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 07/31/2017)

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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 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 87080540 VOXX (Stylized and/or with Design, see http://uspto.report/TM/87080540/mark.png) has been amended as follows:

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

REMARKS Section 2(d) Refusal - Likelihood of Confusion The Examining Attorney has issued a refusal of registration under Trademark Act Section 2(d) citing the mark "VOX" in stylized format which is the subject of U.S. Registration No. 4,990,791 owned by VOX S.p.a. for "Audio-video receivers, apparatus for recording, transmission or reproduction of sound, radios, radio receivers, sound transmitting apparatus, telegraphic transmitting apparatus, transmitting apparatus for radio and television broadcasting and for long-distance transmission, computer software for wireless content delivery, computer software that provides web-based access to applications and services through a web operating system or portal interface, downloadable mobile applications for wireless communication, software defined radio, software for broadcasting of audio content, all the foregoing excluding musical instruments and musical instruments accessories? in International Class 9 (the "Cited Mark"). In any likelihood of confusion analysis, two key, although not exclusive, considerations are the similarities between the marks and the similarities between the goods and/or services. See, Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). For at least the reasons set forth below, Applicant respectfully submits that there is no likelihood of confusion between Applicant's VOXX & Design mark ("Applicant?s Mark") and the Cited Mark and respectfully requests that the Examining Attorney reconsider and withdraw the Section 2(d) refusal. Applicant's Mark Creates A Different Overall Commercial Impression From That of the Cited Mark It is axiomatic that marks must be evaluated in their entireties when considering similarities in appearance, sound and meaning. While similarity as to any one of the elements of sound, appearance or meaning may be sufficient to find confusing similarity, Applicant notes that the Trademark Trial and Appeal Board has held that "trademark law is not inflexible, and there is no hard and fast rule that likelihood of confusion must automatically be found to exist if there is similarity in any one of the three elements." In re Software Design, Inc., 220 USPQ 662 (TTAB 1983). As a threshold matter, the likelihood of confusion analysis rests upon a comparison of the marks in their entireties as they would be encountered by consumers in the marketplace. A side-by-side comparison is therefore improper keeping in mind that the emphasis must be on the recollection of the average consumer who normally retains a general, rather than specific, impression of the trademarks. Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). It follows that a likelihood of confusion determination cannot be predicated upon dissection of the marks. While it is permissible to afford more or less weight to any given feature of a mark in reaching a determination on the issue of likelihood of confusion, the ultimate conclusion rests upon consideration of the marks in their entireties. In re National Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749 (Fed. Cir. 1985). While disclaimed matter is typically given less significance, "it is well settled that the disclaimed material still forms a part of the mark and cannot be ignored" Giant Food, Inc. v. Nation?s Foodservice, Inc., 710 F.2d 1565 (Fed. Cir. 1983). Applicant respectfully submits that consideration of the respective marks in their entireties in the instant case supports a finding of no likelihood of confusion in light of the readily distinguishable differences in appearance, sound and meaning of the respective marks. In the instant case, it is of course without dispute that both Applicant?s Mark and the Cited Mark each contain the letters VOX. Applicant respectfully submits that this is where the similarities between the respective marks end and, given consideration of the marks in their entireties and the conditions under which they are used, the respective marks are not confusingly similar in appearance, sound and meaning. Against this background, Applicant's VOXX & Design mark is distinguishable visually from the Cited Mark. Applicant?s Mark appears in the following stylized format: This stylization renders Applicant?s Mark visually dissimilar from the Cited Mark given the globe design; the distinguishable font, stark color differentiation between the "VOX" and second "X" which trials off of the edge of the globe design - resulting in a striking visual effect. In contrast, the Cited Mark is claimed in an entirely distinct, stylized and elongated font, appearing in all blue lettering: The registrant of the Cited Mark claims the color blue as part of the mark. Unlike Applicant's Mark, the letters "ox" appear in a considerably smaller and different font compared to the "V" in the Cited Mark. The Applicant?s Mark also conveys an entirely different meaning or connotation compared to the Cited Mark. In this regard, the VOXX element of Applicant's Mark is derived from Applicant's well-known AUDIOVOX house mark owned by Applicant. Applicant?s has used the AUDIOVOX mark for fifty (50) years on and in connection with various consumer electronics products and accessories. Voxx International Corporation is the owner of U.S. Trademark Registration Nos. 1,234,338; 1,432,756 and 3,274,427 covering the mark AUDIOVOX. On or about December 1, 2011, Audiovox Corporation changed its name to Voxx International Corporation to signify its expanding and international interests. Voxx's stock has traded under the ticker symbol "VOXX" since