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`OMB No. 0651-0050 (Exp. 07/31/2017)
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`Response to Office Action
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`Input Field
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`SERIAL NUMBER
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`LAW OFFICE ASSIGNED
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`MARK SECTION
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`MARK
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`LITERAL ELEMENT
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`STANDARD CHARACTERS
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`USPTO-GENERATED IMAGE
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`MARK STATEMENT
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`EVIDENCE SECTION
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` EVIDENCE FILE NAME(S)
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` ORIGINAL PDF FILE
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` CONVERTED PDF FILE(S)
` (6 pages)
`
`The table below presents the data as entered.
`
`Entered
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`86299454
`
`LAW OFFICE 113
`
`http://tsdr.uspto.gov/img/86299454/large
`
`LIVING VIDEO PORTRAITS
`
`YES
`
`YES
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`The mark consists of standard characters, without claim to any particular font style,
`size or color.
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`evi_73394320-20150126171037335437_._LivingVideoPortraits-ROA.pdf
`
`\\TICRS\EXPORT16\IMAGEOUT16\862\994\86299454\xml4\ROA0002.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\862\994\86299454\xml4\ROA0003.JPG
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`\\TICRS\EXPORT16\IMAGEOUT16\862\994\86299454\xml4\ROA0004.JPG
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`\\TICRS\EXPORT16\IMAGEOUT16\862\994\86299454\xml4\ROA0005.JPG
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`\\TICRS\EXPORT16\IMAGEOUT16\862\994\86299454\xml4\ROA0006.JPG
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`\\TICRS\EXPORT16\IMAGEOUT16\862\994\86299454\xml4\ROA0007.JPG
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`DESCRIPTION OF EVIDENCE FILE
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`.pdf arguments in response to the 2(d) refusal.
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`ADDITIONAL STATEMENTS SECTION
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`DISCLAIMER
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`NEW ATTORNEY SECTION
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`No claim is made to the exclusive right to use video portraits apart from the mark as
`shown.
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`NAME
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`FIRM NAME
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`STREET
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`CITY
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`STATE
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`ZIP/POSTAL CODE
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`COUNTRY
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`PHONE
`
`
`Antonio Vann
`
`Dunlap Bennett & Ludwig PLLC
`
`211 Church St SE
`
`Leesburg
`
`Virginia
`
`20175
`
`United States
`
`855.226.9661
`
`ip@dbllawyers.com
`
`
`
`
`
`
`
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`AUTHORIZED EMAIL COMMUNICATION
`
`Yes
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`CORRESPONDENCE SECTION
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`ORIGINAL ADDRESS
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`NEW CORRESPONDENCE SECTION
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`NAME
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`FIRM NAME
`
`STREET
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`CITY
`
`STATE
`
`ZIP/POSTAL CODE
`
`COUNTRY
`
`PHONE
`
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`AUTHORIZED EMAIL COMMUNICATION
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`SIGNATURE SECTION
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`RESPONSE SIGNATURE
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`SIGNATORY'S NAME
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`SIGNATORY'S POSITION
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`SIGNATORY'S PHONE NUMBER
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`DATE SIGNED
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`AUTHORIZED SIGNATORY
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`FILING INFORMATION SECTION
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`SUBMIT DATE
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`TEAS STAMP
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`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)
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`OMB No. 0651-0050 (Exp. 07/31/2017)
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`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
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`
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`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.
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`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
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`Signatory's Phone Number: 855.226.9661
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`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
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`
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`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.
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`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
`
`
`
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`
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`Applicant:
`Serial No.:
`
`MovingStories
`86299454
`
`Elizabeth F. Jackson
`Trademark Atty:
`LIVING VIDEO PORTRAITS
`Word Mark:
`
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`RESPONSE TO SEPTEMBER 15, 2014 OFFICE ACTION
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`This Response is filed in reply to the Office Action e-mailed on September 15, 2014. The Applicant
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`respectfully submits the following response. Applicant submits that the above-identified trademark
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`application for LIVING VIDEO PORTRAITS is in condition for allowance to publication.
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`Potential Section 2(d) — Likelihood of Confusion
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`Applicant submits a preliminary response to the potential section 2(d) refusal; however, Applicant reserves
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`all rights to provide a detailed and more descriptive response if Examining Attorney Elizabeth F. Jackson
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`raises a Section 2(d) refusal in a subsequent Office Action.
