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:  October 21, 2020

International Registration No. 1514575

 

 

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

 

The pending applications below has an earlier filing date or effective filing date than applicant’s application.  If the mark in the applications below registers, the USPTO may refuse registration of applicant’s mark under Section 2(d) because of a likelihood of confusion with the registered marks. 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 applications below either registers or abandons.  37 C.F.R. §2.83(c).  Information relevant to the applications below is provided in this letter.

 

            - U.S. Application Serial Nos. 87607952, 87856272, and 87856295

 

Applicant indicates that it has a legal relationship with the applicants in the potentially-conflicting prior pending applications.  However, a legal relationship between the parties is insufficient to overcome a likelihood of confusion unless the parties constitute a “single source.”  That is, the legal relationship between the parties must exhibit a “unity of control” over the nature and quality of the goods and/or services in connection with which the trademarks and/or service marks are used, and a “unity of control” over the use of the trademarks and/or service marks.  See In re Wella A.G., 5 USPQ2d 1359, 1361 (TTAB 1987); see also TMEP §1201.07.

 

Unity of control is presumed in instances where, absent contradictory evidence, one party owns (1) all of another entity, or (2) substantially all of another entity and asserts control over the activities of that other entity.  See TMEP §1201.07(b)(i)-(ii).  Such ownership is established, for example, when one party owns all or substantially all of the stock of another or when one party is a wholly owned subsidiary of another.  See In re Wella A.G., 5 USPQ2d at 1361; TMEP §1201.07(b)(i)-(ii).  It is additionally presumed when, absent contradictory evidence, applicant is shown in USPTO records as a joint owner of the cited registration, or the owner of the registration is listed as a joint owner of the application, and applicant submits a written statement asserting control over the use of the mark by virtue of joint ownership.  TMEP §1201.07(b)(ii). 

 

However, in most other situations, additional evidence is required to show unity of control.  For example, if the parties are sister corporations or if the parties share certain stockholders, directors or officers in common, additional evidence must be provided to show how the parties constitute a single source.  See In re Pharmacia, Inc., 2 USPQ2d 1883, 1884 (TTAB 1987); TMEP §1201.07(b)(iii). 

 

Therefore, applicant must provide a written statement explaining the nature of the legal relationship between the parties.  In addition, if neither party owns all or substantially all of the other party, and USPTO records do not show their joint ownership of the application or cited registration, applicant must provide a detailed written explanation and documentary evidence showing the parties’ “unity of control” over the nature and quality of the goods and/or services in connection with which the trademarks and/or service marks are used, and the parties’ “unity of control” over the use of the trademarks and/or service marks.  See TMEP §1201.07(b)(i)-(iii).  This statement and, if necessary, explanation must be verified with an affidavit or signed declaration under 37 C.F.R. §2.20.  TMEP §1201.07(b)(ii)-(iii); see 37 C.F.R. §2.193(e)(1).  However, if one party owns all of the other entity, and there is no contradictory evidence of record, the written statement need not be verified.  TMEP §1201.07(b)(i).

 

Requirements resolved and maintained and continued.  The following requirements are satisfied: 

 

• Entity information provided; and
• U.S.-licensed attorney has been appointed.

 

See TMEP §713.02.

 

The following requirements are maintained and continued: 

 

• Identification of Services – Amendment Required: The identification of services for the wording “electronic transfer and exchange of a virtual currency for use by members of an on-line community via a global computer network” is indefinite and must be clarified because it is unclear that the services are being provided.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may adopt the following identification, if accurate:  “   Financial services, namely, providing electronic transfer and exchange of a virtual currency for use by members of an on-line community via a global computer network.”
• Mark Description – Amendment Required: The drawing shows the applied-for mark in various colors, including white; however, the description of the mark does not reference all of the areas in which white appear.  The color claim and description must be complete and reference all the colors in the mark.  See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a) et seq.  Therefore, applicant must clarify whether the remaining white is used as part of the mark or to indicate background, outlining, shading, and/or transparent areas.  TMEP §807.07(d); see 37 C.F.R. §2.61(b).

 

To clarify how black, white and/or gray are being used in the mark, applicant may satisfy one of the following:

 

(1)        If the remaining white is a feature of the mark, applicant must amend the description to identify where white appears in the literal and/or design elements of the mark.  The following color claim and description are suggested, if accurate:

 

Color claim:  “The colors white, green, blue, and black are claimed as a feature of the mark.”

 

Description:  “The mark consists of the outline of a square design that is green on the left, white in the middle, and blue on the right; to the right of the design is the word "BitMEX" in black. All over a white background.”

 

(2)        If the remaining white is not a feature of the mark, applicant must amend the description to state that the remaining white represents background, outlining, shading and/or transparent areas and is not part of the mark.  The following color claim and description are suggested, if accurate:

 

Color claim:  “The colors white, green, blue, and black are claimed as a feature of the mark.”

 

Description:  “The mark consists of the outline of a square design that is green on the left, white in the middle, and blue on the right; to the right of the design is the word "BitMEX" in black. The remaining white represents background, outlining, shading, and/or transparent area and is not part of the mark.” TMEP §807.07(d).

 

See id.  These requirements will be made final once this application is removed from suspension, unless a new issue arises.  See TMEP §716.01.

 

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. 

 

 

/Anna Oakes/

Anna J. Oakes

Examining Attorney

Law Office 103

(571) 272-2569

aoakes1@uspto.gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on October 21, 2020 for

U.S. Trademark Application Serial No. 79278746

 

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. 

 

/Anna Oakes/

Anna J. Oakes

Examining Attorney

Law Office 103

(571) 272-2569

aoakes1@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.”