Suspension Letter

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

SUSPENSION NOTICE

No Response Required

 

 

Issue date:  June 15, 2020

International Registration No. 1496763

 

 

INTRODUCTION

 

This Suspension Notice is in response to applicant's communication filed on June 11, 2020.

 

In an Office action dated November 14, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Section 2(d) refusal for likelihood of confusion with registered marks. In addition, applicant was required to satisfy the following requirement(s): (1) amend the identification of goods and services and (2) obtain U.S.-licensed counsel. Applicant was also advised of a prior-filed applications.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: U.S.-licensed counsel obtained.  See TMEP §§713.02, 714.04. 

 

In addition, the following refusal has been withdrawn:  Section 2(d) refusal for likelihood of confusion with the marks in U.S. Registration Nos. 4986169, 2151990, 4655825, 2282541, 5038430, 4464777, 2468734, 2351280, 4889839, 4131364, and 5449862only.  See TMEP §§713.02, 714.04. 

 

The prior-filed application advisory as to the mark in U.S. Application No. 87756221 is also withdrawn.

 

 

REFUSAL CONTINUED AND MAINTAINED

 

The following refusal is continued and maintained: Trademark Section 2(d) for likelihood of confusion with the marks in the cited registrations.

 

In its response, applicant presented arguments as to the reasons it believes that its applied-for mark is not likely to cause confusion with the mark(s) in U.S. Registration No(s). 4737112, 2405129, 3241162, and 2303103. A copy of the relevant information pertaining to the cited registration(s) was included with the first Office Action.

 

The trademark examining attorney has carefully considered applicant’s arguments; however, the arguments are not found to be persuasive. Specifically, applicant argues that its amendment to only claim goods and services related to website hosting distinguishes its goods and services from those of the registrant. However, note that the cited registrants’ goods and services are not limited to any particular field of use; thus, the registrants' goods and services could also be used in the field of website hosting. Thus, the trademark examining attorney finds that applicant's and the registrants’ goods and services remain related.

 

Further, the parties’ marks remain identical or highly similar in sound and appearance.

 

Therefore, the Trademark Section 2(d) refusal as to the cited registrations is continued and maintained.

 

 

POTENTIAL REFUSAL CONTINUED AND MAINTAINED

 

In its response, applicant presented arguments as to the reasons it believes its applied-for mark is not likely to cause confusion with the prior pending application(s). A copy of the relevant information pertaining to the cited prior pending application(s) was included with the first Office Action.

 

The trademark examining attorney has carefully considered applicant’s arguments; however, the arguments are not found to be persuasive. Specifically, the trademark examining attorney finds that applicant's mark remains identical in sound to the dominant portion of the mark in the prior-filed application, and that the parties’ goods remain related.

 

Therefore, the potential Trademark Act Section 2(d) refusal for a likelihood of confusion is continued and maintained.

 

 

REQUIREMENT CONTINUED AND MAINTAINED

 

The following requirement is continued and maintained:  Identification amendment required

 

Class 9

• downloadable computer software in relation to web hosting;
• • makes unclear the function of the software in relation to website hosting
  • Suggested wording: downloadable computer software for enabling web hosting
• magnetic data carriers, namely, recording discs sold empty;
• • makes unclear whether these goods are sold recorded with content in a particular field, or sold blank
  • Suggested wording:  magnetic data carriers, namely, blank recording discs
• compact discs, DVDs and other digital recording media being video cassettes sold empty;
• • makes unclear whether these goods are sold recorded with content in a particular field, or sold blank
  • Suggested wording: blank compact discs, DVDs and other digital recording media being blank video cassettes

 

Class 42

• technology consultancy services, namely, computer hardware;
• • incongruous; makes unclear the nature of the services in relation to computer hardware; amend to justify classification in Class 42
  • Suggested wording: technology consultancy services in the technology field of computer hardware systems
• industrial analysis and research services in the field of computer hardware;
• • must be amended to make clear the nature of the services in Class 42
  • Suggested wording: Scientific and technological services, namely, industrial analysis and research in the field of computer hardware

 

 

REASON FOR SUSPENSION

 

The application is suspended for the reason(s) specified below.  See 37 C.F.R. §2.67; TMEP §§716 et seq. 

 

The pending application(s) below has an earlier filing date or effective filing date than applicant’s application.  If the mark in the application(s) below registers, the USPTO may refuse registration of applicant’s mark under Section 2(d) because of a likelihood of confusion with the registered mark(s). 15 U.S.C. §1052(d); see 37 C.F.R. §2.83; TMEP §§1208.02(c). Action on this application is suspended until the prior-filed application(s) below either registers or abandons.  37 C.F.R. §2.83(c).  Information relevant to the application(s) below was sent previously.

 

            - U.S. Application Serial No. 87175849

 

Suspension process.  The USPTO will periodically check this application to determine if it should remain suspended.  See TMEP §716.04.  As needed, the trademark examining attorney will issue a letter to applicant to inquire about the status of the reason for the suspension.  TMEP §716.05. 

 

No response required.  Applicant may file a response, but is not required to do so. 

 

 

/Justine N. Burke/

Justine N. Burke

Trademark Examining Attorney

Law Office 121

571-270-1631

Justine.Burke@uspto.gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on June 15, 2020 for

U.S. Trademark Application Serial No. 79271318

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter.  Please follow the steps below.

 

(1)  Read the official letter.  No response is necessary.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

/Justine N. Burke/

Justine N. Burke

Trademark Examining Attorney

Law Office 121

571-270-1631

Justine.Burke@uspto.gov  

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”