From: Dubois, Michelle
`
`
`
`Sent: 7/21/2020 5:36:11 PM
`
`
`
`To: TTAB EFiling
`
`
`
`CC:
`
`
`
`Subject: U.S. Trademark Application Serial No. 87659076 - MEDIATEK SENSIO - M129520046US -
`Request for Reconsideration Denied - Return to TTAB
`
`
`
`
`
`
`
`*************************************************
`
`Attachment Information:
`
`Count: 15
`
`Files: 20180915-sou0002.JPG, 86381193P001OF002.JPG, 86381193P002OF002.JPG,
`86562031P001OF002.JPG, 86562031P002OF002.JPG, 87761211P001OF003.JPG,
`87761211P002OF003.JPG, 87761211P003OF003.JPG, 88500325P001OF002.JPG,
`88500325P002OF002.JPG, 20150316-rfa0003.JPG, 20190706-rfa0003.JPG, 20190706-rfa0004.JPG,
`20150917-sou0003.JPG, 87659076.doc
`
`
`
`
`
`

`

`United States Patent and Trademark Office (USPTO)
`Office Action (Official Letter) About Applicant’s Trademark Application
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`U.S. Application Serial No. 87659076
`
`
`
`Mark: MEDIATEK SENSIO
`
`
`Correspondence Address:
` DOUGLAS R WOLF
`
` WOLF GREENFIELD & SACKS PC
`
` 600 ATLANTIC AVENUE
`
` BOSTON, MA 02210
`
`
`
`Applicant: MEDIATEK INC.
`
`
`
`Reference/Docket No. M129520046US
`
`
`
`Correspondence Email Address:
`
` drwtrademarks@wolfgreenfield.com
`
`
`
`
`
`
`
`REQUEST FOR RECONSIDERATION
`AFTER FINAL ACTION
`DENIED
`
`
`Issue date: July 21, 2020
`
`
`Applicant’s request for reconsideration is denied. See 37 C.F.R. §2.63(b)(3). The trademark
`examining attorney has carefully reviewed applicant’s request and determined the request did not:
`(1) raise a new issue, (2) resolve all the outstanding issue(s), (3) provide any new or compelling
`
`

`

`evidence with regard to the outstanding issue(s), or (4) present analysis and arguments that were
`persuasive or shed new light on the outstanding issue(s). TMEP §§715.03(a)(ii)(B), 715.04(a).
`
`
`Applicant has argued that the marks MEDIATEK SENSIO and XSENSIO are different because the prefix of
`“XSE” is “jarring,” is unique, and creates a unique pronunciation.
`
`
`
`However, the XSENSIO mark is registered with a standard character claim. As such, the registrant is
`entitled to all depictions of a standard character mark regardless of the font style, size, or color. See In re
`Viterra Inc., 671 F.3d 1358, 1364-65, 101 USPQ2d 1905, 1910 (Fed. Cir. 2012); Citigroup Inc. v. Capital
`City Bank Group, Inc., 637 F.3d 1344, 1353, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011). Because of this
`broad protection, registrant’s mark may appear in commerce with the “SENSIO” portion as more
`dominant than the “X” prefix. Examples of such uses are attached as evidence to this Office action. The
`evidence consists of specimens and Office records for the following registrations:
`
`
`
`XSPEED for various lights for vehicles.
`
`XSOLAR for “Chargers for batteries; Batteries; Solar-powered rechargeable batteries; Solar charger.”
`
`XSTIM ENABLED for “Telephones; digital telephones; voice over internet protocol (VOIP) telephones;
`office telephones.”
`
`XSENSE for “Cosmetics; essential oils; fragrances; perfume oils; scented oils.”
`
`
`
`The specimens for XSPEED, XSOLAR, and XSTIM ENABLED demonstrate that the “X” portion appears as
`more of a design element. It will be noted that the “X” appears in a different font and/or coloring than
`the “SPEED,” “SOLAR,” and “STIM ENABLED” portions.
`
`
`
`The specimen showing use of the mark “XSENSE” is similar in nature. The word “SENSE” appears in a
`different font and is emphasized since it is repeated in the additional language “worksense,”
`“playsense,” and “restsense” on the product packaging. Therefore, in this case it is the word “SENSE”
`that stands out to the consumer.
`
`
`
`If the registered mark appears in a similar manner as in any of the above specimens, it is maintained
`that the “X” portion does not necessarily create a “jarring” appearance; that is, the “SENSIO” portion
`could appear more separate and therefore more dominant.
`
`
`
`Finally, it is noted that the identification of goods of the parties are highly similar if not identical in that
`registrant’s “microchips” are a synonym for “integrated circuit.” Please note that where the goods
`and/or services of an applicant and registrant are identical or virtually identical, the degree of similarity
`
`

`

`between the marks required to support a finding that confusion is likely declines. See Cai v. Diamond
`Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671
`F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(b).
`
`
`
`Accordingly, the following requirement(s) and/or refusal(s) made final in the Office action dated
`11/27/19 are maintained and continued:
`
`
`
`
`
`
`
`• Section 2(d) refusal
`
`See TMEP §§715.03(a)(ii)(B), 715.04(a).
`
`
`If applicant has already filed an appeal with the Trademark Trial and Appeal Board, the Board will be
`notified to resume the appeal. See TMEP §715.04(a).
`
`
`If applicant has not filed an appeal and time remains in the six-month response period, applicant has
`the remainder of that time to (1) file another request for reconsideration that complies with and/or
`overcomes any outstanding final requirement(s) and/or refusal(s), and/or (2) file a notice of appeal to
`the Board. TMEP §715.03(a)(ii)(B). Filing a request for reconsideration does not stay or extend the time
`for filing an appeal. 37 C.F.R. §2.63(b)(3); see TMEP §715.03(c).
`
`
`
`
`
`
`
`
`
`
`
`/med/
`
`Michelle E. Dubois
`
`Trademark Attorney
`
`USPTO, Law Office 107
`
`(571) 272-5887
`
`michelle.dubois@uspto.gov
`
`