Suspension Letter

UNITED STATES PATENT AND TRADEMARK OFFICE

Serial Number   76/351858      

NOTICE OF SUSPENSION

Action on this application is re-suspended pending the disposition of:

                        - Application Serial Nos. 76/282274 76/282350

Since applicant's effective filing date is subsequent to the effective filing date of the above-identified applications, the latter, if and when it registers, may be cited against this application.  See 37 C.F.R. §2.83.  A copy of information relevant to this pending applications was sent previously.  The applicant may request that the application be removed from suspension by presenting arguments related to the potential conflict between the relevant applications or other arguments related to the ground for suspension.  The applicant's election to present or not to present arguments at this time will not affect the applicant's right to present arguments later.

The consent agreement submitted with the applicant’s February 13, 2004, communication is noted, as are the applicant’s arguments regarding the impact of the agreement on the prior pending application citations and differences in the channels of trade. 

However, the consent agreement submitted is considered a “naked consent” and, therefore, is not acceptable to obviate a likelihood of confusion refusal because it does not set forth reasons why the parties believe there is no likelihood of confusion, nor does it set forth the arrangements undertaken by the parties to avoid confusing the public.  In re Permagrain Products, Inc., 223 USPQ 147 (TTAB 1984) (consent agreement found to be “naked” because the agreement did not restrict the markets in such a way as to avoid confusion).  See also, TMEP section 1207.01(d)(viii).

If applicant wishes to submit a proper consent agreement from the registrant consenting to the registration of the mark, this refusal will be reconsidered.  Please note that consent agreements are but one factor to be taken into account with all of the other relevant circumstances bearing on the likelihood of confusion referred to in §2(d).  In re N.A.D. Inc., 754 F.2d 996, 224 USPQ 969 (Fed. Cir. 1985); TMEP §1207.01(d)(viii).

Factors to be considered in weighing a consent agreement include: whether the agreement is unilateral or bilateral; whether the parties agree that no confusion exists; whether the trade channels of the respective goods are related and a statement indicating a clear indication of the respective, separate trade channels; whether the parties will make efforts to prevent confusion, and cooperate and take steps to avoid any confusion that may arise in the future; and whether the marks have been used for a period of time without evidence of actual confusion.  See In re Mastic, 829 F.2d 1114, 4 USPQ2d 1292, 1294 (Fed. Cir. 1987), citing In re E.I. duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973); See also Amalgamated Bank of New York v. Amalgamated Trust & Savings Bank, 842 F.2d 1270, 6 USPQ2d 1305 (Fed. Cir. 1988).

In response to the applicant’s arguments regarding the channels of trade through which the goods of the respective parties move, it is noted that the wording of the identifications in the prior pending applications does not limit the prior pending applicant’s goods to any particular type or channel of trade.  It is well settled that the issue of likelihood of confusion between marks must be determined on the basis of the goods or services as they are identified. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); Paula Payne Products Co. v. Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76 (C.C.P.A. 1973). 

Please also note that the Office has reassigned this application to the undersigned examining attorney.

/Martha L. Fromm/

Martha L. Fromm

Trademark Attorney

Law Office 106

Phone: (703) 308-9106 ext. 221

Fax:  (703) 746-8106 (formal responses)