| To: | SMARTLABS, INC. (trademark@thelenreid.com) |
| Subject: | TRADEMARK APPLICATION NO. 78656443 - SMARTHOME - 031721-87 |
| Sent: | 8/7/06 6:01:57 PM |
| Sent As: | ECOM113@USPTO.GOV |
| Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 78/656443
APPLICANT: SMARTLABS, INC.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
If no fees are enclosed, the address should include the words "Box Responses - No Fee." |
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MARK: SMARTHOME
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CORRESPONDENT’S REFERENCE/DOCKET NO: 031721-87
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 78/656443
NOTICE OF SUSPENSION
SUSPENSION PROCEDURE: This suspension notice serves to suspend action on the application for the reason(s) specified below. No response is needed. 37 C.F.R. §2.67. However, the examining attorney will conduct periodic status checks and may issue inquiries at 6 month intervals from the mailing date of this notice. TMEP §716.05. If a status inquiry Office action issues, applicant will have 6 months from the mailing or e-mailing date of the status inquiry to respond. 15 U.S.C. §1062(b); 37 C.F.R. §2.62.
MAILING/E-MAILING DATE INFORMATION: If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.
This letter responds to applicant’s communication filed on July 13, 2006.
In the initial Office Action, the examining attorney refused the mark under Section 2(d), refused the mark under Section 2(e)(1), required an amendment to the Identification of Services, and required the applicant to claim ownership of a prior registration.
In the response to the Office Action, the applicant requested suspension of the application, argued against the Section 2(e)(1) refusal by claiming Section 2(f) Acquired Distinctiveness, amended the Identification of Services, and clarified ownership of a prior registration. The applicant’s responses have been received and made of record.
Per the applicant’s request, action on this application is suspended pending the disposition of:
- Cancellation No(s). 92046103
The proceeding(s) above pertains to one or more of the following: (1) a registration cited as a bar to applicant's registration under Section 2(d) of the Trademark Act, (2) a pending application(s) that could present a future bar to registration under Section 2(d) if it matured into a registration, and/or (3) the registrability of applicant's mark. 15 U.S.C. §1052. Therefore, action is suspended pending the final disposition of this proceeding(s). See 37 C.F.R. §2.83; TMEP §§716.02(a), (c) and (d), 1208 et seq. Any refusal(s) made under Section 2 is herein maintained.
Applicant has provided clarification with regard to the ownership of U.S. Registration No. 2516164. Please note that, following the outcome of the cancellation proceeding, U.S. Registration No. 2516164 may prevent a bar to registration. The examining attorney must defer judgment on this issue until such time as the present proceeding is concluded and the strength of the mark is determined.
/Jason Eric Lott/
Jason Eric Lott
Trademark Examining Attorney
Law Office 113
Phone: 571-272-9721
Fax: 571-273-9721