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:  September 08, 2021

International Registration No. 1558422

 

 

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(s).  88839960

 

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. 

 

STATUS OF REMAINING ISSUES

 

1. The likelihood of confusion refusal with the marks in U.S. Registration Nos. 3231175, 3678234, 4322064, 4975403, and 5689339 is hereby maintained and continued.  Applicant’s specific arguments will be addressed in a later action.  In the meantime, please note that applicant’s goods and services remain indefinite and overly broad and would encompass the various registrants’ goods, services, and/or fields.  Similarly, some of the cited registrations have broadly worded goods, services, and/or fields of use that would overlap or be closely related to applicant’s applied-for goods, services and/or fields of use.

 

2. The likelihood of confusion refusal with the marks in U.S. Registration Nos. 5016439, 5196097, 5287804, and 5446575 is hereby withdrawn in light of the amended identification of goods and services.

 

3. The reference to prior pending Serial No. 88574271 is hereby withdrawn because it has been abandoned.

 

4. The reference to prior pending Serial No. 88550104 is hereby withdrawn in light of the amended identification of goods and services.

 

5. Prior pending Serial Nos. 87708769 and 87708782 have since registered and will be cited against applicant.

 

6. The amended identification of goods and services is unacceptable for the reasons noted below.  Please note proposed changes in bold type, strikethroughs reflecting deletions, and applicant should pay particular attention to language removed or inserted by the trademark examining attorney: 

 

International Class 009: Downloadable computer game software; downloadable software applications _______ {clarify specific function(s)} in the field of memory loss, dementia, and Alzheimer's disease; ______ {clarify whether “DVDs; CDs” are blank or pre-recorded, and if pre-recorded the subject matter}; recorded computer software, downloadable software applications, and pre-recorded DVDs and CDs all featuring computer games for memory and sensory stimulation and for relaxation; radios; radios incorporating alarm clocks; ______ {clarify “electronic calendars; electronic calendar clocks” to indicate goods in Class 9}; apparatus for processing, recording, reproducing or transmitting sound, images or video; all of the foregoing goods and fields of use relate to the field of memory loss, dementia, and Alzheimer's disease; all of the foregoing excluding, however, software and other goods/services for use by employees and employers at worksites to facilitate their purchase of restaurant meals, and further excluding software and other goods/services for providing restaurant meals to employees and employers at their work sites

 

International Class 016: Printed matter, namely, _______ {clarify types, e.g. journals} in the field of memory loss, dementia, and Alzheimer's disease; books in the field of memory loss, dementia, and Alzheimer's disease; colouring books; memory books being photo albums; albums, namely, ______ {clarify types, e.g. scrapbook albums, sticker albums, stamp albums}; photograph albums; photographs; stationery; cards, namely, ______ {clarify types, e.g. informational cards, note cards, greeting cards}; artists' materials, namely, ______ {clarify goods, e.g. artists' brushes, canvas panels for artists}; arts, crafts and modelling equipment, namely, ______ {clarify goods, e.g. arts and craft clay kits, construction paper, modelling clay}; printed instructional, teaching and learning materials in the field of memory loss, dementia, and Alzheimer's disease; printed matter, namely, ______ {clarify goods, e.g. calendars, posters, printed rebus puzzles} for memory, sensory and tactile stimulation and for relaxation; all of the foregoing goods and fields of use relate to the field of memory loss, dementia, and Alzheimer's disease

 

International Class 028: Games and playthings, namely, ______ {clarify goods, e.g. card games, board games, dolls}; toys, namely, ______ {clarify goods, e.g. action figures, drawing toys}; puzzles; jigsaw puzzles; maze puzzles; card games; dice games; board games; memory games; spinning fidget toys; _______ {clarify specific “games, toys, playthings,” e.g. card games, positionable toy figures, squeeze toys} and puzzles all for memory, sensory and tactile stimulation and for relaxation; all of the foregoing goods and fields of use relate to the field of memory loss, dementia, and Alzheimer's disease

 

International Class 041: Organisation of _______ {clarify “events,” e.g. workshops}, seminars, teaching activities in the nature of _______ {clarify “teaching activities,” e.g. classes, lectures} and recreational activities in the nature of _______ {clarify “recreational activities,” e.g. cultural and arts events, movie showing} all in the field of memory loss, dementia and Alzheimer's disease and all for educational or entertainment purposes; education services, namely, providing ______ {indicate form of educational activity, e.g. classes, seminars, workshops} and training all in the field of memory loss, dementia and Alzheimer's disease; all of the foregoing excluding, however, software, goods and services for use by employees and employers at worksites to facilitate their purchase of restaurant meals, and further excluding software, goods and services for providing restaurant meals to employees and employers at their work sites

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably narrowed.  See 37 C.F.R. §2.71(a); TMEP §§1402.06, 1904.02(c)(iv).  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably narrowed.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).  Additionally, for applications filed under Trademark Act Section 66(a), the scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau); and the classification of goods and/or services may not be changed from that assigned by the International Bureau.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b).  Further, in a multiple-class Section 66(a) application, classes may not be added or goods and/or services transferred from one existing class to another.  37 C.F.R. §2.85(d); TMEP §1401.03(d).

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

 

 

/Hai-Ly Lam/

Trademark Examining Attorney

United States Patent & Trademark Office

Law Office 119

Tel. 571-272-3354

hai.lam@uspto.gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on September 08, 2021 for

U.S. Trademark Application Serial No. 79297161

 

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. 

 

/Hai-Ly Lam/

Trademark Examining Attorney

United States Patent & Trademark Office

Law Office 119

Tel. 571-272-3354

hai.lam@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.”