Offc Action Outgoing

DEEP BLUE

Thompson, Dawn

Offc Action Outgoing

UNITED STATES DEPARTMENT OF COMMERCE

UNITED STATES PATENT AND TRADEMARK OFFICE

SERIAL NO: 76/505250

APPLICANT: Thompson, Dawn

CORRESPONDENT ADDRESS:

Dawn Thompson

231 Division Street

Pawtucket, R.I. 02860

RETURN ADDRESS:

Commissioner for Trademarks

2900 Crystal Drive

Arlington, VA 22202-3514

ecom113@uspto.gov

MARK: DEEP BLUE

CORRESPONDENT’S REFERENCE/DOCKET NO: N/A

CORRESPONDENT EMAIL ADDRESS:

Please provide in all correspondence:

1. Filing date, serial number, mark and

applicant's name.

2. Date of this Office Action.

3. Examining Attorney's name and

Law Office number.

4. Your telephone number and e-mail address.

SUSPENSION ACTION

Serial Number 76/505250

The following responds to the applicant’s communication filed on December 8^th, 2003.

The registration of the application was originally denied for the following reasons:

Section 2(d) likelihood of confusion based upon U.S. Registration No. 2238755;
Potential Section 2(d) likelihood of confusion based upon prior U.S. Application No. 78/152298;
Requirement for an acceptable identification of goods;
Requirement for applicant’s national citizenship.

The applicant has properly provided an acceptable identification of goods and provided the applicant’s national citizenship, which have been entered into the record. The examining attorney has reviewed the applicant’s arguments very carefully. The examiner has removed the Section 2(d) likelihood of confusion based upon U.S. Registration No. 2238755. The potential Section 2(d) likelihood of confusion based upon prior U.S. Application No. 78/152298, which is solely based upon the applicant’s listed “inflatable toys,” is maintained at this time, although not made final.

Please note, that the applicant’s “inflatable toys” maintain highly similar channels of trade to the “action figures” (and other related “motorized toys” in the prior pending application). Please see the attached U.S. Registrations which contain both “action figures” and “inflatable toys” bearing the same mark and emanating from the same source of sponsorship (thereby heightening the likelihood of confusion and demonstrating similarity in channels of trade).

As such, action on this application is SUSPENDED pending the disposition of prior U.S. Application No. 78/152298.

The Trademark Applications and Registrations Retrieval (TARR) database on the USPTO website at http://tarr.uspto.gov provides detailed, up to the minute information about the status and prosecution history of trademark applications and registrations. The TARR database is available 24 hours a day, 7 days a week. Status and status date information is also available via push-button telephone at (703) 305‑8747 from 6:30 a.m. until midnight, Eastern Time, Monday through Friday.

uspto

How to respond to this Suspension Action:

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

FOR INQUIRIES OR QUESTIONS ABOUT THIS SUSPENSION ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.