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 1960 (Rev 10/2011)
`
`OMB No. 0651-0050 (Exp 07/31/2017)
`
`Request for Reconsideration after Final Action
`
`The table below presents the data as entered.
`
`Input Field
`
`Entered
`
`SERIAL NUMBER
`
`86868731
`
`LAW OFFICE ASSIGNED
`
`LAW OFFICE 103
`
`MARK SECTION
`
`MARK
`
`LITERAL ELEMENT
`
`STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`MARK STATEMENT
`
`EVIDENCE SECTION
`
`        EVIDENCE FILE NAME(S)
`
`       ORIGINAL PDF FILE
`
`       CONVERTED PDF FILE(S)
`       (1 page)
`
`       ORIGINAL PDF FILE
`
`       CONVERTED PDF FILE(S)
`       (1 page)
`
`https://tmng-al.uspto.gov/resting2/api/img/86868731/large
`
`LIVE PHOTOS
`
`YES
`
`YES
`
`The mark consists of standard characters, without claim to any particular font style, size or color.
`
`evi_204155226109-20170801125152430049_._LIVE_PHOTOS_request_for_reconsideration.pdf
`
`\\TICRS\EXPORT17\IMAGEOUT17\868\687\86868731\xml6\RFR0002.JPG
`
`evi_204155226109-20170801125152430049_._LIVE_PHOTOS_U.S._consent.pdf
`
`\\TICRS\EXPORT17\IMAGEOUT17\868\687\86868731\xml6\RFR0003.JPG
`
`DESCRIPTION OF EVIDENCE FILE
`
`Applicant's arguments and accompanying consent agreement
`
`SIGNATURE SECTION
`
`RESPONSE SIGNATURE
`
`SIGNATORY'S NAME
`
`/ikc/
`
`Irene K. Chong
`
`SIGNATORY'S POSITION
`
`Attorney of Record, California bar member
`
`DATE SIGNED
`
`AUTHORIZED SIGNATORY
`
`CONCURRENT APPEAL NOTICE FILED
`
`FILING INFORMATION SECTION
`
`08/01/2017
`
`YES
`
`YES
`
`SUBMIT DATE
`
`TEAS STAMP
`
`Tue Aug 01 13:00:27 EDT 2017
`
`USPTO/RFR-XXX.XXX.XXX.XXX
`-20170801130027905773-868
`68731-5106c18d9374a5fddfb
`68ecdc9bd41145f1b522d3acd
`3975caebe93ee86261a3-N/A-
`N/A-20170801125152430049
`
`

`

`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 1960 (Rev 10/2011)
`
`OMB No. 0651-0050 (Exp 07/31/2017)
`
`Request for Reconsideration after Final Action
`To the Commissioner for Trademarks:
`
`Application serial no. 86868731 LIVE PHOTOS(Standard Characters, see https://tmng-al.uspto.gov/resting2/api/img/86868731/large) has been
`amended as follows:
`
`EVIDENCE
`Evidence in the nature of Applicant's arguments and accompanying consent agreement has been attached.
`Original PDF file:
`evi_204155226109-20170801125152430049_._LIVE_PHOTOS_request_for_reconsideration.pdf
`Converted PDF file(s) ( 1 page)
`Evidence-1
`Original PDF file:
`evi_204155226109-20170801125152430049_._LIVE_PHOTOS_U.S._consent.pdf
`Converted PDF file(s) ( 1 page)
`Evidence-1
`
`SIGNATURE(S)
`Request for Reconsideration Signature
`Signature: /ikc/     Date: 08/01/2017
`Signatory's Name: Irene K. Chong
`Signatory's Position: Attorney of Record, California 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 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. attorney or a Canadian attorney/agent
`not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder 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 owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder'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.
`
`The applicant is filing a Notice of Appeal in conjunction with this Request for Reconsideration.
`
`Serial Number: 86868731
`Internet Transmission Date: Tue Aug 01 13:00:27 EDT 2017
`TEAS Stamp: USPTO/RFR-XXX.XXX.XXX.XXX-20170801130027
`905773-86868731-5106c18d9374a5fddfb68ecd
`c9bd41145f1b522d3acd3975caebe93ee86261a3
`-N/A-N/A-20170801125152430049
`
`        
`

`

`LIVE PHOTOS office action response (SN 86868731 I
`
`This responds to the final office action dated February 1, 2017 maintaining the
`examining attorney’s refusal to register LIVE PHOTOS on the grounds that the mark is
`likely to be confused with the registered mark HP LIVE PHOTO owned by HP Hewlett-
`Packard Group LLC (“HP”).
`
`In response to the original refusal, Apple submitted a consent from HP. The examining
`attorney declined to withdraw the refusal on the grounds that HP’s consent neither “(1)
`sets forth reasons why the parties believe there is no likelihood of confusion, nor (2)
`describes the arrangements undertaken by the parties to avoid confusing the
`public." The examining attorney also noted that Apple had not signed the consent, even
`though Apple was submitting it.
`
`Although Apple believes that the initial consent was sufficient, it submits with this
`response a new, more detailed consent, which addresses and fulfills both requirements
`(1) and (2), and which includes both parties' signatures. In light of this new, more
`detailed consent, Apple respectfully requests that the examining attorney withdraw the
`Section 2(d) refusal to register and approve the LIVE PHOTOS application for
`registration.
`
`

`

`Consent to Trademark Registration
`
`HP HEWLETT-PACKARD GROUP LLC, a Delaware limited liability company with an address at
`11445 Compaq Center Drive West, Houston. Texas 77070 USA (“HP”), is the owner of US.
`trademark registration No. 4452467 of HP LIVE PHOTO (the “HP Mark”).
`
`APPLE iNC., a California corporation with an address at 1 Infinite Loop, Cupertino, California
`95014 USA (“Apple”), has used the mark LEVE PHOTOS (the “Appie Mark") since September
`2015 in connection with computer software for recording and displaying images, video, and
`sound, and the US, Patent and Trademark Office has refused Apple’s US. application SN
`86/868,731 for such goods (the “Application"), citing the HP Mark.
`
`HP and Apple acknowledge and agree that they have encountered no confusion since Apple
`began using the Apple Mark in September 2015, and that confusion is unlikely to occur between
`their respective marks because of the presence of the HP house mark in HP’s mark, and the
`differences in their respective goods and trade channels. Apple‘s software is provided to users
`as part of Apple’s proprietary iOS operating software on Apple’s iPhone and iPad mobile
`devices, and allows the user to transform a still photograph into a brief video that includes the
`momentsjust before and after the photo was taken. HP acknowledges that its software has
`different functionality, is not provided as part of any operating system, and is not available to
`iPhone or iPad users on Apple’s App Store or on other app markets. Although HP and Apple
`have not encountered any confusion in the nearly two years that Apple has been using the
`Apple Mark, in the event that confusion occurs in the future, they have agreed to confer in good
`faith and address that confusion.
`
`HP has agreed to the worldwide use and registration of the Apple Mark by Apple and its
`affiliates, licensees, successors, and assigns, and hereby agrees and consents to the US.
`registration of the Apple Mark by Apple for computer software.
`
`Dated July 312017
`
`HP HEWLETT—PACKARD GROUP LLC .2
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