Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA342793
`ESTTA Tracking number:
`04/16/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Notice of Opposition
`
`Notice is hereby given that the following parties oppose registration of the indicated application.
`Opposers Information
`
`Name
`Granted to Date
`of previous
`extension
`Address
`
`Name
`Granted to Date
`of previous
`extension
`Address
`
`IA Smart Start, Inc.
`04/17/2010
`
`4850 Plaza Drive
`Irving, TX 75063
`UNITED STATES
`
`1A Smart Start, Inc.
`04/28/2010
`
`4850 Plaza Drive
`Irving, TX 75063
`UNITED STATES
`
`Attorney
`information
`
`Remy M. Davis
`Thompson & Knight LLP
`1722 Routh StreetSuite 1500
`Dallas, TX 75201
`UNITED STATES
`remy.davis@tklaw.com
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`77798847
`04/16/2010
`
`Publication date
`Opposition
`Period Ends
`
`02/16/2010
`04/17/2010
`
`DEI Headquarters, Inc.
`Attention: Legal Department One Viper Way
`Vista, CA 92081
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 009.
`All goods and services in the class are opposed, namely: Vehicle tracking devices comprised of
`cellular radio modules, computer software and computer hardware, sensors, transmitters, receivers
`and global positioning satellite receivers, all for use in connection with vehicle tracking, vehicle
`monitoring and anti-theft vehicle alarms
`
`Applicant Information
`
`Application No
`
`77823893
`
`Publication date
`
`12/29/2009
`
`
`ESTTA342793
`ESTTA Tracking number:
`04/16/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Notice of Opposition
`
`Notice is hereby given that the following parties oppose registration of the indicated application.
`Opposers Information
`
`Name
`Granted to Date
`of previous
`extension
`Address
`
`Name
`Granted to Date
`of previous
`extension
`Address
`
`IA Smart Start, Inc.
`04/17/2010
`
`4850 Plaza Drive
`Irving, TX 75063
`UNITED STATES
`
`1A Smart Start, Inc.
`04/28/2010
`
`4850 Plaza Drive
`Irving, TX 75063
`UNITED STATES
`
`Attorney
`information
`
`Remy M. Davis
`Thompson & Knight LLP
`1722 Routh StreetSuite 1500
`Dallas, TX 75201
`UNITED STATES
`remy.davis@tklaw.com
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`77798847
`04/16/2010
`
`Publication date
`Opposition
`Period Ends
`
`02/16/2010
`04/17/2010
`
`DEI Headquarters, Inc.
`Attention: Legal Department One Viper Way
`Vista, CA 92081
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 009.
`All goods and services in the class are opposed, namely: Vehicle tracking devices comprised of
`cellular radio modules, computer software and computer hardware, sensors, transmitters, receivers
`and global positioning satellite receivers, all for use in connection with vehicle tracking, vehicle
`monitoring and anti-theft vehicle alarms
`
`Applicant Information
`
`Application No
`
`77823893
`
`Publication date
`
`12/29/2009
`
`
`
`Opposition Filing
`Date
`Applicant
`
`04/16/2010
`
`Opposition
`Period Ends
`
`04/28/2010
`
`DEI Headquarters, Inc.
`Attention: Legal Department One Viper Way
`Vista, CA 92081
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 009.
`All goods and services in the class are opposed, namely: Vehicle tracking devices comprised of
`cellular radio modules, computer software and computer hardware, sensors, transmitters, receivers
`and global positioning satellite receivers, all for use in connection with vehicle tracking, vehicle
`monitoring and anti-theft vehicle alarms
`
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`77847070
`04/16/2010
`
`Publication date
`Opposition
`Period Ends
`
`03/23/2010
`04/22/2010
`
`DEI Headquarters, Inc.
`Attention: Legal Department One Viper Way
`Vista, CA 92081
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 009.
`All goods and services in the class are opposed, namely: Vehicle tracking devices comprised of
`cellular radio modules, computer software and computer hardware, sensors, transmitters, receivers
`and global positioning satellite receivers, all for use in connection with vehicle tracking, vehicle
`monitoring and anti-theft vehicle alarms
`
`Grounds for Opposition
`
`False suggestion of a connection
`Priority and likelihood of confusion
`
`Trademark Act section 2(a)
`Trademark Act section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`2170846
`
`07/07/1998
`
`Application Date
`
`11/13/1996
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`SMART START
`
`NONE
`
`Class 009. First use: First Use: 1992/11/09 First Use In Commerce: 1992/11/09
`electronic breath activated ignition lock for automobiles
`
`U.S. Application
`No.
