| PTO Form (Rev 4/2000) |
| OMB No. 0651-.... (Exp. 08/31/2004) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 76686405 |
| LAW OFFICE ASSIGNED | LAW OFFICE 112 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
This is in response to the Office Action mailed on January 7, 2009 (the “Office Action’). Applicant appreciates the acknowledgement that the claim for registration as a “standard character” mark has been properly made by applicant. With respect to the remaining issue in this application (i.e., the refusal to register under Sec. 2(d) based on Registration No. 3,157,734), applicant provides the “remarks” set forth below. Concurrently with the filing of this Response, applicant has also filed a petition to cancel Registration No. 3,157,734. The Office Action has asserted and made “Final” the refusal to register the present application based on that prior registration. Applicant believes that applicant’s rights supersede those of the registrant and that the Registration No. 3,157,734 should be cancelled. Since the cancellation proceeding would effect the merits of the Office Action, applicant respectfully requests that proceedings on the present application be suspended pending the outcome of the cancellation proceeding.
I. REMARKS The first Office Action (i.e., May 20, 2008) refused registration of the mark applied for in this application based on an asserted likelihood of confusion with the marks in U.S. Registrations No. 2,870,499 (i.e., “Cowboy Up” in Class 16) and 3,157,734, “Cowboy Up with Conservation, It can save your grass” and colored design in Class 16.) Applicant responded to that Office Action by: (a) seeking to cancel the registration for the identical mark, i.e., Registration No. 2,870,499 and (b) arguing that the mark sought to be registered is not likely to cause confusion with the lengthy slogan and logo in Registration 3,157,734. As a result of the cancellation proceeding, Registration No. 2,870,499 has been cancelled. However, the Office Action of January 7, 2009, continued to refuse registration based on Registration No. 3,157,734, and made that refusal “Final.” With respect to Registration No. 3,157,734 applicant reiterates its arguments previously made of record. However, if the mark covered by that registration and the mark sought to be registered by applicant are likely to cause confusion as the Office Action asserts, then applicant believes that it has rights superior to those of registrant. Thus, simultaneously with the filing of this Response applicant has filed a petition to cancel Registration No., 3,157,734 with the Trademark Trial and Appeal Board.
II. REQUEST FOR SUSPENSION PENDING CANCELLATION PROCEEDING
Applicant requests that proceedings on this application be suspended pending the outcome of the petition to cancel the registration on which refusal has been based. Applicant submits that this request is appropriate under 37 C.F.R. §2.67, which provides: 37 C.F.R. §2.67. Suspension of action by the Patent and Trademark Office. Action by the Patent and Trademark Office may be suspended for a reasonable time for good and sufficient cause. The fact that a proceeding is pending before the Patent and Trademark Office or a court which is relevant to the issue of registrability of the applicant’s mark, or the fact that the basis for registration is, under the provisions of Section 44(e) of the Act, registration of the mark in a foreign country and the foreign application is still pending, will be considered prima facie good and sufficient cause. An applicant’s request for a suspension of action under this section filed within the 6-month response period (see §2.62) may be considered responsive to the previous Office action. The first suspension is within the discretion of the Examiner of Trademarks and any subsequent suspension must be approved by the Director. The term “suspension of action” means suspending action by the examining attorney. It does not mean suspending or extending an applicant’s time to respond. The Trademark Act requires that an applicant respond within six months of an examining attorney’s Office action, and the examining attorney has no discretion to suspend or extend the time for the applicant’s response. 