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 FILE NAME
`
`LITERAL ELEMENT
`
`STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`COLOR(S) CLAIMED
`(If applicable)
`
`DESCRIPTION OF THE MARK
`(and Color Location, if applicable)
`
`EVIDENCE SECTION
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)EVIDENCE FILE NAME(S)
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)ORIGINAL PDF FILE
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)CONVERTED PDF FILE(S)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(6 pages)
`
`The table below presents the data as entered.
`
`Entered
`
`86387284
`
`LAW OFFICE 108
`
`http://tsdr.uspto.gov/img/86387284/large
`
`JH CREATIVE
`
`NO
`
`NO
`
`Color is not claimed as a feature of the mark.
`
`The mark consists of the letter J with an h coming out of it, the word creative
`underneath.
`
`evi_701095314-20150121095614818348_._JHCreativeResponse.pdf
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\872\86387284\xml4\ROA0002.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\872\86387284\xml4\ROA0003.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\872\86387284\xml4\ROA0004.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\872\86387284\xml4\ROA0005.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\872\86387284\xml4\ROA0006.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\872\86387284\xml4\ROA0007.JPG
`
`a .pdf document detailing responses to each of the grounds for the refusal within the
`office action dated Dec. 26, 2014.
`
`DESCRIPTION OF EVIDENCE FILE
`
`GOODS AND/OR SERVICES SECTION (current)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`042
`
`Providing communication design services, in terms of apparel, print, online and other visual medias
`
`FILING BASIS
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) FIRST USE ANYWHERE DATE
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) FIRST USE IN COMMERCE DATE
`
`Section 1(a)
`
`At least as early as 01/04/2014
`
`At least as early as 01/04/2014
`
`GOODS AND/OR SERVICES SECTION (proposed)
`
`INTERNATIONAL CLASS
`
`TRACKED TEXT DESCRIPTION
`
`042
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`

`

`Providing communication design services, in terms of apparel, print, online and other visual medias; Providing graphic design services,
`namely, graphic designs for apparel, print media, websites, home pages, commercial displays
`
`FINAL(cid:160)DESCRIPTION
`
`Providing graphic design services, namely, graphic designs for apparel, print media, websites, home pages, commercial displays
`
`FILING BASIS
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)FIRST USE ANYWHERE DATE
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)FIRST USE IN COMMERCE DATE
`
`ADDITIONAL STATEMENTS SECTION
`
`DISCLAIMER
`
`NEW ATTORNEY SECTION
`
`NAME
`
`FIRM NAME
`
`STREET
`
`CITY
`
`STATE
`
`ZIP/POSTAL CODE
`
`COUNTRY
`
`PHONE
`
`EMAIL
`
`Section 1(a)
`
`At least as early as 01/04/2014
`
`At least as early as 01/04/2014
`
`No claim is made to the exclusive right to use creative apart from the mark as shown.
`
`Antonio Vann
`
`Dunlap Bennett & Ludwig PLLC
`
`211 Church Street, SE
`
`Leesburg
`
`Virginia
`
`20175
`
`United States
`
`855.226.9661
`
`ip@dbllawyers.com
`
`AUTHORIZED EMAIL COMMUNICATION
`
`Yes
`
`NEW CORRESPONDENCE SECTION
`
`NAME
`
`FIRM NAME
`
`STREET
`
`CITY
`
`STATE
`
`ZIP/POSTAL CODE
`
`COUNTRY
`
`PHONE
`
`EMAIL
`
`Antonio Vann
`
`Dunlap Bennett & Ludwig PLLC
`
`211 Church Street, SE
`
`Leesburg
`
`Virginia
`
`20175
`
`United States
`
`855.226.9661
`
`ip@dbllawyers.com
`
`AUTHORIZED EMAIL COMMUNICATION
`
`Yes
`
`SIGNATURE SECTION
`
`RESPONSE SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`SIGNATORY'S PHONE NUMBER
`
`DATE SIGNED
`
`AUTHORIZED SIGNATORY
`
`/avann/
`
`Antonio Vann
`
`Attorney of Record
`
`855.226.9661
`
`01/21/2015
`
`YES
`
`

