Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

---

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88548579 EVICAM(Standard Characters, see http://uspto.report/TM/88548579/mark.png) has been amended as follows:

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

The Examining Attorney disclosed a conflict to a prior registration under Section 2(d) of the Trademark Act. The cited conflict was for ?EVICAM? in association with, in pertinent part, ?vehicle incident surveillance systems? in International Class 009. Applicant?s mark is ?EVICAM? in association with, as amended, ?downloadable mobile application for capturing and transmitting encrypted and geotagged photo and video files between users for purposes of preserving and communicating evidence? in International Class 009. Applicant submits that this cited registration would not give rise to a likelihood of confusion with Applicant?s mark. The case of In re E.I. Dupont de Nemours & Company, 177 U.S.C.Q. 563 (CCPA 1973) (?Dupont?) sets forth the factors to be considered in determining whether a likelihood of confusion exists. There is no bright line test and each case must be decided on its own facts. TMEP ?1207.01. The first factor is the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. Applicant admits that the conflicting marks are identical. The second Dupont factor is the relatedness of the marks? associated goods and services. Registrant?s trademark encompasses physical surveillance devices and, as the Examining Attorney points out, such goods are closely related to applications whereby users can control such surveillance equipment. However, Applicant?s services utilize the user?s phone or application host hardware for capture purposes, and, more importantly, emphasize the encrypted transmission and sharing of captured media between users. The main focus of the app is to form a communication network for sharing of important data. Therefore, the analysis between the parties? marks really hinges on the similarities and differences in the applications. As stated before, Applicant?s application emphasizes sharing of data, whereas applications that typically accompany or supplement Registrant?s hardware are for purposes only of capture and control. There is no networking element. Additionally, it is the practice of the USPTO to register pairs of marks in extremely close proximity or posture, similar to marks in the present case. For example: Mark 1 Mark 2 International Class ?RIP CURL? ?RIP TIDE? 035; 009 ?SURF & SPORT? ?SURF & CYCLE? 009; 009 In the cases cited, both co-registered marks encompass virtually identical goods or services that the Examining Attorney has deemed to be related. The USPTO has repeatedly determined, then, that pairs of marks that differ by one unrelated word or syllable but have identical goods and services are simultaneously registrable. It follows, then, that Registrant?s mark and Applicant?s mark should be allowed simultaneous registration. In summary, based on the differences in services, consumer bases and trade channels, Applicant asserts that no likelihood of confusion exists with the ?EVICAM? mark.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Downloadable mobile applications for iOS devices; Downloadable mobile applications for Android Devices; Downloadable mobile applications for Windows Devices; Downloadable mobile applications for Ubuntu Devices
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 03/01/2019 and first used in commerce at least as early as 07/01/2019 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Downloadable mobile applications for iOS devices; Downloadable mobile application for capturing and transmitting encrypted and geotagged photo and video files between users for purposes of preserving and communicating sensitive and important data.; Downloadable mobile applications for Android Devices; Downloadable mobile applications for Windows Devices; Downloadable mobile applications for Ubuntu DevicesClass 009 for Downloadable mobile application for capturing and transmitting encrypted and geotagged photo and video files between users for purposes of preserving and communicating sensitive and important data.
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 03/01/2019 and first used in commerce at least as early as 07/01/2019 , and is now in use in such commerce.
The applicant hereby appoints Daniel Ross. Other appointed attorneys are Daniel Ross. Daniel Ross of Daniel Ross & Associates LLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      Upper Unit
      1515 Ridgewood Ave
      Lakewood, Ohio 44107
      United States
to submit this Response to Office Action Form on behalf of the applicant.

The phone number is 2163075590.

The email address is dr@danielrosslawfirm.com

Daniel Ross submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: ELDANDACHI, ZAKARIA KHALED. ELDANDACHI, ZAKARIA KHALED, is located at

      5TH FLOOR - AWQAF BUILDING - CENTRAL TAL
      TRIPOLI, 00961
      LB

The phone number is +961-3190590.

The email address is info@zakdandachi.com

The applicants proposed correspondence information: Daniel Ross. Daniel Ross of Daniel Ross & Associates LLC, is located at

      Upper Unit
      1515 Ridgewood Ave
      Lakewood, Ohio 44107
      United States

The phone number is 2163075590.

The email address is dr@danielrosslawfirm.com

SIGNATURE(S)
Response Signature
Signature: /Daniel Ross/     Date: 11/04/2019
Signatory's Name: Daniel Ross
Signatory's Position: Attorney of record, Ohio bar member

Signatory's Phone Number: 2163075590

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    ELDANDACHI, ZAKARIA KHALED
   
   
   5TH FLOOR - AWQAF BUILDING - CENTRAL TAL
   TRIPOLI, 00961
Mailing Address:    Daniel Ross
   Daniel Ross & Associates LLC
   Upper Unit
   1515 Ridgewood Ave
   Lakewood, Ohio 44107
        
Serial Number: 88548579
Internet Transmission Date: Mon Nov 04 17:13:21 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XX-2019110417132116
5943-88548579-70031906bc1ed44f14ea6099aa
d097ed13dcf474cebe95510eac577c5b46deb7-N
/A-N/A-20191104171038409367