15 U.S.C. §1062(b). The examining attorney should suspend an application only after all issues have been resolved or are in condition for final action, except the matter on which suspension is based. (Emphasis added.) The sole issue remaining in this application is the refusal to register under Trademark Act Sec. 2(d), 15 U.S.C. §1052(d) based on Registration No. 3,157,734. The cancellation proceeding clearly addresses whether Registration No. 3,157,734 is a viable registration capable of being cited against the pending application. Thus, the cancellation proceeding and its resolution are relevant to the registrability of applicant’s mark. Indeed, 37 C.F.R. §2.67 provides that: “The fact that a proceeding is pending before the Patent and Trademark Office . . . which is relevant to the issue of registrability of the applicant’s mark . . . will be considered prima facie good and sufficient cause” for a suspension. (See also, TMEP §2.67 regarding “Applicant’s Petition to Cancel Cited Registration.) TMEP §2.67 also provides that a request to suspend in view of a petition to cancel a cited mark filed within the six months period to respond to an office action “will constitute a proper response to the §2(d) refusal.” Applicant has timely filed this Response and Request for Suspension to the Office Action mailed on January 7, 2009. Applicant believes that it is likely to prevail in the cancellation proceeding. Among other things: (a) Applicant has used “Cowboy Up” on items in Class 16 and within the ambit of the Registration No. 3,157,734 since at least as early as December 1993. (b) Applicant has other rights under previously issued federal trademark registrations and at common law as identified in the petition to cancel that give applicant superior rights. (c) Applicant’s efforts to cancel Registration No. 2,870,499 in Class 16 (which antedated Registration No. 3,157,734) were successful. Thus, applicant anticipates that it will be successful in the cancellation proceeding. In any event, the resolution of the cancellation proceeding is likely to resolve or have a significant bearing on the Section 2(d) refusal in the Office Action. In light of the pending cancellation proceeding, applicant respectfully requests that proceedings on the present application be suspended pending conclusion of the cancellation proceeding. Applicant also reserves any other arguments that it may have regarding the purported conflict between the mark being applied for and that in the registration in the event the cancellation proceeding should be unsuccessful and the Trademark Office should subsequently persist in its rejection.
III. CONCLUSION In view of the pending cancellation proceeding applicant respectfully requests that proceedings on the present application be suspended pending the completion of the cancellation proceeding. Alternatively, applicant requests that the rejections be reconsidered and withdrawn, that a notice of allowance be issued and that the Mark be published for opposition. |
|
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /THY/ |
| SIGNATORY'S NAME | Thomas H. Young |
| SIGNATORY'S POSITION | Attorney of record (Colorado bar member) |
| DATE SIGNED | 07/06/2009 |
| AUTHORIZED SIGNATORY | YES |
| CONCURRENT APPEAL NOTICE FILED | NO |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Jul 06 14:38:34 EDT 2009 |
| TEAS STAMP | USPTO/RFR-XX.XXX.XXX.XXX- 20090706143834049922-7668 6405-4309fd172218618607d7 1d7e9981cd919e-N/A-N/A-20 090706142152181056 |
| PTO Form (Rev 4/2000) |
| OMB No. 0651-.... (Exp. 08/31/2004) |
This is in response to the Office Action mailed on January 7, 2009 (the “Office Action’).
Applicant appreciates the acknowledgement that the claim for registration as a “standard character” mark has been properly made by applicant.
With respect to the remaining issue in this application (i.e., the refusal to register under Sec. 2(d) based on Registration No. 3,157,734), applicant provides the “remarks” set forth below.
Concurrently with the filing of this Response, applicant has also filed a petition to cancel Registration No. 3,157,734. The Office Action has asserted and made “Final” the refusal to register the present application based on that prior registration. Applicant believes that applicant’s rights supersede those of the registrant and that the Registration No. 3,157,734 should be cancelled. Since the cancellation proceeding would effect the merits of the Office Action, applicant respectfully requests that proceedings on the present application be suspended pending the outcome of the cancellation proceeding.
I. REMARKS
The first Office Action (i.e., May 20, 2008) refused registration of the mark applied for in this application based on an asserted likelihood of confusion with the marks in U.S. Registrations No. 2,870,499 (i.e., “Cowboy Up” in Class 16) and 3,157,734, “Cowboy Up with Conservation, It can save your grass” and colored design in Class 16.) Applicant responded to that Office Action by: (a) seeking to cancel the registration for the identical mark, i.e., Registration No. 2,870,499 and (b) arguing that the mark sought to be registered is not likely to cause confusion with the lengthy slogan and logo in Registration 3,157,734. As a result of the cancellation proceeding, Registration No. 2,870,499 has been cancelled. However, the Office Action of January 7, 2009, continued to refuse registration based on Registration No. 3,157,734, and made that refusal “Final.”
