TEAS Response to Suspension Inquiry

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 1822 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

---

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 1822 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Suspension Inquiry or Letter of Suspension

To the Commissioner for Trademarks:

Application serial no. 88001205 ZOOM(Standard Characters, see http://uspto.report/TM/88001205/mark.png) has been amended as follows:
CANCELLATION PROCEEDING(S)
Cancellation No(s). 92070951 has/have been terminated. The applicant hereby requests removal of this application from suspension for further action by the examining attorney.
Comment(s)/Remark(s):

This is a request for removal of Application 88001205 (ZOOM) from suspension. The Examining Attorney previously suspended action on Application 88001205, pending the resolution of civil proceedings involving the cancellation of a potentially conflicting mark. As described below, such conflicting mark has now been cancelled. 

In Application 88001205, Applicant is attempting to register the mark ZOOM in connection with the services in Class 35. (Applicant also originally attempted to register the mark ZOOM in connection with goods in Class 4, but Applicant subsequently deleted Class 4 from Application 88001205.)

In the Office Action, dated October 2, 2018, the Examining Attorney cited a Section 2(d) Refusal because of a likelihood of confusion with marks in Registration No. 4610463 (ZOOMIN). 

On March 29, 2019, a Petition for Cancellation was filed regarding Registration No. 4610463 (ZOOMIN).  The Petition for Cancellation is Cancellation Proceeding No. 92070951.  On August 13, 2019, Registration No. 4610463 (ZOOMIN) was cancelled.

Applicant respectfully requests that the Examining Attorney remove Application 88001205 (ZOOM) from suspension and resume the review of Application 88001205 (ZOOM). 

Given the cancellation of Registration No. 4610463 (ZOOMIN), Applicant contends that with respect to its application for the mark ZOOM, there will no longer be a likelihood of confusion regarding services in Class 35.

The applicant's current attorney information: William H. Clendenin. Other appointed attorneys are William H. Clendenin. William H. Clendenin of STONE, LEYTON & GERSHMAN, A PROFESSIONAL CORPORATI, and the attorney(s) is located at

      SUITE 500
      7733 FORSYTH BLVD.
      ST. LOUIS, Missouri
      US

The phone number is 314-721-7011.

The fax number is 314-721-8660.

The email address is wclendenin@stoneleyton.com

The applicants proposed attorney information: William H. Clendenin. William H. Clendenin of STONE, LEYTON & GERSHMAN, A PROFESSIONAL CORPORATI, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      SUITE 500
      7733 FORSYTH BLVD.
      ST. LOUIS, Missouri 63105
      United States

The phone number is 314-721-7011.

The fax number is 314-721-8660.

The email address is wclendenin@stoneleyton.com

William H. Clendenin submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: WILLIAM H. CLENDENIN. Other appointed attorneys are William H. Clendenin. WILLIAM H. CLENDENIN of STONE, LEYTON & GERSHMAN, A PROFESSIONAL CORPORATI, and the attorney(s) is located at

      SUITE 500
      7733 FORSYTH BLVD.
      ST. LOUIS, Missouri
      US

The phone number is 314-721-7011.

The fax number is 314-721-8660.

The email address is wclendenin@stoneleyton.com

The applicants proposed correspondence information: William H. Clendenin. William H. Clendenin of STONE, LEYTON & GERSHMAN, A PROFESSIONAL CORPORATI, is located at

      SUITE 500
      7733 FORSYTH BLVD.
      ST. LOUIS, Missouri 63105
      United States

The phone number is 314-721-7011.

The fax number is 314-721-8660.

The email address is wclendenin@stoneleyton.com

Response Suspension Inquiry Signature
Signature: /William H Clendenin/     Date: 09/17/2019
Signatory's Name: William H. Clendenin
Signatory's Position: Attorney of Record
Signatory's Phone Number: (314) 721-7011

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); 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.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    WILLIAM H. CLENDENIN
   STONE, LEYTON & GERSHMAN, A PROFESSIONAL CORPORATI
   SUITE 500
   7733 FORSYTH BLVD.
   ST. LOUIS, Missouri
Mailing Address:    William H. Clendenin
   STONE, LEYTON & GERSHMAN, A PROFESSIONAL CORPORATI
   SUITE 500
   7733 FORSYTH BLVD.
   ST. LOUIS, Missouri 63105
        
Serial Number: 88001205
Internet Transmission Date: Tue Sep 17 18:04:57 EDT 2019
TEAS Stamp: USPTO/RSI-XXX.XX.XXX.XX-2019091718045774
8619-88001205-610fbb0ab426145337abaac78b
d6cf180c2fac8fdce625fb85bca2fcc5386647-N
/A-N/A-20190917175355359153