TEAS Petition to Revive Abandon Applic

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 2194 (Rev 03/2012)

OMB No. 0651-0054 (Exp 12/31/2020)

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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 2194 (Rev 03/2012)

OMB No. 0651-0054 (Exp 12/31/2020)

Petition To Revive Abandoned Application - Failure To Respond Timely To Office Action

To the Commissioner for Trademarks:

Application serial no. 88131294 TRANSIT(Standard Characters, see http://uspto.report/TM/88131294/mark.png) has been amended as follows: PETITION NOTICE OF APPEAL OR PETITION TO DIRECTOR
I elect not to file a notice of appeal with the Trademark Trial and Appeal Board or petition to Director. I understand that additional time to file either an appeal or petition to the Director will not be provided. Failure to file an appeal may result in my application being abandoned for an incomplete response even if this petition is granted.
Petition Statement
Applicant has firsthand knowledge that the failure to respond to the Office Action by the specified deadline was unintentional, and requests the USPTO to revive the abandoned application.RESPONSE TO OFFICE ACTION

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

Petition To Revive Abandoned Application - Failure To Respond Timely To Final Office Action To the Commissioner for Trademarks: MARK: TRANSIT SERIAL NUMBER: 88131294 Applicant: Peavey Electronics Corporation Examining Attorney: Jeffrey Sjogren PETITION Applicant has firsthand knowledge that the failure to respond to the Office Action by the specified deadline was unintentional and requests the USPTO to revive the abandoned application. This application was unintentionally abandoned for not submitting a response requesting reconsideration to the final office action issued by the Examining Attorney. RESPONSE TO FINAL OFFICE ACTION Likelihood of Confusion This letter hereby serves as a response to the Office Action, dated August 5, 2019, regarding the application for the mark ?TRANSIT? in international class 9 (?Applicant?s Mark?). In the Office Action, the Examining Attorney issued a Section 2(d) Refusal for Likelihood of Confusion between Applicant?s Mark and the U.S. Registration No. 4534609. Applicant respectfully requests the refusal of Applicant?s Mark to be reconsidered because consumers are not likely to be confused by Applicant?s Mark and Registrant?s mark and the Goods of Applicants Mark are readily distinguishable from Registrants Mark in function and consumer use. In light of the following, and the below requested amendment to the Application, it is respectfully requested that the Examining Attorney reconsiders the final action pursuant to TBMP 715.02 and that the Applicant?s Mark be allowed to proceed to registration. A mark may be likely to cause confusion where, when used in commerce, it ?so resembles a registered mark ?as to be likely, when used on or in connection with the goods [or services] of the applicant, to cause confusion, or to cause mistake, or to deceive.?? Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 1356 (Fed. Cir. 2000) (quoting from 15 U.S.C. ? 1052(d) (1994)). In determining ?Likelihood of Confusion,? the Examining Attorney and courts agree that the factors set forth in In re E. I. duPont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973) must be applied on a case by case basis. In re i.am.symbolic, llc, 866 F.3d 1315, 1322 (Fed. Cir. 2017). The question is not whether the goods or services are likely to be confused themselves, but rather if a ?likelihood of confusion? exists as to the source of said goods or services because of the marks. In re Rexel, Inc., 233 U.S.P.Q. 830, 831 (T.T.A.B. 1984). Here, the Examining Attorney notes that the most important factors in du Pont are (1) similarity of the marks and (2) similarity or relatedness of the goods. See In re E. I. duPont de Nemours & Co., 476 F.2d at 1362. Here, Applicant submits that the marks while identical in sound and appearance, will not be confused due to the second controlling factor in du Pont. Applicant argues that the classification of goods of Applicant?s Mark and Registrant?s Mark are neither the same, nor similar. While the goods do exist in the overall realm of music, the goods themselves sit in an entirely different spectrum of function. Applicant further contends that the below amendment to the identification of goods alleviates any remote or potential of likelihood of confusion, as raised by the Examining Attorney. Plainly, Applicant?s ?preamplifiers for musical instruments? are not sought by the same consumers that are purchasing ?loud speakers, portable loud speakers, wireless loud speakers, and portable loud speakers with microphones,? as consumers of the Registrant?s goods. Registrant?s goods, as they appear in commerce, are used specifically for the playback of music; they are Bluetooth speakers that have certain attachments to make them portable. See Exhibit A and See also http://www.youtube.com/watch?v=vPUWKrt_gdM. Evidently, this product has no ability to have a musical instrument, such as a guitar or bass, plug into it to and Registrant?s goods cannot function as a preamplifier or effects pedal. On the other hand, Applicant?s goods are solely designed to be a preamplifier and effects pedal for use in connection with a musical instrument, specifically guitar and/or bass. See attached hereto as Exhibit B. First and foremost, unlike Registrant?s good, Applicant?s goods are not speakers, nor contain a speaker, they cannot emit any sound. The Applicant?s goods are a preamplifier used on the floor of the stage with effects which allow the player of a guitar or bass, in one built-in unit to tune their instrument by using the product as an electronic tuner and to adjust effects such as compression, notch filter, pre-shape, boost, chorus, delay and reverb among other simple equalizer controls. Thus the process is that a guitar or bass first must plug into the Applicant?s goods, the sound is then adjusted with the Applicant?s goods, and then the consumer has the option of outputting the sound via a headphone jack for practice or and XLR balanced, or dry output (raw sound) to some form of speaker, PA, or amplifier. Here is a video that shows exactly what this product does: http://www.youtube.com/watch? v=Dgwj5QfPlXc . To recap, the consumers of Registrant?s goods are those listening to prerecorded music, by a Bluetooth or RCA output capable audio source, while the consumers of Applicant?s goods are those who are specifically playing an electrical music instrument. Applicant?s goods specifically do not contain speakers, and do not have the capability of playback of prerecorded audio like the Registrant?s Bluetooth speakers. There will be no consumer confusion, as Applicant?s Mark does not pertain to speakers or playback devices of music of any kind, while Registrant?s Mark only pertains to speakers and playback devices. Therefore, to further eliminate the potential for any consumer confusion, the Applicant hereby amends the application as follows: Amendment of Identification of Goods: ORIGINAL: Class 009: Musical instrument electrical amplifiers and preamplifiers. NEW: Class 009: Preamplifiers for musical instruments. Conclusion Applicant requests that the USPTO revive Applicant?s abandoned application due to the unintentional nature of the failure to respond to the Official USPTO Office Action. Likewise, the Applicant requests that the USPTO reconsider its Final Office Action based on the amendment to the application and the fact that there is no likelihood of confusion because there is no similarity or relatedness of the goods in question as explained in detail above. The Applicant respectfully requests that the Examining allow the application for Serial Number 88131294 for ?TRANSIT? in international class 009 to proceed toward registration on the Principal Register. Respectfully Submitted by: /Ronald S. Bienstock/ . Ronald S. Bienstock, Esq. Attorney of Record, New Jersey bar member Scarinci & Hollenbeck, LLC 1100 Valley Brook Avenue, P.O. Box 790 Lyndhurst, NJ 07071  

