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)

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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 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. 88332053 STUDEBAKER (Stylized and/or with Design, see http://uspto.report/TM/88332053/mark.png) has been amended as follows:
PENDING SERIAL NUMBER(S)
Serial number(s) 88/067,376 should not be used as a citation(s) under Section 2(d), in the event that said serial number(s) mature(s) into a registration(s). The applicant hereby requests removal of this application from suspension, based on the following arguments. If the examining attorney is not persuaded by these arguments, the applicant hereby requests that this application be returned to suspended status, awaiting ultimate disposition of the referenced serial number(s).

ARGUMENT(S)

Likelihood of Confusion

 

The examining attorney has refused registration under Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d), citing the following trademark registration as an obstacle to registration:

 

U.S. Reg. No. 3,509,858 (STUDEBAKER)

 

The examining attorney has concluded that Applicant’s mark, when used in connection with the identified goods and services is likely to cause confusion among consumers.  In light of the evidence, amendments, and arguments discussed below, Applicant requests that the examining attorney withdraw and the refusal to register and approve this mark for publication.

 

The examining attorney also noted prior-pending application serial no. 88/067,376 as a potential obstacle to registration and suspended prosecution pending the disposition of the prior-filed application.

 

The determination of likelihood of confusion turns primarily on the similarity of the marks in question and the degree to which the identified goods are related.  In re E.I. Dupont de Nemours & Co., 177 USPQ 563 (CCPA 1973); In re August Storck KG, 218 USPQ 823 (TTAB 1983); Federated Foods, Inc. v. Fort Howard Paper Co., 192 USPQ 24 (CCPA 1976).  In this case, Applicant has amended its application to narrow the scope of the identified goods substantially.  Accordingly the marks and the identified goods (as amended) are sufficiently different to avoid confusion. 

 

Applicant does not contest that its mark is identical to the marks in the cited registration and prior-filed application; however, the inquiry does not end with the similarity of the marks.  Confusion as to source is unlikely unless the goods or services of the applicant and the registrant are so related that the circumstances surrounding their marketing are such that they are likely to be encountered by the same persons under circumstances that would give rise to the mistaken belief that they originate from the same source. See, e.g., On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000).

 

In this case, Applicant has deleted all goods related to the general fields of electronics and computers. The remainder of the application is limited to optical goods (glasses, sunglasses etc.) that are sufficiently distinct from the goods in the prior STUDEBAKER trademarks so that confusion is unlikely.

 

In view of the amended identification of goods, Applicant requests that the examining attorney remove the application from suspension, withdraw the refusal to register and prior-filed application advisory, and approve the mark 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 Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; software and software packages for mobile applications; data processing equipment; computers; fire extinguishers; computer peripheral devices, namely, screens, keyboards, computer mice, control consoles and levers, digital, optical and magnetic disk and diskette drives, digitizers, printers, modems, headsets; Telecommunications apparatus, namely, telephone and fax machines; local networks, namely, data processing equipment, integrated set-top receivers; television sets; cameras, namely, photographic cameras, digital cameras, motion picture cameras, video cameras; telephones, mobile telephones, telephones over the Internet and related accessories for the aforesaid goods, namely, headphones, microphones, batteries; battery chargers; fire and smoke detection apparatus, namely fire alarms and smoke detectors; fire extinguishers; electric locks, digital weather station instruments; videophones being electric monitoring apparatus; intercoms; video telephones; radars; protective plug for electric apparatus; remote control, radio control receivers; electric or electronic apparatus and instruments for processing, storage, transmission, dissemination and reception of data relating to the automation and management of the home and home equipment; computer interfaces for home automation applications; mobile software and applications for operating a connected electronic apparatus for use in the fields of connected health, sports and well-being and home automation; mobile software and applications for monitoring and security in the home, control and monitoring of electronic, electric apparatus and electric household appliances, for household energy management, remote control and management of apparatus for health and personal well-being; apparatus and sensors for monitoring, control and remote control of electric, electronic and household apparatus; electric sensors; connected sensors, namely, electric sensors for connected well-being and apparatus; connected bracelets and spectacles, namely, smart watches and glasses; thermometers not for medical use; connected thermometers not for medical purposes; connected scales; apparatus and instruments, particularly modular, for the supply of low or medium voltage electricity, conducting, distribution, switching, transformation, accumulation, regulation or control of low or medium voltage electricity; electric switches, relays, programmers and thermostats; load controllers, namely, weighing apparatus; light dimmers; plugs, sockets; electric conductors, particularly wires, cables, rails and buses; transformers; inverters; electrical terminal blocks; electrical connection boxes; terminals, namely, electrical terminators; circuit breakers; breakers, circuit breakers, switches, isolating switches; sunglasses, spectacles, fashion spectacles, protective goggles and masks for the eyes and for sporting activities; spectacle lenses, spectacle holders, spectacle frames, spectacle cases and holders; spectacle chains; contact lenses and their containers, magnifying glasses; binoculars; glass for protective masks; frames for protective masks; cases and holders for protective masks; protective supports for shoulders and elbows, for protection against accidents; protective helmets; control level regulating valves for tanks for regulating the flow of gases and liquids
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [ France registration number 4414826 registered 06/15/2018 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.

