Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 78283048 has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

Applicant: Renewed Vision, LLC                            Trademark Examining Operations

 

Serial No.: 78/283048                                              Examining Attorney: 

                                                                                    Jason F. Turner

Filed: August 5, 2003                                              

Law Office: 108

 

Mark: ProPresenter and Design                             Attorney Ref.: 361803.3010

 

 

 

RESPONSE

 

Response - No Fee

Hon. Assistant Commissioner for Trademarks 

P.O. Box 1451

Alexandria, VA 22313-1451

 

Sir:

 

Applicant responds to the Office Action mailed September 29, 2008 in connection with the above-identified application.   

 

AMENDMENT

            Please amend to above-identified application to include the following color claim and color location statement:

The colors blue, orange, black and white are claimed as features of the mark

The mark consists of the word "ProPresenter" superimposed over two quadrilaterals.  The wording appears in black outlined in white. The color orange appears in the obscured quadrilateral containing "PRO" and the color blue appears in the quadrilateral containing the word "PRESENTER."

 

REMARKS

CONFUSION IS NOT LIKELY

In the September 29, 2008 Office Action, the Examining Attorney continued the Section 2(d) refusal to register Applicant's mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant's ProPresenter mark is likely to be confused with the mark disclosed in Registration No. 2,854,043.  Applicant respectfully disagrees with the Examining Attorney's conclusion and reports that Sigmatech, Inc., owner of the cited registration, also believes that confusion is not likely. 

After reviewing the differences between their respective marks, products, and customer bases, and in light of the fact that they have used their marks contemporaneously since 2001 without any actual confusion, Applicant and Sigmatech have concluded that the registration of Applicant's mark is not likely to cause confusion with Union's registered mark.  Attached hereto as Exhibit A is a copy of an Agreement executed by Sigmatech in which Sigmatech agrees that Applicant's use and registration of its ProPresenter mark is not likely to cause confusion with Sigmatech's mark.   Applicant respectfully submits that the Patent and Trademark Office ("PTO") should accept and defer to the judgment of the owner of the cited registration.  Sigmatech transacts in, competes in and monitors the market every day.  As such, it is in a better position to judge whether confusion between its mark and Applicant's mark is likely.  If Sigmatech believes that such confusion is unlikely, then the PTO should conclude likewise.  For the foregoing reason, and reasons previously presented, Applicant respectfully requests that the Examining Attorney withdraw the refusal to register Applicant's ProPresenter mark.   

SUBSTITUTE SPECIMEN

In the September 29 Office Action, the Examining Attorney also rejected Applicant's specimens because they did not show Applicant's mark in color and required Applicant to submit substitute specimens.  In response, Applicant submits herewith specimens, namely, screen shots showing the display of Applicant's mark when the software is in use.  These specimens show Applicant's mark in color.  Applicant further submits the declaration of Bradley A. Weston, attached hereto as Exhibit B, verifying that the substitute specimens were in use at least as early as August 5, 2003, the filing date of the application. 

COLOR CLAIM

In the September 29 Office Action, the Examining Attorney required Applicant to submit a color claim and a color location statement.  With the foregoing amendment, Applicant has satisfied that requirement. 

CONCLUSION

With the submission of this Response, Applicant believes that all outstanding requirements in connection with this application are now satisfied.  Further and favorable action resulting in publication of the mark is respectfully requested.   Although no fee is believed to be required, should any fee be required, please charge the required amount to deposit account no. 20-0778. 

Should the Examining Attorney have any further questions or comments, please contact the undersigned at the below-listed telephone number.

 

                                                                        Respectfully submitted,

                                                                        Renewed Vision, LLC

 

 

 

                                                                           /Charles S. Murray, Jr./                                          

                                                                        Charles S. Murray, Jr.

                                                                        Attorney for Applicant

 

 

THOMAS, KAYDEN, HORSTEMEYER

& RISLEY

600 Galleria PKWY SE Suite 1500

Atlanta, GA 30339

 

EVIDENCE
Evidence in the nature of Exhibit A to Response - Consent Agreement from SigmaTech, Inc. Exhibit B to Response -- Declaration of Bradley A. Weston regarding substitute specimens has been attached.
Original PDF file:
evi_3811215035-143408814_._00889309.PDF
Converted PDF file(s) (4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Downloadable computer software used for presenting text, graphics, video, and sound in live or recorded video presentations
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 07/01/1999 and first used in commerce at least as early as 07/01/1999, and is now in use in such commerce.

Proposed: Class 009 for Downloadable computer software used for presenting text, graphics, video, and sound in live or recorded video presentations
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 07/01/1999 and first used in commerce at least as early as 07/01/1999, and is now in use in such commerce.
Applicant hereby submits a new specimen for Class 009. The specimen(s) submitted consists of Screen shots that appear during use of Applicant's software.
For an application based on 1(a), Use in Commerce, "The substitute specimen(s) was in use in commerce as of the filing date of the application."
Original PDF file:
SPU0-3811215035-143408814_._Screen_Shot__1.pdf
Converted PDF file(s) (1 page)
Specimen File1
Original PDF file:
SPU0-3811215035-143408814_._Screen_Shot__2.pdf
Converted PDF file(s) (1 page)
Specimen File1

CORRESPONDENCE ADDRESS CHANGE
Applicant proposes to amend the following:
Current:
Brad Weston
1135 Bascomb Farm Dr.
Alpharetta GA 30004

Proposed:
Cynthia J. Lee of Thomas, Kayden, Horstemeyer & Risley, LL, having an address of
Suite 1500 600 Galleria Parkway Atlanta, Georgia 30339
United States
cynthia.lee@tkhr.com
770-933-9500
770-951-0933



ADDITIONAL STATEMENTS
Description of mark
The mark consists of the word 'ProPresenter' superimposed over two quadrilaterals. The wording appears in black outlined in white. The color orange appears in the obscured quadrilateral containing 'PRO' and the color blue appears in the quadrilateral containing the word 'PRESENTER'.

Color Claim
The color(s) blue, orange, black and white is/are claimed as a feature of the mark.

SIGNATURE(S)
Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant has had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii); and/or the applicant has had a bona fide intention to exercise legitimate control over the use of the mark in commerce by its members. 37 C.F. R. Sec. 2.44. If the applicant is seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date. 37 C.F.R. Secs. 2.34(a)(1)(i); and/or the applicant has exercised legitimate control over the use of the mark in commerce by its members. 37 C.F.R. Sec. 244. The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true.

Signature: /Bradley A. Weston/      Date: 03/30/2009
Signatory's Name: Bradley A. Weston
Signatory's Position: President and CEO

Response Signature
Signature: /Charles S. Murray, Jr./     Date: 03/30/2009
Signatory's Name: Charles S. Murray, Jr.
Signatory's Position: Attorney of Record, Washington, D.C. bar member

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:    Cynthia J. Lee
   Thomas, Kayden, Horstemeyer & Risley, LL
   Suite 1500
   600 Galleria Parkway
   Atlanta, Georgia 30339
        
Serial Number: 78283048
Internet Transmission Date: Mon Mar 30 14:56:17 EDT 2009
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2009033014561781
6853-78283048-43022d12242201b9db41e43d8f
8c65bdc4a-N/A-N/A-20090330143408814950