Suspension Letter

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

Serial Number   78/340893      

 

NOTICE OF SUSPENSION

 

Action on this application is suspended pending the disposition of:

 

                        - Application Serial No(s). 78254772

 

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.  A copy of information relevant to this pending application(s) was 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.

 

This suspension letter responds to the applicant’s communication filed on December 30, 2004 in which the applicant 1) argued against the potential likelihood of confusion between the applicant’s mark STARS and the mark in prior pending application Serial No. 78254772 for the mark STAR, and 2) amended the identification of goods and services.  Neither of these items is acceptable.  The requirement for an acceptable identification of goods is continued for the reasons noted below and this application is SUSPENDED pending disposition of the cited prior pending application.

 

The requirement for an acceptable identification is maintained and continued.  The wording “and associated RFID system software” in the identification of goods in International Class 9 is indefinite.  The software function is unclear and the applicant must amend to clarify the function of the software, e.g.; operating system software.  Further, the wording in the recitation of services in International Class 37 is overly broad because it includes the repair and installation of hardware in International Class 37 and the repair and installation of software in International Class 42.  

 

The applicant has argued to remove this application but after careful consideration, the applicant’s arguments are found to be unpersuasive.  The applicant’s mark STARS is highly similar to the registrant’s mark STAR with the only difference being the applicant’s addition of the letter “s.”  Marks may be confusingly similar in appearance despite the addition, deletion or substitution of letters or words.  See, e.g., In re Curtice-Burns, Inc., 231 USPQ 990 (TTAB 1986) (MCKENZIE’S (stylized) for processed frozen fruits and vegetables held likely to be confused with McKenzie for canned fruits and vegetables); In re Pix of America, Inc., 225 USPQ 691 (TTAB 1985) (NEWPORTS for women’s shoes held likely to be confused with NEWPORT for outer shirts).  TMEP section 1207.01(b)(ii).  The marks are similar and the goods and services are related because both the applicant and the registrant provide computer hardware and software for performing tracking functions.  Therefore, this application is hereby SUSPENDED.

 

NOTICE:  FEE CHANGE   

 

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.

 

 

/Barbara Brown/

Trademark Examining Attorney, LO 116

TEL: 571-272-9134

FAX: 571-273-9116