Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 85618266 STARLINK(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85618266) has been amended as follows:

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

RESPONSE TO OFFICE ACTION OF SEPTEMBER 4, 2012

Informalities

Applicant has amended its description of goods in response to the issues raised by the Examining Attorney in his office action of September 4, 2012.  This amendment clarifies the description of goods further to his helpful comments and in a manner that is amply particular.

Substantive Objections

The Examining Attorney has initially refused registration based on likelihood of confusion with U.S. Registration Nos. 2103132, 2753736, 2660480, 3777099, 3777100 and 3115658.  For the reasons set forth below, Applicant submits that there is no likelihood of confusion between its mark and those covered by the cited registrations.

Particularly in light of Applicant’s present amendment to the description of goods, Applicant submits that any previous potential for confusion between the marks is avoided.  Applicant appreciates the Examining Attorney’s detailed comments, which permitted Applicant to limit its goods from being overbroad while at the same time ensuring proper classification.

Applicant’s original description read as follows:

Class 9 - Electronic interface modules sold as an integral part of a motor land vehicle for wired and wireless interface of handheld electronic devices which include a communication function, and their parts and fittings; electronic interface modules for use in motor land vehicles for wired and wireless interface of mobile phones and handheld telecommunication devices with an automotive electric system, and their parts and fittings; telecommunication machines and apparatus for vehicles; navigational instruments for vehicles; telecommunication machines and apparatus; electronic machines, apparatus and their parts.

 

As amended, Applicant description of goods now reads as follows:

 

--Class 9:  Electronic interface modules for use in motor land vehicles for wired and wireless interface of mobile phones and handheld telecommunication devices with an automotive electric system, and their parts and fittings; telecommunication machines and apparatus for vehicles, namely, wireless electronic communication devices for remotely communicating with vehicle electric systems; and

 

--Class 12: Electronic interface modules sold as an integral part of a motor land vehicle for wired and wireless interface of handheld electronic devices which include a communication function, and their parts and fittings in class.

 

Preliminarily, it is important to consider that the field of “LINKSTAR” and “STARLINK” marks is fairly well-crowded.  When a field of marks is crowded, the inclusion of a common term may be an insufficient basis upon which to predicate a holding of likelihood of confusion because consumers are inundated with the term in the marketplace and are therefore conditioned to look for other source indicia and the goods themselves.  See, e.g, Bost Bakery, Inc. v. Roland Industries, Inc., 216 USPQ 799, 801 (TTAB 1982).  This is demonstrated here both with the number of marks cited by the examiner owned by different parties, as well as now-cancelled registrations that co-existed with the cited registrations while they lived.

Re: Reg. No. 2103132

This cited registration covers “navigational equipment, namely, radio navigation transmitters, receivers, antennas, and amplifiers, and parts and fittings therefore.

In response to the Examining Attorney’s citation of this registration, Applicant has amended its description to delete any navigational equipment and to clarify the specific goods limited by the wording telecommunication machines and apparatus.  At this point, there is no reasonable basis to consider the remaining goods as commercially related to navigational equipment.

The Examining Attorney had also stated that Applicant’s “interface modules are broadly defined and may be used in car navigation.”  Interface modules, generally, refer to the ability to connect otherwise unrelated goods together so that they can operate together.  In the automotive industry, interface modules are rather common and not necessarily related to navigation.  See the attached internet excepts for internet modules and third-party registrations.

Unless stretching the concept of Applicant’s interface modules to an extreme, Applicant respectfully submits that its modules are not directed to car navigation but instead to interfacing devices with the automobiles electronic system.  This function is distinct from a GPS transmitter, receiver or amplifier.

Re: Reg. No. 2753736

This cited registration covers “satellite telecommunications system, namely, hub equipment comprised of routers, modems, digital communications and radio equipment and antennas and computer networking terminals.”

Essentially, these goods are internet broadband equipment for computer use, including their component parts.  In computer lingo, we refer to a “hub” as basically that hardware used to link computer networks together (see the attached Internet references).  The cited registration is pertains to a variety of equipment that includes “computer networking terminals,” which highlights their inapplicability to vehicle use.

Additionally, in citing this registration, the Examining Attorney cited the previously contained description of goods in the application “electronic machines, apparatus and their parts,” which Applicant has deleted as overly broad as being undefined.

