United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88540885
Mark: VOX
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Correspondence Address: 601 W. RIVERSIDE AVENUE SUITE 1400
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Applicant: Zoox, Inc.
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Reference/Docket No. Z019-2944TMU
Correspondence Email Address: |
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The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
PARTIAL SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION WITH REGARD
TO SPECIFIED GOODS
THIS PARTIAL REFUSAL APPLIES ONLY TO THE GOODS SPECIFIED THEREIN
Applicant has applied to register VOX in standard characters for:
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
Similarity of the Marks
The applicant has applied for the mark VOX. The cited marks are VOX, owned by Vox S.p.a., and AUTO-VOX and AUTOVOX owned by Shenzhen Auto-vox Technology Co.
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).
In re U.S. Registration No. 4990791
Here, the applicant’s mark, VOX, is confusingly similar to the registrant’s mark, VOX. Specifically, the marks are nearly identical.
In the present case, applicant’s mark is VOX and registrant’s mark is VOX. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are nearly identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services. Id.
Further, the design elements present in the registered mark does not sufficiently differentiate the marks. The word portions of the marks are identical in appearance, sound, connotation, and commercial impression; therefore, the addition of a design element does not obviate the similarity of the marks in this case. See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii).
Thus, because the marks are partially identical, the marks are considered similar for likelihood of confusion purposes.
In re U.S. Registration Nos. 4828154 and 5452578
Here, the applicant’s mark, VOX, is confusingly similar to the registrant’s marks, AUTO-VOX and AUTOVOX. Specifically, the marks share the term “VOX”.
Further, the additional wording in the registered marks does not sufficiently differentiate the marks. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant in relation to other wording in a mark. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).
In the present case, the attached evidence shows that the wording “AUTO” in the registered marks is merely descriptive of or generic for the registrant’s goods, as applicant’s goods are to be used on vehicles. Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the shared wording “VOX” the more dominant element of the mark.
Finally, the stylization elements present in AUTO-VOX do not sufficiently differentiate the marks. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
Thus, because the marks share the term “VOX”, the marks are considered similar for likelihood of confusion purposes.
Relatedness of the Goods and Services
The applicant’s goods at issue are “Computer software for detecting vehicle location; Computer software for detecting vehicle location in relation to surrounding objects; Computer software for detecting surrounding objects in relation to a moving vehicle; Computer software for safety and incident detection” ““Computer software that monitors and analyzes data to detect objects in an area surrounding a vehicle; Computer software for accessing GPS and motion sensor data for safety and emergency response purposes”, “Notification system software for alerting persons, animals, and other objects in the vicinity of the presence of a vehicle; Notification system software in the form of acoustic and vibrational messages”, and “Audio signaling equipment for motor vehicles for pedestrian safety and communication; Specialty audio devices, namely, audio signaling apparatus; Signaling devices, namely, pedestrian-alerting-audio apparatus; Vehicle audio and acoustic devices, namely, signaling audio system for vehicles” in Class 9.
In re U.S. Registration No. 4990791
Applicant’s goods at issue are “Audio signaling equipment for motor vehicles for pedestrian safety and communication; Specialty audio devices, namely, audio signaling apparatus; Signaling devices, namely, pedestrian-alerting-audio apparatus; Vehicle audio and acoustic devices, namely, signaling audio system for vehicles” in Class 9.
The registrant’s relevant goods are “Audio-video receivers, apparatus for recording, transmission or reproduction of sound, radios, radio receivers, sound transmitting apparatus” in Class 9.
In this case, the registration uses broad wording to describe sound transmitting apparatus, which presumably encompasses all goods of the type described, including applicant’s more narrow signaling devices, apparatus, and systems. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s goods are highly related. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
In re U.S. Registration Nos. 4828154 and 5452578
Applicant’s relevant goods are “Computer software for detecting vehicle location; Computer software for detecting vehicle location in relation to surrounding objects; Computer software for detecting surrounding objects in relation to a moving vehicle; Computer software for safety and incident detection” “Computer software that monitors and analyzes data to detect objects in an area surrounding a vehicle; Computer software for accessing GPS and motion sensor data for safety and emergency response purposes”, and “Notification system software for alerting persons, animals, and other objects in the vicinity of the presence of a vehicle; Notification system software in the form of acoustic and vibrational messages” in Class 9.
Registrant’s relevant goods are:
• Banner provides radar object detectors as well as detection software:
o http://www.bannerengineering.com/us/en/products/sensors/radar-sensors.html#all; http://www.bannerengineering.com/us/en/products/sensors/software.html
• RealTrac provides radar object detectors as well as detection software:
o http://real-trac.com/en/system/realtrac-cas/
• Protran Technology provides radar object detectors as well as detection software:
o http://protrantechnology.com/rail/safety/collision-avoidance
Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Accordingly, because the marks are significantly similar and the goods are highly related, purchasers are likely to be confused as to the source of the goods. Thus, registration is refused pursuant to Section 2(d) of the Trademark Act.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration. Applicant should note the following advisory.