With respect to Registration No. 3,157,734 applicant reiterates its arguments previously made of record. However, if the mark covered by that registration and the mark sought to be registered by applicant are likely to cause confusion as the Office Action asserts, then applicant believes that it has rights superior to those of registrant. Thus, simultaneously with the filing of this Response applicant has filed a petition to cancel Registration No., 3,157,734 with the Trademark Trial and Appeal Board.
II. REQUEST FOR SUSPENSION PENDING CANCELLATION PROCEEDING
Applicant requests that proceedings on this application be suspended pending the outcome of the petition to cancel the registration on which refusal has been based. Applicant submits that this request is appropriate under 37 C.F.R. §2.67, which provides:
37 C.F.R. §2.67. Suspension of action by the Patent and Trademark Office.
Action by the Patent and Trademark Office may be suspended for a reasonable time for good and sufficient cause. The fact that a proceeding is pending before the Patent and Trademark Office or a court which is relevant to the issue of registrability of the applicant’s mark, or the fact that the basis for registration is, under the provisions of Section 44(e) of the Act, registration of the mark in a foreign country and the foreign application is still pending, will be considered prima facie good and sufficient cause. An applicant’s request for a suspension of action under this section filed within the 6-month response period (see §2.62) may be considered responsive to the previous Office action. The first suspension is within the discretion of the Examiner of Trademarks and any subsequent suspension must be approved by the Director.
The term “suspension of action” means suspending action by the examining attorney. It does not mean suspending or extending an applicant’s time to respond. The Trademark Act requires that an applicant respond within six months of an examining attorney’s Office action, and the examining attorney has no discretion to suspend or extend the time for the applicant’s response. 15 U.S.C. §1062(b).
The examining attorney should suspend an application only after all issues have been resolved or are in condition for final action, except the matter on which suspension is based.
(Emphasis added.)
The sole issue remaining in this application is the refusal to register under Trademark Act Sec. 2(d), 15 U.S.C. §1052(d) based on Registration No. 3,157,734. The cancellation proceeding clearly addresses whether Registration No. 3,157,734 is a viable registration capable of being cited against the pending application. Thus, the cancellation proceeding and its resolution are relevant to the registrability of applicant’s mark. Indeed, 37 C.F.R. §2.67 provides that: “The fact that a proceeding is pending before the Patent and Trademark Office . . . which is relevant to the issue of registrability of the applicant’s mark . . . will be considered prima facie good and sufficient cause” for a suspension. (See also, TMEP §2.67 regarding “Applicant’s Petition to Cancel Cited Registration.)
TMEP §2.67 also provides that a request to suspend in view of a petition to cancel a cited mark filed within the six months period to respond to an office action “will constitute a proper response to the §2(d) refusal.” Applicant has timely filed this Response and Request for Suspension to the Office Action mailed on January 7, 2009.
Applicant believes that it is likely to prevail in the cancellation proceeding. Among other things:
(a) Applicant has used “Cowboy Up” on items in Class 16 and within the ambit of the Registration No. 3,157,734 since at least as early as December 1993.
(b) Applicant has other rights under previously issued federal trademark registrations and at common law as identified in the petition to cancel that give applicant superior rights.
(c) Applicant’s efforts to cancel Registration No. 2,870,499 in Class 16 (which antedated Registration No. 3,157,734) were successful.
Thus, applicant anticipates that it will be successful in the cancellation proceeding. In any event, the resolution of the cancellation proceeding is likely to resolve or have a significant bearing on the Section 2(d) refusal in the Office Action. In light of the pending cancellation proceeding, applicant respectfully requests that proceedings on the present application be suspended pending conclusion of the cancellation proceeding. Applicant also reserves any other arguments that it may have regarding the purported conflict between the mark being applied for and that in the registration in the event the cancellation proceeding should be unsuccessful and the Trademark Office should subsequently persist in its rejection.
III. CONCLUSION
In view of the pending cancellation proceeding applicant respectfully requests that proceedings on the present application be suspended pending the completion of the cancellation proceeding. Alternatively, applicant requests that the rejections be reconsidered and withdrawn, that a notice of allowance be issued and that the Mark be published for opposition.