To: | Voxx International Corporation (dcamelo@levystopol.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85840197 - INSITE - N/A |
Sent: | 1/17/2014 5:37:48 PM |
Sent As: | ECOM106@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 85840197
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CORRESPONDENT ADDRESS: DIANNE M. CAMELO LEVY, STOPOL & CAMELO, LLP 1425 RXR PLZ |
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/trademarks/index.jsp
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APPLICANT: Voxx International Corporation
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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SUSPENSION NOTICE: NO RESPONSE NEEDED
ISSUE/MAILING DATE: 1/17/2014
The trademark examining attorney is suspending action on the application for the reason(s) stated below. See 37 C.F.R. §2.67; TMEP §§716 et seq.
The USPTO will periodically conduct a status check of the application to determine whether suspension remains appropriate, and the trademark examining attorney will issue as needed an inquiry letter to applicant regarding the status of the matter on which suspension is based. TMEP §§716.04, 716.05. Applicant will be notified when suspension is no longer appropriate. See TMEP §716.04.
No response to this notice is necessary; however, if applicant wants to respond, applicant should use the “Response to Suspension Inquiry or Letter of Suspension” form online at http://teasroa.gov.uspto.report/rsi/rsi.
PENDING CIVIL PROCEEDING(S): The pending civil proceeding(s) below pertains to (1) a registered mark that conflicts with applicant’s mark under Trademark Act Section 2(d), (2) a mark in a pending application(s) that could conflict with applicant’s mark under Section 2(d) if it registers, and/or (3) the registrability of applicant’s mark. See 15 U.S.C. §1052; 37 C.F.R. §2.83; TMEP §§716.02(a), (c)-(d), 1208 et seq. Because the civil proceeding(s) pertains to an issue that could directly affect whether applicant’s mark can be registered, action on this application is suspended pending termination of the civil proceeding(s). See 37 C.F.R. §2.67; TMEP §§716.02(a), (c)-(d).
- Cancellation No(s). 92057763 regarding U.S. Registration No. 3769339 for the mark INSITE.
REFUSAL(S)/REQUIREMENT(S) CONTINUED AND MAINTAINED: The following refusal(s)/requirement(s) is/are continued and maintained:
The Section 2(d) refusal based on U.S. Registration No. 1061149 is maintained. Applicant’s arguments have been considered and found unpersuasive for the reason(s) set forth below.
The marks are essentially phonetic equivalents and thus sound similar. Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).
The Trademark Trial and Appeal Board has held that where a registrant’s goods are broadly identified as computer programs recorded on magnetic disks, without any limitation as to the kind of programs or the field of use, it is necessary to assume that the registrant’s goods encompass all such computer programs, and that they would travel in the same channels of trade normal for those goods and be available to all classes of prospective purchasers for those goods. See In re N.A.D. Inc., 57 USPQ2d 1872 (TTAB 2000) (finding that when registrant’s goods do not include a limitation as to the kind of programs or field of use, software is presumed to be in the same field and even sophisticated purchasers would be confused); In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992); TMEP §1207.01(a)(iii).
Refusal Withdrawn
The Section 2(d) refusal based on U.S. Registration No. 3160953 is withdrawn.
/Leslie Richards/
Trademark Examining Attorney
Law Office 106
571-272-1256
leslie.richards@uspto.gov
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the Trademark Electronic Application System (TEAS) form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.