`

`FILING INFORMATION SECTION
`
`SUBMIT DATE
`
`TEAS STAMP
`
`Wed Jan 21 10:05:07 EST 2015
`
`USPTO/ROA-XX.XXX.XX.XX-20
`150121100507843982-863872
`84-5301c18d123751ac2fe595
`9a941ec9fcff9bae4a83a0856
`7e3ddc7639f714e2d41-N/A-N
`/A-20150121095614818348
`
`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. 86387284(cid:160)JH CREATIVE (Stylized and/or with Design, see http://tsdr.uspto.gov/img/86387284/large) has been amended
`as follows:
`
`EVIDENCE
`Evidence in the nature of a .pdf document detailing responses to each of the grounds for the refusal within the office action dated Dec. 26, 2014.
`has been attached.
`Original PDF file:
`evi_701095314-20150121095614818348_._JHCreativeResponse.pdf
`Converted PDF file(s) ( 6 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`Evidence-5
`Evidence-6
`
`CLASSIFICATION AND LISTING OF GOODS/SERVICES
`Applicant proposes to amend the following class of goods/services in the application:
`Current: Class 042 for Providing communication design services, in terms of apparel, print, online and other visual medias
`Original Filing Basis:
`Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is
`using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark
`was first used at least as early as 01/04/2014 and first used in commerce at least as early as 01/04/2014 , and is now in use in such commerce.
`
`Proposed:
`Tracked Text Description: Providing communication design services, in terms of apparel, print, online and other visual medias; Providing
`graphic design services, namely, graphic designs for apparel, print media, websites, home pages, commercial displays
`
`Class 042 for Providing graphic design services, namely, graphic designs for apparel, print media, websites, home pages, commercial displays
`Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is
`using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark
`was first used at least as early as 01/04/2014 and first used in commerce at least as early as 01/04/2014 , and is now in use in such commerce.
`ATTORNEY ADDRESS
`Applicant proposes to amend the following:
`Proposed:
`Antonio Vann of Dunlap Bennett & Ludwig PLLC, having an address of
`211 Church Street, SE Leesburg, Virginia 20175
`United States
`ip@dbllawyers.com
`855.226.9661
`
`

`

`CORRESPONDENCE ADDRESS CHANGE
`Applicant proposes to amend the following:
`Proposed:
`Antonio Vann of Dunlap Bennett & Ludwig PLLC, having an address of
`211 Church Street, 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 creative apart from the mark as shown.
`
`SIGNATURE(S)
`Response Signature
`Signature: /avann/(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)Date: 01/21/2015
`Signatory's Name: Antonio Vann
`Signatory's Position: Attorney of Record
`
`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: (cid:160)(cid:160)(cid:160)Antonio Vann
`(cid:160)(cid:160)(cid:160)Dunlap Bennett & Ludwig PLLC
`(cid:160)(cid:160)(cid:160)211 Church Street, SE
`(cid:160)(cid:160)(cid:160)Leesburg, Virginia 20175
`
`Serial Number: 86387284
`Internet Transmission Date: Wed Jan 21 10:05:07 EST 2015
`TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20150121100507843
`982-86387284-5301c18d123751ac2fe5959a941
`ec9fcff9bae4a83a08567e3ddc7639f714e2d41-
`N/A-N/A-20150121095614818348
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicant:
`Serial No.:
`
`Filed:
`
`Joe Hughes Creative
`86387284
`
`December 26, 2014
`
`Trademark Atty:
`Word Mark:
`
`Kathy Wang
`JH CREATIVE
`
`RESPONSE TO DECEMBER 26, 2014 OFFICE ACTION
`
`This Response is filed in reply to the Office Action e-mailed on December 26, 2014. The Applicant
`
`respectfully submits the following response. Applicant submits that the above-identified trademark
`
`application for JH CREATIVE is in condition for allowance to publication.
`
`ANIENDMENT OF IDENTICATION
`
`The Examining Attorney has requested an amendment to the identification of the class 042 services.
`
`Applicant amends the identification of the class 042 services to the following:
`
`Providing graphic design services, namely, graphic designs for apparel, print media,
`websites, homepages, commercial displays
`
`DISCLAIMER
`
`The Applicant submits the following disclaimer:
`
`No claim is made to the exclusive right to use “CREATIVE” apart from the mark as shown.
`
`POTENTIAL SECTION 2(d) REFUSAL — 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 Kathy
`
`Wang raises a Section 2(d) refusal in a subsequent Office Action.
`
`

`

`APPLICANT"S VVORD MARK
`
`CITED REGISTERED MARK
`
`creative
`
`Date of First Use: 01/04/20134
`
`Reg. No. 3660371
`
`Class 042: Providing graphic design seiyices,
`namely. graphic designs for apparel. print media,
`websites. home pages, commercial displays
`
`Date of First Use: 03/01/2007
`
`Class 041: Photography; Photography sen-'ices;
`Portrait photography
`
`APPLI(7ANT’S MARK IS NOT (‘ONFUSINGLY SIMILAR
`
`The USPTO suggests that it will refuse registration of Applicant’s mark, JH CREATIVE, because ofa
`
`likelihood of confusion with registered mark jh (stylized). in U.S. Registration No. 3660371. “[T]he
`
`question of confusion is related not to the nature of the mark but to its effect ‘when applied to the
`
`[services] of the app1icant."’In re E. 1. dz: Pom‘ dc .V(3l'170Zli‘.S' & 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 Wei gh in the likelihood of confusion analysis and stated that all of the factors must be
`
`considered “when of record.”1d. at 1361. The Examining Attomey has indicated that similarity of the
`
`marks, similarity of the goods and/or services, and similarity of trade channels of the goods and /or
`
`S€1‘V'lC€S weigh against the Applicant" s mark. However, Applicant respectfully asseits that when all
`
`factors are weighed, the majority weigh against the existence of a likelihood of confusion.
`
`SIMILARITY OF THE MARKS BASED SOLEY UPON DOMINAN T PORTION BUT NO
`
`NEXUS PROVIDED TO ESTABLISH A LIKELIHOOD OF CONFUSION
`
`