Voxx's Initial Public Offering in or about 1987. Applicant through its wholly-owned subsidiary also owns U.S. Registration Nos. 4,773,732 and 4,773,731 for the marks VOXXHIRSCHMANN and VOXXHIRSCHMANN CORPORATION (Stylized) issued July 14, 2015 and filed prior to the filing of the application for the Cited Mark. Applicant's Mark has significant meaning and recognition as part of the family of AUDIOVOX and VOXX marks and connotes the rich history associated with Applicant and its global reach. The Cited Mark in contrast, to the extent that it has any meaning, is devoid of any such meaning or significance and does not have the overall look and feel of Applicant?s Mark which Applicant has used in other formatives and in connection with other goods for over fifty (50) years. Given the overall differences in appearance, sound and meaning between the respective marks, the Applicant's Mark and the Cited Mark create entirely different overall commercial impressions. As such, Applicant's Mark is not likely to be confused with the Cited Mark for the goods and services covered by the Cited Mark based upon Applicant's present understanding. Comparison of the Goods and Services Initially, Applicant notes that the mere fact that the respective goods involve audio products generally is not dispositive of issue of likelihood of confusion and Applicant?s disagrees with the Examining Attorney's characterization of its goods. In this regard, there is no rule that certain goods or services are per se related, such that there must be a likelihood of confusion from the use of similar marks in relation thereto. See, TMEP ? 1207.01(a)(iv). In addition, it is well settled that likelihood of confusion must be established on sound, viable, grounds rather than on supposition and surmise. As the Court stated in Witco Chemical Co. v. Whitfield Chemical Co., 164 USPQ 43 (CCPA 1969): "We are not concerned with the mere theoretical possibilities of confusion deception, or mistake or with de minimus situations, but with the practicalities of the commercial world with which trademark laws deal." Moreover, the issue of whether or not two products are related does not revolve around the question of whether a term can be used that describes them both, or whether both can be classified under the same general category. Electronic Data Systems Corporation v. EDSA Micro Corporation, 23 USPQ 2d 1460 (TTAB 1992). In the instant case, Applicant respectfully submits that its goods are readily distinguishable from the indefinite goods covered by the Cited Mark given the overall differences in the commercial impression engendered by Applicant's Mark discussed above and the concomitant manner in which Applicant's goods are marketed. Applicant's goods consist of automotive mobile video products and collision avoidance systems which are marketed either directly to consumers or to retailers, original equipment manufacturers and/or the automotive aftermarket for ultimate resale to end-users. A cursory review of registrant's website indicates that the registrant uses the Cited Mark in connection with the rental of tour guide systems for guided group tours. It appears that the registrant offers its goods to tour guides and tour operators and that the goods offered under the Cited Mark even if sold, would not be sold to consumers. See, http://www.voxtours.com/ The Examiner has summarily concluded that the Applicant's goods are basically encompassed by the indefinite and overbroad description of goods covered by the Cited Mark. As noted above, Applicant does not offer audio or video systems for sale to tour guides and its recitation of goods does not include such products. The evidence submitted by the Examining Attorney does not satisfy the burden of making a prima facie showing that the Applicant's goods are related to the goods offered by the registrant under the Cited Mark. The mere fact alone fact that Applicant's goods and the goods covered by the Cited Mark are both generally in the audio/video field is insufficient to base a finding of likelihood of confusion. The distinction between the nature of the registrant's goods and the circumstances surrounding their marketing renders the Applicant?s goods and the goods covered by the Cited Mark unrelated for purposes of determining likelihood of confusion. Given that the applied for goods and the registrant's goods are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion is not likely. See, Coach Servs, Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1371 (Fed. Cir. 2012). In view of the foregoing, and having adequately addressed all issues raised by the Examining Attorney in the Office Action, Applicant respectfully requests that the Examining Attorney reconsider the refusal to register and that this application be approved for publication.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Back-up cameras, back-up sensors, LCD mirrors, Overhead and Headrest video monitors
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.

Proposed:
Tracked Text Description: Back-up cameras, back-up sensors, LCD mirrors, Overhead and Headrest video monitors; Back-up cameras, back-up sensors, LCD mirrors, namely, mirrors with embedded LCD monitors, Overhead and Headrest video monitorsClass 009 for Back-up cameras, back-up sensors, LCD mirrors, namely, mirrors with embedded LCD monitors, Overhead and Headrest video monitors
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.

SIGNATURE(S)
Response Signature
Signature: /larry n. Stopol/     Date: 03/03/2017
Signatory's Name: Larry N. Stopol
Signatory's Position: Attorney of record, NY/NJ 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.

        
Serial Number: 87080540
Internet Transmission Date: Fri Mar 03 17:20:24 EST 2017
TEAS Stamp: USPTO/ROA-XX.XX.XX.XXX-20170303172024749
134-87080540-580d77ad87bd4eb6c9c8f10da92
86b9dde4be17a28970eecaa783455e6963d58-N/
A-N/A-20170303170558582035