Suspension Letter

UNITED STATES PATENT AND TRADEMARK OFFICE

Serial Number   76/392274      

NOTICE OF SUSPENSION

Action on this application is suspended pending the disposition of:

                        - Application Serial No(s). 75/853814 and 75/943904

Since applicant's effective filing date is subsequent to the effective filing date of the above-identified application(s), 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 application(s) 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.

Please note, the prior pending applications remain as barriers to registration because the applicant’s identification of goods in INT. CLASS 22, namely, “Non-woven polymeric fibers for conversion into a variety of industrial and consumer goods” is overly broad and may include textile goods similar to those offered by the owner of the cited applications.  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 in the application and the registration. 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., 473 F.2d 901, 177 USPQ 76 (C.C.P.A. 1973).  Since the identification of the applicant’s goods/services is very broad, it is presumed that the application encompasses all goods/services of the type described, including those in the cited application’s more specific identification, that they move in all normal channels of trade and that they are available for all potential customers.  TMEP §1207.01(a)(iii). 

The applicant’s submission of additional fees for the Amendment to Allege Use is accepted and made of record.

Nature of Specimens Submitted With Amendment to Allege Use

The examining attorney is unclear as to the nature of the specimens submitted with the Amendment to Allege Use.  The specimens appear to be photocopies of labels.  The applicant must describe the nature of the specimens for the record.  If accurate, the applicant may state that the specimens are copies of labels for use on the goods in commerce.  

Refusal of Consent Agreement Continued

The applicant failed to submit a substitute consent agreement concerning cited Registration No. 1545935.  The applicant’s initial consent agreement between its company and the owner of the cited registered mark (Reg. No. 1545935) is refused because it does not detail why no likelihood of confusion exists or what arrangements have been taken by the parties to avoid confusion of the marks by the public.  TMEP Section  1207.01(d)(viii). 

Registration was refused under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration No. 1545935 as to be likely, when used on the identified goods/services, to cause confusion, or to cause mistake, or to deceive.

The examining attorney has considered the applicant's arguments carefully but has found them unpersuasive.  For the reasons below, the refusal under Section 2(d) is maintained and continued pending the disposition of the cited applications above.

If the applicant has any questions, please telephone the assigned examining attorney.

/Curtis French/

Trademark Attorney

Law Office 115

ecomm115@uspto.gov

703-308-9115 ext. 250