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`APPLICANT’S MARK
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`CITED REGISTRATION NO. 4232790
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`LIVING VIDEO PORTRAITS
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`Class 41: Videography and Photography services
`Applicant’s Specimen:
`
`a
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`/l,)I
`a
`T H E R E
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`Living Video Diaries
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`Class 09: Audio and video recordings featuring
`narration with images and activities of a person in
`the nature of personal journals
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`Relevant Details:
`Disclaimer of “LIVING VIDEO DIARIES”
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`
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`Preliminary Response with Reservation ofRights
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`The USPTO suggests that it will refuse registration of Applicant’s mark, LIVING VIDEO
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`VIDEO DIARIES & design, in US. Registration No. 4232790. “[T]he question of confusion is related
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`not to the nature of the mark but to its effect ‘when applied to the goods of the applicant.” In re E. I.
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`du Pont de Nemours & Ca, 476 F.2d 1357, 1360, 177 USPQ 563, 566 (C.C.P.A. 1973). The United
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`States Court of Customs and Patent Appeals listed thirteen factors to weigh in the likelihood of
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`confusion analysis and stated that all of the factors must be considered “when of record.” Id. at 1361.
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`The Examining Attorney has indicated that similarity of the marks, similarity of the goods and/or
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`services, and similarity of trade channels of the goods and /or services weigh against the Applicant’s
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`mark. However, Applicant respectfully asserts that when all factors are weighed, the majority weighs
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`against the existence of a likelihood of contusion.
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`PORTRAITS, “because of a likelihood of confusion with registered mark ALWAYS THERE LIVING
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`dominant portion the registrant’s mark is “ALWAYS THERE & design.” The dominant portion of the
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`THE MARKS DO NOT APPEAR CONFUSINGLY SIMILAR
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`The first factor is the similarity of the conflicting designations, including in their appearance, sound,
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`meaning or connotation, and commercial impression. In re E. I. du Pont de Nemours & Ca, 476 F.2d
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`1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). A similar phrase found in two marks is not
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`dispositive of a confusing similarity between the marks when the marks give off different commercial
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`expressions. See Kellogg C0. V. Pack’em Enterprises, Inc, 951 F.2d 330 (Fed. Cir. 1991).
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`When Applicant’s mark (LIVING VIDEO PORTRAITS), and Registrant’s mark (ALWAYS THERE
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`LIVING VIDEO DIARIES & Design) are compared, the appearance is not similar in that the
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`
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`cited registration greatly differs from the Applicant’s mark. Furthermore, Applicant has provided a
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`specimen for the Examining Attorney to consider, which further supports the position that confusion is
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`unlikely to occur. Visually, the phrase LIVING VIDEO PORTRAITS is easily distinguished from the
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`designs and phrase incorporated in the Registrant’s ALWAYS THERE LIVING VIDEO DIARIES
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`mark.
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`Phonetically, the marks do not sound similar, as the Applicant’s mark consists of seven syllables, and
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`the Registrants mark consists of eleven syllables.
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`The two marks give distinctly different commercial impressions and Visual representations. The
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`Applicant’s mark, as applied for, incorporates no designs while the Registrant’s mark is highly
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`stylized and includes a distinct design element. These differences create a substantially different
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`commercial impression. For at least these reasons, Applicant asserts that the mark LIVING VIDEO
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`PORTRAITS is significantly different than the mark ALWAYS THERE LIVING VIDEO DIARIES
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`& design to avoid a likelihood of confusion.
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`not confusing similar to PEAK); Servo Corp. Am. v. Servo—Tek Prod. Co., 289 F. 2d 955, 981 129
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`the likelihood of confusion between two marks. See US Trust v. US. States Trust Co., 210 F. Supp. 2d
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`THE ADDITIONAL TERM IN THE CITED REGISTRA TION ELIMINA TES CONFUSION
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`Courts have long held that the addition of different terms to a common element appreciably reduces
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`9, 27—28 (D. Mass 2002) (UNITED STATES TRUST COMPANY not confusingly similar to UNITED
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`STATES TRUST COMPANY OF BOSTON, both for financial services); Colgate Palmolive Co. v.