`Registration Date
`
`77619077
`
`NONE
`
`Application Date
`
`11/20/2008
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Word Mark
`Design Mark
`
`SMART START IN-HOM
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 010. First use: First Use: 2009/02/16 First Use In Commerce: 2009/10/19
`Alcohol breath testing unit
`
`Attachments
`
`77619077#TMSN.jpeg ( 1 page )( bytes )
`10-04-16 Consolidated Notice of Opposition to DEI Holdings Applications.pdf ( 7
`pages )(2922419 bytes )
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Certificate of Service
`
`Signature
`Name
`Date
`
`/Remy M. Davis/
`Remy M. Davis
`04/16/2010
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re Applications of:
`
`DEI Headquarters, Inc.
`
`Serial Nos.:
`
`Filed:
`
`Trademarks:
`
`Int'l Class:
`
`Published:
`
`77/798,847
`
`77/823,893
`
`77/847,070
`
`August 6, 2009
`September 10, 2009
`October 12, 2009
`
`VIPER SMARTSTART
`
`CLIFFORD SMARTSTART
`
`DIRECTED SMARTSTART
`
`09
`
`February 16, 2010
`December 29, 2009
`
`March 23, 2010
`
`1A SMART START, INC.
`
`Opposer,
`
`v.
`
`Opposition No.
`
`DEI HEADQUARTERS, INC.
`
`Applicant.
`
`CONSOLIDATED NOTICE OF OPPOSITION
`
`IA Smart Start, Inc. (“Opposer”), a Texas corporation, having a business and
`
`corporate address of 4850 Plaza Drive, Irving, Texas 75063, believes that it will be
`
`damaged by registration of the marks shown in Application Serial No. 77/798,847 filed
`
`August 6, 2009, Application Serial No. 77/823,893 filed September 10, 2009, and
`
`506145 000004 DALLAS 2207456.]
`
`
`
`Application Serial No. 77/847,070 filed October 12, 2009, each in International Class 9,
`
`and hereby opposes the same.
`
`As grounds for opposition, it is alleged that:
`
`1.
`
`On or about August 6, 2009, Applicant, DEI Headquarters, Inc., a Florida
`
`corporation listing an address of One Viper Way, Vista, California 92081 (“Applicant”),
`
`filed an application with the U.S. Patent and Trademark Office, Application Serial No.
`
`77/798,847, seeking registration on the Principal Register of the trademark “VIPER
`
`SMARTSTART” (“the ’847 Application”). This application covers use of the mark with
`
`“Vehicle tracking devices comprised of cellular radio modules, computer software and
`
`computer hardware,
`
`sensors,
`
`transmitters,
`
`receivers and global positioning satellite
`
`receivers, all for use in connection with vehicle tracking, vehicle monitoring and anti—
`
`theft vehicle alarms” in International Class 9 as evidenced by the publication of said mark
`
`in the February 16, 2010 issue of the Official Gazette. The application was filed based
`
`upon an intention to use the mark in commerce.
`
`2.
`
`On or about September 10, 2009, Applicant filed an application with the
`
`U.S. Patent and Trademark Office, Application Serial No. 77/823,893,
`
`seeking
`
`registration on the Principal Register of the trademark “CLIFFORD SMARTSTART”
`
`(“the ’893 Application”). This application covers use of the mark with “Vehicle tracking
`
`devices comprised of cellular radio modules, computer software and computer hardware,
`
`sensors,
`
`transmitters, receivers and global positioning satellite receivers, all for use in
`
`connection with vehicle tracking, vehicle monitoring and anti—theft vehicle alarms” in
`
`International Class 9 as evidenced by the publication of said mark in the December 29,
`
`506145 000004 DALLAS 2207456.]
`
`
`
`2009 issue of the Official Gazette. The application was filed based upon an intention to
`
`use the mark in commerce.
`
`3.
`
`On or about October 12, 2009, Applicant filed an application with the
`
`U.S. Patent and Trademark Office, Application Serial No. 77/847,070,
`
`seeking
`
`registration on the Principal Register of the trademark “DIRECTED SMARTSTART”
`
`(“the ’070 Application” and collectively with the ’847 Application and the ’893
`
`Application, “Applicant’s Marks”). This application covers use of the mark with “Vehicle
`
`tracking devices comprised of cellular radio modules, computer software and computer
`
`hardware, sensors, transmitters, receivers and global positioning satellite receivers, all for
`
`use in connection with vehicle tracking, vehicle monitoring and anti—theft vehicle alarms”
`
`in International Class 9 as evidenced by the publication of said mark in the February 16,
`
`2010 issue of the Official Gazette. The application was filed based upon an intention to
`
`use the mark in commerce.
`
`4.
`
`Opposer is the owner of U.S. Registration No. 2,170,846 for the mark
`
`SMART START for use with “electronic breath activated ignition lock for automobiles”
`
`in International Class 9. This incontestable registration was filed on November 13, 1996,
`
`and registered on July 7, 1998 (the “SMART START Mark”).