EVIDENCE
Evidence has been attached: A PDF copy of the response to the final office action as submitted in the Arguments section above and a PDF copy of Exhibits A-B.
Original PDF file:
evi_6725071134-2020032522 2639073020_._Transit_I.pdf
Converted PDF file(s) ( 3 pages) Evidence-1Evidence-2Evidence-3
Original PDF file:
evi_6725071134-2020032522 2639073020_._transit_ex_A.pdf
Converted PDF file(s) ( 1 page) Evidence-1
Original PDF file:
evi_1-6725071134-20200325 222639073020_._transit_ex _b.pdf
Converted PDF file(s) ( 1 page) Evidence-1

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Musical Instrument electrical amplifiers and preamplifiers
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 01/00/2017 and first used in commerce at least as early as 01/00/2017 , and is now in use in such commerce.


Proposed:

Tracked Text Description: Musical Instrument electrical amplifiers and preamplifiers; Preamplifiers for musical instrumentsClass 009 for Preamplifiers for musical instruments
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 01/00/2017 and first used in commerce at least as early as 01/00/2017 , and is now in use in such commerce.
OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Peavey Electronics Corporation, a corporation of Delaware, having an address of
      5022 Hartley Peavey Drive
      Meridian, Mississippi 39305
      United States

Proposed: Peavey Electronics Corporation, a corporation of Delaware, having an address of
      5022 Hartley Peavey Drive
      Meridian, Mississippi 39305
      United States
      Email Address: XXXX

The owner's/holder's current attorney information: Ronald S. Bienstock, Esq.. Ronald S. Bienstock, Esq. of SCARINCI HOLLENBECK, LLC, is located at

      1100 VALLEY BROOK AVENUE, P.O. BOX 790
      LYNDHURST, New Jersey 07071
      United States
      The phone number is 201-896-4100.
      The email address is trademarks@sh-law.com

The owner's/holder's proposed attorney information: Ronald S. Bienstock, Esq.. Ronald S. Bienstock, Esq. of SCARINCI HOLLENBECK, LLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      1100 VALLEY BROOK AVENUE, P.O. BOX 790
      LYNDHURST, New Jersey 07071
      United States
The docket/reference number is 61482.0074.
      The phone number is 201-896-4100.
      The email address is trademarks@sh-law.com

Ronald S. Bienstock, Esq. 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.Correspondence Information (current):
      RONALD S. BIENSTOCK, ESQ.
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@sh-law.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED
Correspondence Information (proposed):
      Ronald S. Bienstock, Esq.
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@sh-law.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): lvarghese@sh-law.com

The docket/reference number is 61482.0074.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

FEE(S)
Fee(s) in the amount of $100 is being submitted.

SIGNATURE(S)

Signature: /Ronald S. Bienstock/      Date: 03/26/2020
Signatory's Name: Ronald S. Bienstock
Signatory's Position: Attorney of Record, New Jersey bar member
Signatory's Phone Number: 2018964100


Response Signature
Signature: /Ronald S. Bienstock/     Date: 03/26/2020
Signatory's Name: Ronald S. Bienstock
Signatory's Position: Attorney of Record, New Jersey bar member

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:    RONALD S. BIENSTOCK, ESQ.
   SCARINCI HOLLENBECK, LLC
   
   1100 VALLEY BROOK AVENUE, P.O. BOX 790
   LYNDHURST, New Jersey 07071
Mailing Address:    Ronald S. Bienstock, Esq.
   SCARINCI HOLLENBECK, LLC
   1100 VALLEY BROOK AVENUE, P.O. BOX 790
   LYNDHURST, New Jersey 07071
        
RAM Sale Number: 88131294
RAM Accounting Date: 03/26/2020
        
Serial Number: 88131294
Internet Transmission Date: Thu Mar 26 16:57:00 ET 2020
TEAS Stamp: USPTO/POA-XXXX:XXXX:XXXX:XXXX:XXXX:XXXX:
XXXX:XXXX-20200326165700837095-88131294-
7105191d3659591cadd29b66619a5f4e19af148c
fd20f666e6c767fe2f05a-DA-57004293-202003
26165454071003