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`Carter-Wallace, Inc, 432 F.2d 1400, 1402, 167 US. P. Q. 529, 530 (C.C.P.A. 1970) (PEAK PERIOD
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`U.S.P.Q. 352, 353 (C.C.P.A. 1961) (SERVOSPEED not confusingly similar to SERVO); Sweats
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`Fashions, Inc. V. Pannill Knitting Co., 833 F. 2d 1560, 1564, 4 U.S.P.Q. 2d 1793, 1796 (Fed. Cir.
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`1987) (SWEATS not confusing similar to ULTRA SWEATS), both for sportswear); Gen. Mills Inc. V.
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`Kellog Co., 824 F. 2d 622, 627, 3 U.S.P.Q. 2d 1442, 1446 (8th Cir. 1987) (OATMEAL RAISIN
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`CRISP not confusingly similar to APPLE RASIN CRISP, both for breakfast cereal); Consol. Cigar v.
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`RJR Tobacco Co., 491 F.2d 1265, 1267, 181 U.S.P.Q. 44, 45 (C.C.P.A. 1974) (DUTCH APPLE for
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`pipe tobacco not confusingly similar to DUTCH MASTERS for cigars).
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`In this case, the additional
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`elements strongly prevent confusion from occurring between LIVING VIDEO PORTRAITS and
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`ALWAYS THERE LIVING VIDEO DIARIES & design.
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`GOODS/SER VICES ARE NOT SIMILAR
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`The second factor is the similarity or dissimilarity and the nature of the goods or services as described
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`in an application or registration or in connection with a prior use of the mark. In re E. I. du Pont de
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`Nemours & Ca, 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). Applicant’s services are
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`“videography and photography services” under class 041. The cited registration covers “audio and
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`video recordings featuring narration with images and activities of a person in the nature of personal
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`The common element between the Applicant and Registrant’s mark is “living video.” However, the
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`journals” under class 009. The scope of the registrant’s goods is very narrow, specifically limiting the
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`audio and video recordings to reflect personal journals. The Applicant’s services are broader and
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`different, specifically Applicant also offers photography services. Under these facts, the services and
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`goods are not similar.
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`THE COMMON ELEMENT IS DISCLAIMED BY THE REGISTRANT
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`
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`registrant has no claim to the exclusive right to use “LIVING VIDEO DIARIES,” as it is disclaimed.
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`The disclaimer is substantial proof that there is no likelihood of confusion.
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`N0 SUBSTANTIAL LIKELIHOOD 0F CONFUSION
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`by cited registrations "[a] showing of mere possibility of confusion is not enough; a substantial
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`likelihood that the public will be confused must be shown." Omaha Natl. Bank, 633 F. Supp. at 234,
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`229 U.S.P.Q. at 52. Applying the factors set forth in Du Pont, and absent “substantial doubt,” In re
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`Mars, Inc., 741 F. 2d 395, 396 222 U.S.P.Q. 938 (Fed. Cir. 1984), registration of Applicant’s mark is
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`appropriate. Taking into consideration the differences in the mark, the disclaimer of the common
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`elements, and the difference in the services/goods, the 2(d) refusal fails to establish that the likelihood
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`of confilsion is substantial. Applicant respectfillly submits that the mark for LIVING VIDEO
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`PORTRAITS does not create a likelihood of COIlfilSiOIl with ALWAYS THERE LIVING VIDEO
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`When determining whether an Applicant’s mark creates a likelihood of confusion, with marks covered
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`publication.
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`DIARIES & design.
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`CONCLUSION
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`Applicant has fully responded to the Office Action. Majority of the ‘DuPont’ factors weigh in the
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`Applicant’s favor. Furthermore, for at least the above reasons, Applicant asserts that Applicant’s
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`mark, LIVING VIDEO PORTRAITS, is sufficiently distinct from the cited registration to avoid
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`consumer confusion. Applicant respectfully submits in good faith that all potential 2(d) refusals,
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`rejections, and/or objections have been overcome and that the applied for mark is in condition for
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`
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`Antonio G. Vann (VSB # 79765)
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`Respectfully submitted,
`/Ant0ni0 G. Vann/
`
`Attorney of Record for the Applicant
`
`