`
`OMB No. 0651-0050 (Exp. 07/31/2017)
`
`Response to Office Action
`
`The table below presents the data as entered.
`
`Entered
`
`86390952
`
`LAW OFFICE 105
`
`http://tsdr.uspto.gov/img/86390952/large
`
`BRIGHTSIDE APARTMENTS
`
`NO
`
`NO
`
`Color is not claimed as a feature of the mark.
`
`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
`
` EVIDENCE FILE NAME(S)
`
` ORIGINAL PDF FILE
`
` CONVERTED PDF FILE(S)
` (6 pages)
`
`DESCRIPTION OF EVIDENCE FILE
`
`ADDITIONAL STATEMENTS SECTION
`
`DISCLAIMER
`
`DESCRIPTION OF THE MARK
`(and Color Location, if applicable)
`
`NEW ATTORNEY SECTION
`
`NAME
`
`FIRM NAME
`
`STREET
`
`The mark consists of a picture of 2 apartment buildings and a house to the left side of
`the buildings. There are 2 shrubs on a hill above the words "BRIGHTSIDE
`APARTMENTS".
`
`evi_73394320-20150308175518495989_._OAResponse-Brightside.pdf
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\909\86390952\xml6\ROA0002.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\909\86390952\xml6\ROA0003.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\909\86390952\xml6\ROA0004.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\909\86390952\xml6\ROA0005.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\909\86390952\xml6\ROA0006.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\909\86390952\xml6\ROA0007.JPG
`
`a .pdf document containing arguments in response to each refusal raised in the office
`action dated Dec. 23. 2014.
`
`No claim is made to the exclusive right to use APARTMENTS apart from the mark
`as shown.
`
`The mark consists of a stylized version of two apartment buildings with a stylized
`house and two shrubs to the left of the apartment buildings on a hill, above the
`wording "BRIGHTSIDE" with a horizontal bar to the left of the wording
`"APARTMENTS" below.
`
`Antonio Vann
`
`Dunlap Bennett & Ludwig PLLC
`
`211 Church St SE
`
`
`
`
`
`
`
`
`CITY
`
`STATE
`
`ZIP/POSTAL CODE
`
`COUNTRY
`
`PHONE
`
`
`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
`
`
`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
`
`BRIGHTSIDE APARTMENTS
`594 KENMORE AVE APT 3
`BUFFALO
`New York (NY)
`US
`14216-1609
`
`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
`
`03/08/2015
`
`YES
`
`Sun Mar 08 17:59:11 EDT 2015
`
`USPTO/ROA-XX.XX.XX.XX-201
`50308175911021758-8639095
`2-53036eb37e159b173df8dce
`2f987ec555858f56eb6aa3a8c
`3b6746959eb1e98463-N/A-N/
`A-20150308175518495989
`
`
`
`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. 86390952 BRIGHTSIDE APARTMENTS (Stylized and/or with Design, see http://tsdr.uspto.gov/img/86390952/large) has
`been amended as follows:
`
`EVIDENCE
`Evidence in the nature of a .pdf document containing arguments in response to each refusal raised in the office action dated Dec. 23. 2014. has
`been attached.
`Original PDF file:
`evi_73394320-20150308175518495989_._OAResponse-Brightside.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:
`BRIGHTSIDE APARTMENTS
`594 KENMORE AVE APT 3
`BUFFALO
`New York (NY)
`US
`14216-1609
`
`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 APARTMENTS apart from the mark as shown.
`
`Description of mark
`The mark consists of a stylized version of two apartment buildings with a stylized house and two shrubs to the left of the apartment buildings on
`a hill, above the wording "BRIGHTSIDE" with a horizontal bar to the left of the wording "APARTMENTS" below.