Furthermore, when considering the actual distinction between the compared goods, the overall differences in the appearances of the marks STARLINK vs. LINKSTAR does make a difference and makes the similarity even less likely.

Based on these changes, Applicant submits there is no likelihood of confusion.

Re: Reg. No. 2660480, 3777099, 3777100 and 3115658

Similarly, with regard to the remainder of citations, Applicant’s deletion of the generic wording “electronic machines, apparatus and their parts” serves to avoid any potential for confusion with those registrations.  Applicant’s goods are specifically directed to enabling communication between an automobile’s electronic system and remote or wireless devices.

Conclusion

            WHEREFORE, Applicant submits that the present objections be withdrawn and that the application be passed on to publication.

            Respectfully submitted,

 

EVIDENCE

Original PDF file:
evi_65213213194-150534621_._starlink_marks.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_65213213194-150534621_._interface_modules_3.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_65213213194-150534621_._interface_modules_4.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_65213213194-150534621_._interface_modules_5.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_65213213194-150534621_._interface_modules_6.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_65213213194-150534621_._interface_modules_7.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_1-65213213194-150534621_._interface_modules_3.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_65213213194-150534621_._hub_1.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_65213213194-150534621_._hub_2.pdf
Converted PDF file(s) ( 1 page)
Evidence-1

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Electronic interface modules sold as an integral part of a motor land vehicle for wired and wireless interface of handheld electronic devices which include a communication function, and their parts and fittings; electronic interface modules for use in motor land vehicles for wired and wireless interface of mobile phones and handheld telecommunication devices with an automotive electric system, and their parts and fittings; telecommunication machines and apparatus for vehicles; navigational instruments for vehicles; telecommunication machines and apparatus; electronic machines, apparatus and their parts
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(d), Priority based on foreign filing: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Japan application number 2012-020349 filed 03/16/2012]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Electronic interface modules sold as an integral part of a motor land vehicle for wired and wireless interface of handheld electronic devices which include a communication function, and their parts and fittings; Electronic interface modules for use in motor land vehicles for wired and wireless interface of mobile phones and handheld telecommunication devices with an automotive electric system, and their parts and fittings; telecommunication machines and apparatus for vehicles, namely, wireless electronic communication devices for remotely communicating with vehicle electric systems; telecommunication machines and apparatus for vehicles; navigational instruments for vehicles; telecommunication machines and apparatus; electronic machines, apparatus and their partsClass 009 for Electronic interface modules for use in motor land vehicles for wired and wireless interface of mobile phones and handheld telecommunication devices with an automotive electric system, and their parts and fittings; telecommunication machines and apparatus for vehicles, namely, wireless electronic communication devices for remotely communicating with vehicle electric systems
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(d), Priority based on foreign filing:For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Japan application number 2012-020349 filed 03/16/2012]. 15 U.S.C.Section 1126(d), as amended.

Applicant hereby adds the following class of goods/services to the application:
New: Class 012 for Electronic interface modules sold as an integral part of a motor land vehicle for wired and wireless interface of handheld electronic devices which include a communication function, and their parts and fittings in class
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(d), Priority based on foreign filing:For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ __________ application number __________ filed __________ ]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration. If ultimately the applicant does not rely on Section 44(e) as a basis for registration, a valid claim of priority may be retained.

FEE(S)
Fee(s) in the amount of $325 is being submitted.

SIGNATURE(S)
Declaration Signature
I hereby elect to bypass the submission of a signed declaration, because I believe a declaration is not required by the rules of practice. I understand that the examining attorney could still, upon later review, require a signed declaration.
Response Signature
Signature: /ml/     Date: 03/04/2013
Signatory's Name: Mark Lebow
Signatory's Position: Attorney of Record

Signatory's Phone Number: 703-837-9600

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.

        
RAM Sale Number: 85618266
RAM Accounting Date: 03/05/2013
        
Serial Number: 85618266
Internet Transmission Date: Mon Mar 04 15:22:57 EST 2013
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201303041522571
94848-85618266-5005b30326054901adfe6d119
404cc4bcc757239e52d23bb7b9581428343381f-
DA-2313-20130304150534621416