To: | Execware, Inc. (rlistou@execware.com) |
Subject: | TRADEMARK APPLICATION NO. 77201487 - REASON - N/A |
Sent: | 1/16/2008 2:32:43 PM |
Sent As: | ECOM114@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 77/201487
MARK: REASON
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CORRESPONDENT ADDRESS: |
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: Execware, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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NOTICE OF SUSPENSION
ISSUE/MAILING DATE: 1/16/2008
SUSPENSION PROCEDURE: This suspension notice serves to suspend action on the application for the reason(s) specified below. No response is needed. However, if you wish to respond to this notice, you should use the “Response to Letter of Suspension” form found at http://teasroa.gov.uspto.report/rsi/rsi. The Office will conduct periodic status checks to determine if suspension remains appropriate.
This letter responds to applicant’s communication filed on December 11, 2007.
The examining attorney has searched the Office records and has found no similar registered mark that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
Action on this application is suspended pending the disposition of:
- Application Serial No(s). 79021862
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. ANY ARGUMENTS ALREADY SUBMITTED HAVE BEEN CONSIDERED PRIOR TO ISSUING THIS SUSPENSION NOTICE.
Applicant argued that the earlier filed applicant is not using the mark except as a trade name or company name. Applicant’s argument that the registration owner of the cited mark(s) has abandoned its trademark is information relevant to a formal cancellation proceeding and is not appropriate matter for ex parte examination. TMEP §1207.01(d)(iv). Section 7(b) of the Trademark Act, 15 U.S.C. §1057(b), provides that a certificate of registration on the Principal Register shall be prima facie evidence of the validity of the registration, of the registrant’s ownership of the mark and of the registrant’s exclusive right to use the mark in commerce in connection with the goods or services specified in the certificate. During ex parte prosecution, an applicant will not be heard on matters that constitute a collateral attack on the cited registration such as a registrant’s nonuse of the mark. See In re Dixie Restaurants, 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997); In re Calgon Corp., 435 F.2d 596, 168 USPQ 278 (C.C.P.A. 1971); Cosmetically Yours, Inc. v. Clairol Inc., 424 F.2d 1385, 1387, 165 USPQ 515, 517 (C.C.P.A. 1970); In re Peebles Inc. 23 USPQ2d 1795, 1797 n. 5 (TTAB 1992); In re White Swan Ltd., 8 USPQ2d 1534 (TTAB 1988); In re Pollio Dairy Products Corp., 8 USPQ2d 2012, 2014-15 (TTAB 1988).
The applicant also argued that its search of on-line records supports the conclusion that there is no likelihood of confusion. However, the test under Trademark Act Section 2(d) is whether there is a likelihood of confusion. It is unnecessary to show actual confusion in establishing likelihood of confusion. See Weiss Associates Inc. v. HRL Associates Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990), and cases cited therein. See also In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984), wherein the Board stated as follows:
[A]pplicant’s assertion that it is unaware of any actual confusion occurring as a result of the contemporaneous use of the marks of applicant and registrant is of little probative value in an ex parte proceeding such as this where we have no evidence pertaining to the nature and extent of the use by applicant and registrant (and thus cannot ascertain whether there has been ample opportunity for confusion to arise, if it were going to); and registrant has no chance to be heard (at least in the absence of a consent agreement, which applicant has not submitted in this case).
As previously noted, there is nothing in applicant’s identification of goods to preclude use of applicant’s goods to specific fields of use or contexts. Likelihood of confusion is determined on the basis of the goods and/or services identified in the application and registration. If the application describes the goods and/or services broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, it is presumed that the application encompasses all goods and/or services of the type described, that they move in all normal channels of trade, and that they are available to all potential customers. See In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) (“With reference to the channels of trade, applicant’s argument that its goods are sold only in its own retail stores is not persuasive …There is no restriction [in its identification of goods] as to the channels of trade in which the goods are sold”); TMEP §1207.01(a)(iii).
The refusals under Trademark Act Section 2(d) are maintained and continued.
/Mary Boagni/
Examining Attorney
Law Office 114
571-272-9130
Law Office 114 fax: 571-273-9114
STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.