`
`
`
`SIGNATURE(S)
`Response Signature
`Signature: /avann/ Date: 03/08/2015
`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: 86390952
`Internet Transmission Date: Sun Mar 08 17:59:11 EDT 2015
`TEAS Stamp: USPTO/ROA-XX.XX.XX.XX-201503081759110217
`58-86390952-53036eb37e159b173df8dce2f987
`ec555858f56eb6aa3a8c3b6746959eb1e98463-N
`/A-N/A-20150308175518495989
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`Applicant:
`Serial N0.:
`
`Brightside Apartments
`863 90952
`
`September 10, 2014
`Filed:
`Shavell McPherson-Rayburn
`Trademark Atty:
`BRIGHTSIDE APARTMENTS
`Word Mark:
`
`
`RESPONSE TO DECEMBER 23, 2014 OFFICE ACTION
`
`
`This Response is filed in reply to the Office Action e-mailed on December 23, 2014. The Applicant
`
`respectfully submits the following response. Applicant submits that the above-identified trademark
`
`application for BRIGHTSIDE APARTMENTS is in condition for allowance to publication.
`
`Description Of The Mark Amendment
`
`Applicant requests to adopt the proposed description provided by the Examining attorney, and amend
`
`the description of the mark to the following:
`
`reserves all rights to provide a detailed and more descriptive response if Examining Attorney Shavell
`
`The mark consists of a stylized version of two apartment buildings with a stylized
`house and two shrubs to the left of the apartment buildings on a hill, above the wording
`"BRIGHTSIDE” with a horizontal bar to the left of the wording “APARTMENTS”
`below.
`
`Disclaimer Requirement
`
`Applicant adopts the suggested disclaimer, namely:
`
`No claim is made to the exclusive right to use “APARTMENTS” apart from the mark as
`shown.
`
`Potential Section 2(d) — Likelihood of Confusion
`
`Applicant submits a preliminary response to the potential section 2(d) refusal; however, Applicant
`
`
`
`McPherson-Rayburn raises a Section 2(d) refusal in a subsequent Office Action.
`
`Cited Registered Mark
`
`BRIGHTSIDE
`
`.7
`
`DIAP-u‘dl: BARILEH
`
`_ 5122662606
`
`
`Applicant’s Word & Design Mark
`
`
`
`
`
`—
`
`036: Real estate rental services, namely, rental of
`residential housing
`
`Preliminmy Response with Reservation ofRights
`
`(specimen on record)
`036: Real estate brokerage services
`
`The USPTO suggests that it will refuse registration of Applicant’s mark, BRIGHTSIDE
`
`APARTMENTS, because of a likelihood of confusion with the cited registered mark, BRIGHTSIDE.
`
`“[T]he question of confusion is related not to the nature of the mark but to its effect ‘when applied to
`
`the goods ofthe 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 and similarity of the goods and/or services weigh against the registration of Applicant’s mark.
`
`However, Applicant respectfully asserts that when majority of the factors are weighed, they weigh
`
`against the existence of a likelihood of confusion.
`
`Similarity of Conflicting Designations
`
`I.
`BRIGHTSIDE
`APARTMENTS
`
`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 & C0, 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 Co. v. Pack’em Enterprises, Inc, 951 F.2d 330 (Fed. Cir. 1991). When
`
`Applicant’s mark (BRIGHTSIDE APARTMENTS), and the cited registrations are compared; the
`
`marks give off different commercial expressions. Specifically, the design elements are dominant
`
`features of Applicant’s Mark, which result in a commercial impression that is distinctly different from
`
`the cited registration. Although, the cited registered mark is “BRIGHTSIDE,” the specimen on record
`
`reflects the actual mark is BRIGHTSIDE REALTY. The added “realty” element is significant and
`
`results in a different commercial impression. When comparing how the marks are used in commerce
`
`(based upon the specimen on record), the Applicant’s mark and the cited registrant’s mark do not
`
`appear similar.
`
`in an application or registration or in connection with a prior use of the mark. In re E. I. du Pont de
`
`Visually, the phrase BRIGHTSIDE APARTMENTS is easily distinguished from the cited registration.
