Reconsideration Letter

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

Serial Number 78/379156

 

Applicant is requesting reconsideration of a final refusal dated September 6, 2006.

 

The applicant’s request for reconsideration does not raise any new issues but is a good faith, although incomplete, attempt to comply with all outstanding requirements or refusals. TMEP §715.03(a). Accordingly, applicant’s request for reconsideration is granted. The response is incomplete because the consent agreement is essentially a “naked consent.”

 

The consent agreement submitted is considered a “naked consent” and thus is not acceptable to obviate a likelihood of confusion refusal because it does not set forth reasons why the parties believe there is no likelihood of confusion, nor does it set forth the arrangements undertaken by the parties to avoid confusing the public.  In re Permagrain Products, Inc., 223 USPQ 147 (TTAB 1984) (consent agreement found to be “naked” because the agreement did not restrict the markets in such a way as to avoid confusion). 

 

If applicant wishes to submit a proper consent agreement from the registrant, this refusal will be reconsidered.  Please note that consent agreements are but one factor to be taken into account with all of the other relevant circumstances bearing on the likelihood of confusion referred to in §2(d).  In re N.A.D. Inc., 754 F.2d 996, 224 USPQ 969, 971 (Fed. Cir. 1985); TMEP §1207.01(d)(viii).

 

Factors to be considered in weighing a consent agreement include: whether the agreement is unilateral or bilateral; whether the parties agree that no confusion exists; whether the trade channels of the respective goods are related and a statement indicating a clear indication of the respective, separate trade channels; whether the parties will make efforts to prevent confusion, and cooperate and take steps to avoid any confusion that may arise in the future; and whether the marks have been used for a period of time without evidence of actual confusion.  See In re Mastic, 829 F.2d 1114, 1115, 4 USPQ2d 1292, 1294 (Fed. Cir. 1987) (relying on the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563 (C.C.P.A. 1973)).

 

The applicant has 30 days, or until the end of the six months from the final action, whichever is longer, to comply with the outstanding requirements or refusals. 37 C.F.R. §2.65(b). Granting the request for reconsideration does not extend the deadline for appeal.  The time for appeal runs from the date the final action was mailed.  37 C.F.R. Section 2.64(b); TMEP Section 715.03(c).

 

 

NOTICE OF NEW PROCEDURE FOR E-MAILED OFFICE ACTIONS:  In late spring 2007, for any applicant who authorizes e-mail communication with the USPTO, the USPTO will no longer directly e-mail the actual Office action to the applicant.  Instead, upon issuance of an Office action, the USPTO will e-mail the applicant a notice with a link/web address to access the Office action using Trademark Document Retrieval (TDR), which is located on the USPTO website at http://portal.gov.uspto.report/external/portal/tow.  The Office action will not be attached to the e-mail notice.  Upon receipt of the notice, the applicant can then view and print the actual Office action and any evidentiary attachments using the provided link/web address.  TDR is available 24 hours a day, seven days a week, including holidays and weekends.  This new process is intended to eliminate problems associated with e-mailed Office actions that contain numerous attachments.

 

 

 

 

 

 

 

 

/Patty Evanko/

Trademark Attorney

Law Office 117

571-272-9404

patty.evanko@uspto.gov (questions only)