`
`5.
`
`Opposer is the owner of U.S. Serial No. 77/619,077 for the mark SMART
`
`START IN—HOM for use with “alcohol breath testing unit” in International Class 10.
`
`The application was filed on November 20, 2008 (the “SMART START IN—HOM Mark”
`
`and with the SMART START Mark, the “Smart Start Marks”).
`
`6.
`
`The SMART START Mark has been used in the United States in
`
`association with the goods since at least as early as November 11, 1992.
`
`506145 000004 DALLAS 22074561
`
`
`
`7.
`
`The SMART START lN—HOM Mark has been used in the United States
`
`in association with the goods since at least as early as October 19, 2009.
`
`8.
`
`Commencing prior to the filing date of the ’847 Application,
`
`the ’893
`
`Application, and the ‘O70 Application, and continuing to the present,
`
`the SMART
`
`START Mark has been used in association with electronic breath activated ignition locks
`
`for automobiles and related products and services; therefore, Opposer has priority over
`
`Applicant based on the prior use of its SMART START Mark. Opposer also has priority
`
`over Applicant based on the earlier filing date of its SMART START IN—HOM Mark.
`
`9.
`
`As a result of offering the goods and services identified under the SMART
`
`START Marks in the United States and abroad, Opposer has built up substantial
`
`goodwill in the marks and the marks have come to signify goods and services originating
`
`with Opposer.
`
`10.
`
`Applicant’s Marks, by reason of their similarity in appearance to Opposer’s
`
`SMART START Marks, will cause a likelihood of confusion among consumers.
`
`11.
`
`Upon learning of the products offered in International Class 9 under
`
`Applicant’s Marks,
`
`the general public and others familiar with Opposer’s SMART
`
`START Marks will likely believe that such products have originated from Opposer or
`
`were offered in association or affiliation with, or under authorization by, Opposer. Thus,
`
`Applicant’s Marks, as used with its proposed goods, will lead persons to believe that
`
`Applicant’s goods are offered by, associated with, or sponsored by Opposer.
`
`In addition,
`
`Opposer is aware that actual confusion has resulted among the general public.
`
`12.
`
`If Applicant is permitted to register its marks for the goods specified in the
`
`’847 Application, the ’893 Application, and the ’O7O Application herein opposed, such
`
`506145 000004 DALLAS 2207456.l
`
`
`
`use and registration will result in confusion in the trade due to the similarity between
`
`App1icant’s Marks and Opposer’s marks, thereby damaging and injuring Opposer. Any
`
`such confusion may result in loss of business to Opposer. Furthermore, any defect,
`
`objection or fault found with Applicant’s products marketed under its marks may reflect
`
`upon and injure the reputation that Opposer has established for its goods and services in
`
`association with its SMART START Marks.
`
`13.
`
`Additionally, Applicant’s Marks, by reason of their similarity to Opposer’s
`
`SMART START Marks, will be able to gain a subliminal or subconscious association to
`
`Opposer's SMART START Marks and thereby trade on the reputation of Opposer's
`
`marks and its goods and services.
`
`14.
`
`Opposer will be injured by the granting of a Certificate of Registration to
`
`Applicant for Applicant’s Marks because Applicant would obtain thereby at least a prima
`
`facie exclusive right to use such marks. Such registration would be a source of damage
`
`and injury to Opposer.
`
`506145 ()()()()04 DALLAS 2207456.]
`
`
`
`WHEREFORE, Opposer respectfully prays that its Opposition be sustained and
`
`the applications for registration, Application Serial No. 77/798,847, Application Serial
`
`No.
`
`77/823,893, and Application Serial No. 77/847,070 by Applicant be denied and
`
`refused.
`
`Dated: April 16, 2010
`
`Respectfully submitted,
`
`THOMPSON & KNIGHT LLP
`
`ATTORNEYS FOR OPPOSER
`
`' //l/l V. QW/W
`_{?{J,1/14
`Richard . Wynne, Jr.
`
`Remy M. Davis
`Thompson & Knight LLP
`1722 Routh Street, Suite 1500
`
`Dallas, Texas 75201
`
`(214) 969—1700
`(214) 9694751 (Fax)
`
`2600150.!
`
`506145 000004 DALLAS 2207456.]
`
`
`
`Certificate of Service
`
`I hereby certify that a true and correct copy of the foregoing Notice of Opposition
`is being served upon Applicant’s correspondent of record, Crystal Biggs, by first class mail,
`postage prepaid, on this 16“ day of April, 2010, in an envelope addressed to:
`
`Crystal Biggs
`DEI Headquarters, Inc.
`
`1 Viper Way
`Vista, California 9ZO8l—7853
`
`moms
`. Davis
`
`Remy
`
`506145 000004 DALLAS 2207456.l
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