Proposed:
Tracked Text Description: Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Connected bracelets and spectacles, namely, smart watches and glasses; software and software packages for mobile applications; sunglasses, spectacles, fashion spectacles, protective goggles and masks for the eyes and for sporting activities; data processing equipment; spectacle lenses, spectacle holders, spectacle frames, spectacle cases and holders; computers; spectacle chains; fire extinguishers; contact lenses and their containers, magnifying glasses; computer peripheral devices, namely, screens, keyboards, computer mice, control consoles and levers, digital, optical and magnetic disk and diskette drives, digitizers, printers, modems, headsets; binoculars; Telecommunications apparatus, namely, telephone and fax machines; glass for protective masks; local networks, namely, data processing equipment, integrated set-top receivers; frames for protective masks; television sets; cases and holders for protective masks; cameras, namely, photographic cameras, digital cameras, motion picture cameras, video cameras; protective supports for shoulders and elbows, for protection against accidents; telephones, mobile telephones, telephones over the Internet and related accessories for the aforesaid goods, namely, headphones, microphones, batteries; protective helmets; battery chargers; fire and smoke detection apparatus, namely fire alarms and smoke detectors; fire extinguishers; electric locks, digital weather station instruments; videophones being electric monitoring apparatus; intercoms; video telephones; radars; protective plug for electric apparatus; remote control, radio control receivers; electric or electronic apparatus and instruments for processing, storage, transmission, dissemination and reception of data relating to the automation and management of the home and home equipment; computer interfaces for home automation applications; mobile software and applications for operating a connected electronic apparatus for use in the fields of connected health, sports and well-being and home automation; mobile software and applications for monitoring and security in the home, control and monitoring of electronic, electric apparatus and electric household appliances, for household energy management, remote control and management of apparatus for health and personal well-being; apparatus and sensors for monitoring, control and remote control of electric, electronic and household apparatus; electric sensors; connected sensors, namely, electric sensors for connected well-being and apparatus; thermometers not for medical use; connected thermometers not for medical purposes; connected scales; apparatus and instruments, particularly modular, for the supply of low or medium voltage electricity, conducting, distribution, switching, transformation, accumulation, regulation or control of low or medium voltage electricity; electric switches, relays, programmers and thermostats; load controllers, namely, weighing apparatus; light dimmers; plugs, sockets; electric conductors, particularly wires, cables, rails and buses; transformers; inverters; electrical terminal blocks; electrical connection boxes; terminals, namely, electrical terminators; circuit breakers; breakers, circuit breakers, switches, isolating switches; control level regulating valves for tanks for regulating the flow of gases and liquidsClass 009 for Connected bracelets and spectacles, namely, smart watches and glasses; sunglasses, spectacles, fashion spectacles, protective goggles and masks for the eyes and for sporting activities; spectacle lenses, spectacle holders, spectacle frames, spectacle cases and holders; spectacle chains; contact lenses and their containers, magnifying glasses; binoculars; glass for protective masks; frames for protective masks; cases and holders for protective masks; protective supports for shoulders and elbows, for protection against accidents; protective helmets
Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and will submit a copy of [ France registration number 4414826 registered 06/15/2018 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate, before the application may proceed to registration. 15 U.S.C. Section 1126(e), as amended.


The applicant hereby appoints Andy I. Corea. Other appointed attorneys are John H. Mutchler, Elizabeth A. Galletta, Anthony P. Gangemi, Richard J. Basile, and Benjamin C. White. Andy I. Corea of Murtha Cullina, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      265 Church Street
      New Haven, Connecticut 06510
      United States
to submit this Response to Suspension Inquiry or Letter of Suspension on behalf of the applicant.
The docket/reference number is 006950-0024.

The phone number is 203-772-7700.

The fax number is 203-772-7723.

The email address is ipdocketing@murthalaw.com

Andy I. Corea 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: DATA ACCESS. DATA ACCESS of DATA ACCESS, is located at

      57 RUE D AMSTERDAM
      PARIS,
      FR

The phone number is +33-951758379.

The fax number is +33-956758379.

The email address is julien@brand-access.com; julien@aristide.fr

The applicants proposed correspondence information: Andy I. Corea. Andy I. Corea of Murtha Cullina, is located at

      265 Church Street
      New Haven, Connecticut 06510
      United States
The docket/reference number is 006950-0024.

The phone number is 203-772-7700.

The fax number is 203-772-7723.

The email address is ipdocketing@murthalaw.com

Response Suspension Inquiry Signature
Signature: /AIC/     Date: 09/05/2019
Signatory's Name: Andy I. Corea
Signatory's Position: Attorney of Record
Signatory's Phone Number: 203-772-7739

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:    DATA ACCESS
   DATA ACCESS
   
   57 RUE D AMSTERDAM
   PARIS,
Mailing Address:    Andy I. Corea
   Murtha Cullina
   265 Church Street
   New Haven, Connecticut 06510
        
Serial Number: 88332053
Internet Transmission Date: Thu Sep 05 14:57:41 EDT 2019
TEAS Stamp: USPTO/RSI-XX.XXX.XX.XX-20190905145741912
106-88332053-6107bc1854145c075c3b5a1219e
aa753317c575c3709fc63e8232d868b634e045ae
-N/A-N/A-20190905130123994744