`

`The Examining Attorney has highlighted the similarity of the marks as one basis for the refilsal,
`
`focusing on the premise that the “Word portion is often considered the dominant feature and is
`
`accorded greater weight in determining Whether marks are confusingly similar...” When viewed side
`
`by side, the marks do not appear similar. The Applicant’s mark includes an additional element, which,
`
`although disclaimed, must be considered when viewing the Applicant’s mark as a whole. The
`
`Applicant’s mark is for graphic design services and the cited registrant’s services are photography
`
`services. These facts alone are a sufficient basis to establish that the marks have different commercial
`
`impressions. Furthermore, 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
`
`Co. V. Pack’em Enterprises, Inc., 951 F.2d 330 (Fed. Cir. 1991).
`
`APPLICANT DOES NOT OFFER THE SAME SERVICES
`
`Another DuPont factor relevant to this office action 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). Section l207.01(a)(i) states in pertinent part that, a likelihood of confusion inquiry is focused
`
`on Whether the public will be confused as to the source of goods or services.
`
`In the present case, the Applicant’s class 042 services are related to graphic design. The cited
`
`registration covers class 041 photography services. In order for the likelihood of confusion analysis to
`
`stand it must show that the likelihood is substantial. When determining whether an Applicant’s mark
`
`creates a likelihood of confusion, with marks covered by cited registrations "[a] showing of mere
`
`possibility of confilsion 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. The Examining Attorney has
`
`

`

`offered little evidence to establish how or why the public will confuse Applicant’s graphic design
`
`services with the cited registrant’s photography services. Graphic design services generally require
`
`some degree of technical expertise, involving a computer and graphic design software. Photography
`
`services generally require camera related equipment.
`
`THE GOODS ARE NOT SOLD THROUGH THE SAME CHANNELS
`
`Another factor is the similarity or dissimilarity of established, likely—to—continue trade channels. In re
`
`E. I. du Pom‘ de Nemours & C0., 476 F.2d at 1361, 177 USPQ at 567. This factor heavily weighs
`
`against a finding of a likelihood of confusion. The Applicant does not offer its services through the
`
`same direct channels as the cited registrant. In fact, the Applicant and cited registrant have enjoyed at
`
`least one year of concurrent use without any incidents of actual confusion.
`
`THE CONSUMERS INVOLVED WILL MAKE CAREFUL DECISIONS SUFFICENT TO
`AVOID CONFUSION
`
`The next factor is the conditions under which and buyers to whom sales are made (i.e. impulse v.
`
`careful). Id. The Applicant’s services will require customer input, details and feedback in order to
`
`provide its services. The cited registrant’s services will also rely heavily on the personal preferences
`
`and aesthetic of both the photographer and consumer. These careful choices further support the
`
`Applicant’s position that there is no likelihood of confusion.
`
`THE PRIOR MARK IS NOT FAMOUS
`
`Another factor is the fame of the prior mark (eg, sales, advertising, length of use, era). Id. There is no
`
`evidence that the prior mark is famous, this factor Weighs against a likelihood of confusion.
`
`

`

`SIMILAR MARKS WITH SIMILAR GOODS/SERVICES CAPABLE OF REGISTRATION
`
`Another factor looks to Whether there are any other established facts probative of the effect of use.
`
`Applicant reserves all rights to provide a detailed and more descriptive response on this factor if the
`
`USPTO should raise a Section 2(d) refusal in a subsequent Office Action. Applicant further asserts
`
`that the USPTO has found a mark capable of registration, even in cases where the marks are nearly
`
`identical and are covered under the same classification. Furthermore, courts have long held that the
`
`addition of different terms to a common element appreciably reduces the likelihood of confusion
`
`between two marks. See US Trust v. U.S. States Trust Co., 210 F. Supp. 2d 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—Wa1lace,
`
`Inc., 432 F.2d 1400, 1402, 167 U.S. P. Q. 529, 530 (C.C.P.A. 1970) (PEAK PERIOD not confusing
`
`similar to PEAK); Servo Corp. Am. v. Servo-Tek Prod. Co., 289 F. 2d 955, 981 129 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).
`
`CONCLUSION
`
`Applicant has f111ly 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, JH CREATIVE, is sufficiently distinct from the cited registrations, so as not to result in
`
`

`

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