Suspension Letter

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.

Action on this application is suspended pending the disposition of:

- Application Serial No(s). 77-377167 and 78-923282

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 term BERRY is a dominant element in the referenced marks. These marks cover services that overlap with or relate closely to the applicant’s goods and services herein.

The following refusal is continued and maintained:

SECTION 2(d) REFUSAL CONTINUED

The refusal under Trademark Act Section 2(d) is continued with respect to all of the previously cited registrations. See 15 U.S.C. §1052(d); 37 C.F.R. §2.64(a).

In each of the cited registrations, the mark features prominent use of the term BERRY either with highly descriptive matter or with other matter after the term. The services covered by the marks relate closely to or overlap with the goods and services listed in this application.

Although applicant’s response claims that the respective services do not compete with each other, applicant relies upon allegations that are not referenced in the respective identification of goods and services. Registrant’s identification of services is not limited to services as a “certified marketing representative” offering services only to those who advertise on a national level. Nor are applicant’s services herein limited to those provided on a local level. A determination of whether there is a likelihood of confusion is made solely on the basis of the goods and/or services identified in the application and registration, without limitations or restrictions that are not reflected therein. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1595 (TTAB 1999); see TMEP §1207.01(a)(iii). If the cited registration describes the goods and/or services broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, then it is presumed that the registration 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. In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); TMEP §1207.01(a)(iii).

This case stands suspended. Any other prior issues not addressed herein are deemed satisfied or are withdrawn.

/Steven Foster/

Steven Foster, Trademark Attorney

Law Office 106

(571) 272-9318

Fax number for the Law Office: (571) 273-9106

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.