`
`Applicant’s mark is a uniquely styled “word & design trademark.” The applied for mark (with its
`
`style and design elements) is significantly different from the cited registration. The two marks give
`
`distinctly different commercial impressions and visual representations. For at least these reasons,
`
`Applicant asserts that the mark BRIGHTSIDE APARTMENTS is significantly different than the cited
`
`registration. This factor weighs in Applicant’s favor.
`
`Similarity 0r Dissimilarity and the Nature ofthe Goods or Services
`
`The second factor is the similarity or dissimilarity and the nature of the goods or services as described
`
`
`
`Nemours & C0., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). While the applicant and
`
`the registrant share the same class, the services are different. Applicant offers rental homes.
`
`further supports the difference in services, as the cited registrant facilitates the “sale” of property,
`
`whereas applicant is renting property.
`
`However, the cited registrant offers brokerage services. In fact the cited registrants specimen of record
`
`no evidence that the prior marks are famous, this factor weighs against a likelihood of confusion.
`
`Similarity or Dissimilarity ofEstablished Likely to Continue Trade Channels
`
`The third factor is the similarity or dissimilarity of established, likely—to—continue trade channels. In re
`
`E. I. du Pont de Nemours & C0,, 476 F.2d at 1361, 177 USPQ at 567. This factor heavily weighs
`
`against a finding of a likelihood of COIIfilSiOI]. The Applicant’s services, being rental properties, have a
`
`geographic limitation, restricting the services to the state of New York. The Cited Registrant’s
`
`services are also confined to the State of Texas. Therefore, the market interface for the two marks is
`
`low and they do not travel in the same channels of trade.
`
`Conditions Upon Sales Are Made
`
`The fourth factor is the conditions under which and buyers to whom sales are made (i.e. impulse v.
`
`carefiil). Id. There can be no dispute that consumers interested in Applicant’s and Registrant’s services
`
`will make careful and informed decisions. This factor weighs heavily against a likelihood of
`
`confusion between these two marks.
`
`Fame of the Prior Mark
`
`The fifth factor is the fame of the prior mark (e.g., sales, advertising, length of use, eta). Id. There is
`
`
`
`Nature and Extent ofAny Actual Confusion
`
`The seventh factor concerns the nature and extent of any actual confusion. Id. No evidence exists that
`
`any consumer has been or will be confilsed by the use of these two marks. Consequently, Applicant
`
`asserts that this factor weighs in its favor or is at least neutral in the likelihood of confusion analysis.
`
`Whether There Are any Other Established Facts Probative 0f the Effect of Use
`
`The thirteenth factor looks to whether there are any other established facts probative of the effect of
`
`use. Applicant fiirther 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
`
`pipe tobacco not confusingly similar to DUTCH MASTERS for cigars).
`
`likelihood of confusion between two marks. See US Trust v. US. 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-Wallace, Inc., 432 F.2d 1400, 1402, 167 US. P. Q. 529, 530 (C.C.P.A. 1970) (PEAK PERIOD
`
`not confiising 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 confilsing 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 RAISTN
`
`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
`
`
`
`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 Font, and absent “substantial doubt,” In re
`
`Mars, Inc., 741 F. 2d 395, 396 222 U.S.P.Q. 938 (Fed. Cir. 1984), registration oprplicant’s mark is
`
`appropriate. For these reasons and others, the majority of these factors weigh against a finding of a
`
`likelihood of confusion. Applicant respectfully submits that the mark for BRIGHTSIDE
`
`APARTMENTS does not create a likelihood of confusion with the cited registration.
`
`When determining whether an Applicant’s mark creates a likelihood of confusion, with marks covered
`
`Attorney of Record for the Applicant
`
`CONCLUSION
`
`Applicant has fully responded to the December 23, 2014 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, BRIGHTSIDE APARTMENTS, is sufficiently distinct from the cited
`
`registration that it will not result in consumer confilsion. Applicant respectfully submits in good faith
`
`that all potential 2(d) refilsals, 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)
`
`