Reconsideration Letter

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

REQUEST FOR RECONSIDERATION DENIED

 

ISSUE/MAILING DATE: 4/30/2012

 

 

The trademark examining attorney has carefully reviewed applicant’s request for reconsideration and is denying the request for the reasons stated below.  See 37 C.F.R. §2.64(b); TMEP §§715.03(a), 715.04(a).  The refusal made final in the Office action dated April 5, 2012 is maintained and continue to be final.  See TMEP §§715.03(a), 715.04(a).

 

The Office action dated April 5, 2012 made FINAL the refusal under Section 2(d) as to Registration No. 3304417 for the mark iTHUNDER.  In the request for reconsideration, the applicant argues that Registration No. 2685691 for the mark THUNDERVOLT (and Design) coexists on the Register with cited Registration No. 3304417 and as such there is no reason why applicant should not also be allowed to coexist on the Register.

 

Registration No. 2685691 is distinguishable.  The registration does not cover identical goods as those of the applicant and registrant (i.e., battery chargers).  Moreover, the registered mark contains an additional design element and an addition word (not merely an additional letter).  Registrant’s mark and applicant’s mark are both standard character drawings.  A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display.  TMEP §1207.01(c)(iii); see 37 C.F.R. §2.52(a).  Thus, a mark presented in stylized characters or otherwise in special form generally will not avoid likelihood of confusion with a mark in typed or standard characters because the marks could be presented in the same manner of display.  See, e.g., Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”); In re Melville Corp., 18 USPQ2d 1386, 1387-88 (TTAB 1991); In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2015 (TTAB 1988).

 

Further, prior decisions and actions of other trademark examining attorneys in registering different marks have little evidentiary value and are not binding upon the Office.  TMEP §1207.01(d)(vi).  Each case is decided on its own facts, and each mark stands on its own merits.  See AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973); In re Int’l Taste, Inc., 53 USPQ2d 1604, 1606 (TTAB 2000); In re Sunmarks, Inc., 32 USPQ2d 1470, 1472 (TTAB 1994).

 

In the present case, applicant’s request has not resolved all the outstanding issue(s), nor does it raise a new issue or provide any new or compelling evidence with regard to the outstanding issue(s) in the final Office action.  In addition, applicant’s analysis and arguments are not persuasive nor do they shed new light on the issues.  Accordingly, the request is denied.

 

The filing of a request for reconsideration does not extend the time for filing a proper response to a final Office action or an appeal with the Trademark Trial and Appeal Board (Board), which runs from the date the final Office action was issued/mailed.  See 37 C.F.R. §2.64(b); TMEP §§715.03, 715.03(a), (c). 

 

If time remains in the six-month response period to the final Office action, applicant has the remainder of the response period to comply with and/or overcome any outstanding final requirement(s) and/or refusal(s) and/or to file an appeal with the Board.  TMEP §715.03(a), (c).  However, if applicant has already filed a timely notice of appeal with the Board, the Board will be notified to resume the appeal when the time for responding to the final Office action has expired.  See TMEP §715.04(a).

 

 

/Julie Watson/

Trademark Attorney

Law Office 109

571-272-9236

julie.watson@uspto.gov

 

 

 

 

IMPORTANT NOTICE REGARDING YOUR TRADEMARK APPLICATION

Your trademark application (Serial No. 85453219) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office Action”) on 4/30/2012 to which you must respond.  Please follow these steps:

 

1. Read the Office letter by clicking on this link OR go to http://tmportal.gov.uspto.report/external/portal/tow and enter your serial number to access the Office letter.       

 

 PLEASE NOTE: The Office letter may not be immediately available but will be viewable within 24 hours of this e-mail notification. 

 

2. Respond within 6 months, calculated from 4/30/2012 (or sooner if specified in the Office letter), using the Trademark Electronic Application System Response to Office Action form. If you have difficulty using the USPTO website, contact TDR@uspto.gov. 

 

3. Contact the examining attorney who reviewed your application with any questions about the content of the office letter:

 

/Julie Watson/

Trademark Attorney

Law Office 109

571-272-9236

julie.watson@uspto.gov

 

WARNING

Failure to file any required response by the applicable deadline will result in the ABANDONMENT of your application.

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, please use the Trademark Electronic Application System Response to Office Action form.