ADVISORY: PARTIAL REFUSAL RESPONSE OPTIONS
(1) Deleting the goods to which the refusal pertains;
(2) Filing a request to divide out the goods that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).; or
(3) Amending the basis for the goods identified in the refusal, if appropriate. TMEP §806.03(h). (The basis cannot be changed for applications filed under Trademark Act Section 66(a). TMEP §1904.01(a).)
Applicant should note the following advisory.
ADVISORY: PRIOR-FILED APPLICATIONS
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Applicant must address the following requirements.
CLASSIFICATION AND IDENTIFICATION OF GOODS AND SERVICES
The identification of goods and services in Classes 9 and 39 is indefinite and/or overbroad and must be clarified or reclassified to ensure proper analysis.
The wording “Audio signaling equipment for motor vehicles for pedestrian safety and communication; Specialty audio devices, namely, audio signaling apparatus; Signaling devices, namely, pedestrian-alerting-audio apparatus” in the identification of goods is indefinite and must more specifically identify the equipment or devices provided, as set forth below. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant must clarify the goods by (1) describing the nature, purpose, or use of the system; and (2) listing the system’s parts or components, using common generic terms and referencing the primary parts or components of the system first. See 37 C.F.R. §2.32(a)(6); TMEP §§1401.05(d), 1402.01, 1402.03(a).
In Class 39, the wording “Travel assistance services, namely, providing information about vehicle location for people in transit” in the identification of goods is indefinite and must specify the nature of the information provided, as set forth below. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant may adopt the following suggestions, if accurate:
009: Downloadable computer software for detecting vehicle location; Downloadable computer software for detecting vehicle location in relation to surrounding objects; Downloadable computer software for detecting surrounding objects in relation to a moving vehicle; Downloadable computer software for safety and incident detection; Downloadable computer software for emergency assistance; Downloadable computer software that enables a vehicle to communicate with persons and objects in the vicinity of the vehicle; Downloadable computer software that monitors and analyzes data to detect objects in an area surrounding a vehicle; Downloadable computer software for accessing GPS and motion sensor data for safety and emergency response purposes; Downloadable emergency notification system software; Downloadable emergency notification system software for providing alerts, push-notifications, and other remote notifications to users; Downloadable emergency notification system software for accessing a communication network and allowing audio and data communication between users and emergency and support responders; Downloadable notification system software for alerting persons, animals, and other objects in the vicinity of the presence of a vehicle; Downloadable notification system software that provides acoustic and vibrational messages; Audio signaling equipment for motor vehicles for pedestrian safety and communication, namely, {specify equipment, e.g., speakers, amplifiers, speaker housings, etc.}; Specialty audio devices for signaling, namely, {specify devices, e.g., speakers, amplifiers, speaker housings, etc.}; Signaling devices, namely, pedestrian-alerting-audio apparatus in the nature of {specify apparatus, e.g., speakers, amplifiers, speaker housings, etc.}; Vehicle audio and acoustic devices, namely, signaling audio system consisting of {specify components, e.g., speakers, amplifiers, speaker housings, etc.} for vehicles
039: Transport by land; Transportation of passengers by motorized vehicle; Transportation of goods by motorized vehicle; Transportation of passengers by vehicle through a network of transportation providers; Transportation of goods by vehicle through a network of transportation providers; Travel assistance services, namely, providing travel information about vehicle location for people in transit
042: Providing temporary use of non-downloadable computer software for detecting vehicle location; Providing temporary use of non-downloadable computer software for detecting vehicle location in relation to surrounding objects; Providing temporary use of non-downloadable computer software for detecting surrounding objects in relation to a moving vehicle; Providing temporary use of non-downloadable computer software for safety and incident detection; Providing temporary use of non-downloadable computer software for emergency assistance; Providing temporary use of non-downloadable computer software that enables a vehicle to communicate with persons and objects in the vicinity of the vehicle; Providing temporary use of non-downloadable computer software that monitors and analyzes data to detect objects in an area surrounding a vehicle; Providing temporary use of non-downloadable computer software for accessing GPS and motion sensor data for safety and emergency response purposes; Providing temporary use of non-downloadable emergency notification system software; Providing temporary use of non-downloadable emergency notification system software for providing alerts, push-notifications, and other remote notifications to users; Providing temporary use of non-downloadable emergency notification system software for accessing a communication network and allowing audio and data communication between users and emergency and support responders; Providing temporary use of non-downloadable notification system software for alerting persons, animals, and other objects in the vicinity of the presence of a vehicle; Providing temporary use of non-downloadable notification system software that produces acoustic and vibrational messages
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Applicant must address the following additional requirement.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
The application identifies goods and services that are classified in at least three classes; however, applicant submitted a fee sufficient for only two classes. In a multiple-class application, a fee for each class is required. 37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class and satisfy all the requirements below for each international class based on Trademark Act Section 1(b):
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least three classes; however, applicant submitted a fee(s) sufficient for only two classes. As explained, applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
RESPONSE GUIDELINES
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
How to respond. Click to file a response to this nonfinal Office action
/Nathaniel Pettican/
Nathaniel Pettican
Examining Attorney
Law Office 108
(571) 272-1087
nathaniel.pettican@uspto.gov
RESPONSE GUIDANCE