UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

Serial Number 76/637644      

 

NOTICE OF SUSPENSION

 

SUSPENSION PROCEDURE:  This suspension notice serves to suspend action on the application for the reason(s) specified below.  No response is needed.  37 C.F.R. §2.67.  However, the examining attorney will conduct periodic status checks and may issue inquiries at 6 month intervals from the mailing date of this notice.  TMEP §716.05.  If a status inquiry Office action issues, applicant will have 6 months from the mailing or e-mailing date of the status inquiry to respond.  15 U.S.C. §1062(b); 37 C.F.R. §2.62.

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Action on this application is suspended pending the disposition of:

 

            - Application Serial No(s). 78/399390, 76/631719, 76/548912 and 76/443363.

 

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 in a refusal to register under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d).  See 37 C.F.R. §2.83; TMEP §§1208 et seq.  A copy of information relevant to this pending application(s) was sent previously.

 

Applicant may submit a request to remove the application from suspension to present arguments related to the potential conflict between the relevant application(s) or other arguments related to the ground for suspension.  TMEP §716.03.  Applicant's election not to present arguments during suspension will not affect the applicant's right to present arguments later should a refusal in fact issue.  If a refusal does issue, applicant will be afforded 6 months from the mailing or e-mailing date of the Office action to submit a response.  15 U.S.C. §1062(b); 37 C.F.R. §2.62.

 

The following refusal(s)/requirement(s) is/are continued and maintained:

 

Section 2(d) - Likelihood of Confusion Refusal

 

For the reasons set forth in the first Office Action, until applicant changes the name of the applicant in the cited registrations (from Peter Chung-Yuan Chang to Chung-Yuan Chang) or changes the name of the applicant in this application (from Chung-Yuan Chang to Peter Chung-Yuan Chang), the refusal for likelihood of confusion is MAINTAINED.  The Examining Attorney recommends that the applicant of this application amend his name to be “Chung-Yuan Chang” AKA (“also known as”) “Peter Chung-Yuan Chang,” an individual having citizenship of Taiwan.

 

Identification of Goods

 

The requirement to amend the identification of goods is MAINTAINED because applicant has included wording in the proposed amendment that does not clarify the nature of all of the stated goods. For instance, the wording “and the like” may not be used in the identification of goods, but was only used by the Examining Attorney in the first Office Action to indicate that applicant could include similar electrical appliances to those already listed.  In addition, applicant must reinsert the word “cooking” before “appliances,” otherwise, the proposed identification of goods will be considered beyond the scope of the application.  Applicant may change this wording to the following, if accurate.  TMEP §1402.01.

 

Electrical cooking appliances for use in cooking, steaming, warming and stir frying, namely: food steamers, rice steamers, vegetable steamers, woks, deep fat fryers, food warmers, pressure cookers, slow cookers, rice cookers, rice warmers, grills, skillets, frying pans, toaster ovens, convection ovens, and domestic cooking ovens, namely, roaster ovens, all being electric appliances  (International Class 11).

 

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

Dates of First Use

 

The requirement issued in connection with applicant’s dates of first use is WITHDRAWN.

 

Claim of Ownership regarding Prior Registrations

 

The Examining Attorney notes applicant’s claims of prior ownership of U.S. Reg. Nos. 2731077 and 2679542; however, the Section 2(d) refusal issued in connection with those registrations cannot be withdrawn until the ownership of this application and those registrations is consistent. 

 

References to Section 2(f) (Acquired Distinctiveness of Trademark)

 

Applicant’s references to Section 2(f) in the application were not necessary and should be deleted from the application.  Applicant may simply state in his response as follows, “the references in the application to Section 2(f) were inadvertent and should be considered deleted from the application.”

 

Trademark Counsel

 

Applicant may wish to hire a specialist attorney to assist in prosecuting this application because of the technicalities involved.  The Office cannot aid in the selection of a trademark attorney.  37 C.F.R. §2.11.  Applicant may wish to consult the Yellow Pages for a listing of attorneys specializing in trademark or intellectual property law, or seek guidance from its local Bar Association attorney-referral service.

 

If the applicant has any questions concerning this Notice of Suspension and remaining requirements, please telephone the assigned examining attorney.

 

/ELIZABETH J. WINTER/

Trademark Attorney-Advisor

USPTO, Law Office 113

(571) 272-9240

FAX Questions (571) 273-9240

FAX Responses (571) 273-9113