Suspension Letter

The effective filing date of the pending application(s) identified below precedes the filing date of applicant’s application. If the mark in the referenced application(s) registers, applicant’s mark may be refused registration under Section 2(d) because of a likelihood of confusion with that registered mark(s). See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, action on this application is suspended until the earlier-filed referenced application(s) is either registered or abandoned. 37 C.F.R. §2.83(c). A copy of information relevant to this referenced application(s) was sent previously.

- Application Serial No(s). 86667268

The USPTO will periodically conduct a status check of the application to determine whether suspension remains appropriate, and the trademark examining attorney will issue as needed an inquiry letter to applicant regarding the status of the matter on which suspension is based. TMEP §§716.04, 716.05. Applicant will be notified when suspension is no longer appropriate. See TMEP §716.04.

No response to this notice is necessary; however, if applicant wants to respond, applicant should use the “Response to Suspension Inquiry or Letter of Suspension” form online at http://teasroa.gov.uspto.report/rsi/rsi.

STATUS OF REMAINING ISSUES

The likelihood of confusion refusal with respect to U.S. Registration No. 4369624 is maintained and continued. Applicant's arguments against the Section 2(d) refusal are noted and made part of the record. After careful consideration of applicant's arguments, the trademark examining attorney has found such arguments unpersuasive and remains of the opinion that there is a likelihood of confusion between applicant's mark and the mark in the cited registration. Applicant's specific arguments will be fully addressed once this case is removed from suspension. In the meantime, please note the following:

Even though applicant has amended its identification to include the wording “none of the foregoing is for making fertilizers or for use with methyl alcohol (methanol),” the goods remain closely related chemical goods and products in Class 1. It is not necessary in a likelihood of confusion determination that applicant’s chemicals are used for making fertilizers or that applicant’s chemicals are for use with methyl alcohol (methanol). The previously attached evidence shows that applicant’s chemicals and the registrant’s fertilizers originate from a common source. Moreover, applicant’s industrial chemicals are identified broadly and would include methyl alcohol (methanol).

Applicant argued that “the cited and referenced marks are weak and should be afforded narrow rights due to the presence of numerous other marks for similar goods/services that have been allowed by the PTO or registered” and applicant has submitted a list of registrations/applications. However, the mere submission of a list of registrations or a copy of a private company search report does not make such registrations part of the record. In re Promo Ink, 78 USPQ2d 1301, 1304 (TTAB 2006); TBMP §1208.02; TMEP §710.03.

To make third party registrations part of the record, an applicant must submit copies of the registrations, or the complete electronic equivalent from the USPTO’s automated systems, prior to appeal. In re Jump Designs LLC, 80 USPQ2d 1370, 1372-73 (TTAB 2006); In re Ruffin Gaming, 66 USPQ2d, 1924, 1925 n.3 (TTAB 2002); TBMP §1208.02; TMEP §710.03.

/Hai-Ly Lam/

Hai-Ly Lam

Trademark Examining Attorney

Law Office 112

Telephone: (571) 272-3354

Email: hai.lam@uspto.gov

PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the Trademark Electronic Application System (TEAS) form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.