # 79765)
`
`Respectfully submitted,
`/Ant0ni0 G. Vann/
`
`Attorney of Record for the Applicant
`
`

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket