SCREEN3NETWORK
Serial Number 77809576
Applicant: Screen3Network LLC (“S3N”)

Response to Office Action

As further set forth herein, registration of the applied-for, standard character mark
“SCREEN3NETWORK” (Serial Number 77809576) (the “Pending Mark”) should not be
refused because there is no likelihood of confusion with the registered, stylized mark “screen3”
(Registration Number 3467400) (the “Registered Mark”), registered by Motorola, Inc.
(“Motorola”). The Pending Mark and the Registered Mark shall be collectively referred to
hereunder as the “Marks”.

A. Similarity of the Marks

Consumers are not likely to be confused as to the source of the goods and services
provided under the Pending Mark and the Registered Mark, as the Pending Mark and the
Registered Mark are not so similar that their uses would create similar commercial impressions
and consumers are not likely to be confused as to the source of the goods and services provided
under the Marks. The foregoing is supported by the following reasons:

1. Similarity of the Marks. While the Pending Mark and the Registered Mark may
appear similar when taken out of context, the Marks are very different when analyzed as they are
(and will be) used in the marketplace. In analyzing the similarity of the Marks, “[t]he comparison
should be made in light of what occurs in the marketplace,” taking into account the
“circumstances surrounding the purchase of the goods.” Walt Disney Productions v. Air Pirates,
581 F.2d 751, 759 (9th Cir. 1978); see also Alpha Industries, Inc. v. Alpha Steel Tube & Shapes,
Inc., 616 F.2d 440, 444 (9th Cir. 1980) (focusing on the distinctiveness of the parties’ logos).

In this case, the Registered Mark is used in conjunction with a design logo that consists
of three (3) rectangles in varying sizes, two (2) of which are darkly shaded in and one of which is
not shaded, along with the phrase “screen3” (in lowercase lettering) below the design logo. See
Exhibit A attached hereto and incorporated by reference hereunder. The design portion of the
Registered Mark is at least three times larger than the phrase “screen3” below it. See Exhibit A.
Whereas, the Pending Mark is in standard lettering, with no accompanying design or logo. See
Exhibit B attached hereto and incorporated by reference hereunder.

While marks must be compared in their entireties, one feature of a mark may be more
significant in creating commercial impression. In re Dixie Rests. Inc., 105 F.3d 1405, 1407, 41
USPQ2d 1531, 1533-34 (Fed.Cir.1997). The dominant portion of the Registered Mark is clearly
the design logo, as it is much larger in size and stature than the word portion of the Registered
Mark, which creates a completely different commercial impression from the Pending Mark.
These differences and lack of similar commercial impression will not result in any confusion
among consumers as to the source of the goods and/or services provided under each of the Marks.
Accordingly, the Marks are distinguishable.

2. Proximity and Relatedness of the Products. The goods and/or services are not so
related that there is a heightened danger of consumer confusion. The Registered Mark is used
solely in the class of multimedia software technology created for use with Motorola and other
wireless carriers to deliver news, sports, entertainment and weather to mobile phone users. The
Pending Mark, however, is seeking registration in connection with entertainment services in the
nature of creating and producing multimedia content for television, radio, print, mobile devices,
and the internet1. The invention and development of technology is completely unrelated to the
creation of entertainment content. As a result, these goods and services are neither related nor
complementary and therefore the danger of confusion among consumers is not heightened.

3. Marketing Channels. There is no evidence to suggest that the services and the use of
the Marks in connection therewith will be marketed in the same trade channels. In fact, the
Registered Mark is marketed solely in connection with Motorola2 services and products, as
evidenced by the specimen submitted by Motorola in its trademark application for the Registered
Mark that displays the Registered Mark as used in commerce. See Exhibit C attached hereto and
incorporated by reference hereunder. A consumer will never encounter the Registered Mark in
any marketing channels, unless in the context of a Motorola-based and/or telecommunications
advertisement. Further, the Registered Mark is used in connection with a particular multimedia
software technology that was created solely to provide content to mobile phones. Whereas, the
marketing for the Pending Mark will focus primarily on entertainment services in the nature of
creating and producing multimedia content in various mediums. These trade and marketing
channels will never overlap or converge.

4. Degree of Care of Average Consumer. Most consumers purchasing
telecommunications products, such as Motorola cellular phones, are of a certain financial status
with a disposable income. Moreover, individuals seeking multimedia content on their mobile
devices, over the internet, etc., are also consumers who tend to fall into the middle to upper
middle class sectors of society. As a result, these respective consumer bases pay careful attention
to the services and products they purchase and are likely to exercise more care in their purchases
and are more discriminating. As a result, these respective consumers would not be confused as to
the source of products and/or services of each of the Marks. Therefore, the consumer exercises
care in his/her purchases and would not be confused as to the source of goods.

Based on the foregoing, the Marks are not similar and therefore consumers are not likely
to be confused as to the source of the services provided under the Pending Mark and the
Registered Mark. As a result, registration of the Pending Mark should not be refused.

B. Relatedness of the Services

Not only are the Marks dissimilar as explained in Section A above, the services are not so
related that there is a heightened risk of confusion among consumers. In addition, the conditions
surrounding the marketing of the services of each of the Marks are not such that would be
encountered by the same purchasers under circumstances that would give rise to the mistaken
belief that the services come from a common source.

As further set forth under Section A, Paragraphs 2 and 3 above, the services are not so
related that there is a heightened danger of consumer confusion. The Registered Mark is used
solely in the class of software technology developed for use with cellular phones, mainly
Motorola products. Whereas, the Pending Mark is seeking registration in the class of
entertainment services in the nature of creating and producing multimedia content for television,

1
In its response to the pending office action against the Pending Mark, S3N will be clarifying the
identification of the goods and services in its application for the Pending Mark by adopting the following
identification: “Entertainment services in the nature of creation, production and post-production services of
multimedia content for television, radio, print, mobile devices, and the internet” in Class 041.
2
Motorola, Inc. is a US telecommunications company based in Illinois.

2
radio, print, internet, and mobile devices. The Registered Mark and the Pending Mark are
marketed to completely different consumers and purchasers such that one would not encounter
marketing materials of the other.

For the reasons set forth herein, the Marks are not highly similar and the services are not
substantially related. Accordingly, registration of the Pending Mark should not be refused.

3
Exhibit A

4
Exhibit B

5
Exhibit C

6