UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/565293
APPLICANT: OPTIVON, INC.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
If no fees are enclosed, the address should include the words "Box Responses - No Fee." |
MARK: OPTIMUM COMMUNICATIONS MANAGEMENT
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CORRESPONDENT’S REFERENCE/DOCKET NO: 42473-199618
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.
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Serial Number 76/565293
NOTICE OF SUSPENSION
This letter responds to applicant’s communication filed on 1/12/05.
The amended recitation of services, the substitute declaration, and the standard character drawing claim are acceptable and have been entered into the record.
The refusal pursuant to Trademark Act Section 2(d) is maintained and continued.
The examining attorney has carefully considered the applicant’s arguments regarding the likelihood of confusion between the applicant’s mark and the registrant’s marks but has found them to be unpersuasive. Not only are the marks at issue highly similar, but the services are closely related and overlapping as well. The list of registrations and applications submitted by the applicant does not show that the term OPTIMUM is weak in the relevant field. The examining attorney has attached a copy of search report that shows the results of a search of the Office’s record conducted by the examining attorney on 2/9/05. The search shows that there are 9 current registrations in Class 38 that include the term OPTIMUM including the 5 cited registrations. The search also shows that CSC Holdings, Inc. is the owner of all of these registrations. This search clearly shows that the term is not weak or diluted when used in connection with the relevant services.
2 82980 "038"[ic]
3 9 1 and 2 not dead[ld] not applicant[ow]
4 78 "csc holdings"[ow]
5 9 3 and 4
Action on this application is suspended pending the disposition of:
- Application Serial No(s). 76/199681 and 78/335116
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. Copies of information relevant to these pending applications were 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.
Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:
(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or
(2) $375 per international class if filed on paper
These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.
The new fee requirements will apply to any fees filed on or after January 31, 2005.
NOTICE: TRADEMARK OPERATION RELOCATION
The Trademark Operation has relocated to Alexandria, Virginia. Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
Applicants, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.
/Ronald McMorrow/
Examining Attorney
Law Office 105
571-272-9306