Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
PTO Form 1822 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
Response to Suspension Inquiry or Letter of Suspension
The table below presents the data as entered.
Input Field
|
Entered
|
| SERIAL NUMBER |
86329917 |
| LAW OFFICE ASSIGNED |
LAW OFFICE 104 |
| MARK SECTION |
| MARK |
http://uspto.report/TM/86329917/mark.png |
| LITERAL ELEMENT |
MOMENTO |
| STANDARD CHARACTERS |
YES |
| USPTO-GENERATED IMAGE |
YES |
| MARK STATEMENT |
The mark consists of standard characters, without claim to any particular font style, size or color. |
| FOREIGN REGISTRATION |
| The applicant herein submits a digitized image of a copy, a certification, or a certified copy of a registration in the
applicant's country of origin showing that the mark has been registered in that country, and that the registration is in full force and effect. If the foreign registration is not in English, an
English translation thereof is being submitted. The applicant hereby requests removal of this application from suspension for further action by the examining attorney. |
| DELETE SECTION 1(b) BASIS |
Yes |
FOREIGN REGISTRATION
COUNTRY |
Canada |
| FOREIGN REGISTRATION NUMBER |
TMA1027174 |
FOREIGN REGISTRATION
DATE |
06/18/2019 |
| FOREIGN EXPIRATION DATE |
06/18/2029 |
| FOREIGN REGISTRATION FILE NAME(S) |
| ORIGINAL PDF FILE |
FR_144121130114-143113751_._93887-111CAcert.PDF |
CONVERTED PDF FILE(S)
(3 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\863\299\86329917\xml11\RSI0004.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\863\299\86329917\xml11\RSI0005.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\863\299\86329917\xml11\RSI0006.JPG |
| ADDITIONAL STATEMENTS SECTION |
| MISCELLANEOUS STATEMENT |
Section 2(d) Refusal In the Suspension Inquiry dated February 20, 2019, the Examining Attorney maintained a refusal to register Applicant's
mark MOMENTO based on an alleged likelihood of confusion with the mark MOMENTO (AND DESIGN) in U.S. Registration No. 3589766. Applicant hereby respectfully submits that the cited registration should
not bar registration of the subject mark in light of the attached Letter of Consent and the Section 7 amendments to the cited registration. In accordance with the standards established by In re E.I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973), the Trademark Manual of Examining Procedure ("TMEP") provides a number of factors for determining whether a likelihood
of confusion exists between two marks. One important factor is the market interface between the applicant and the owner of a prior registration. See TMEP § 1207.01(d)(viii). As the Court noted in the
du Pont case, "when those most familiar with use in the marketplace and most interested in precluding confusion enter agreements designed to avoid it, the scales of evidence are clearly tilted." 476
F.2d at 1363, 177 U.S.P.Q. at 568. In the instant case, the Applicant and the cited registrant have, after careful review, concluded that there are significant differences between the parties'
respective marks in appearance, pronunciation, meaning and overall commercial impression such that confusion would not be likely. The parties also agree that their goods are not intended to be
competitive, target different consumer bases, and appeal to consumers who are sophisticated and use great care in selecting the identified goods, such that there is no danger of confusion presented
by these two companies' use of their respective marks for their respective goods. Pursuant to TMEP § 1207.01(d)(viii), an Examining Attorney should give great weight to a proper consent agreement and
"should not interpose his or her own judgment that confusion is likely" when a credible consent agreement is executed between the parties. Amalgamated Bank of New York v. Amalgamated Trust &
Savings Bank, 842 F.2d 1270, 6 U.S.P.Q.2d 1305 (Fed. Cir. 1988); Bongrain Int'l (American) Corp. v. Delice de France Inc., 811 F.2d 1479, 1 U.S.P.Q.2d 1775 (Fed. Cir. 1987); and In re N.A.D. Inc.,
754 F.2d 996, 224 U.S.P.Q. 969 (Fed. Cir. 1985). Applicant hereby submits that the attached Letter of Consent from the cited registrant satisfactorily resolves the Section 2(d) refusal and
respectfully requests that the 2(d) refusal be withdrawn and the application approved for publication. Should the Examining Attorney accept the corresponding foreign certificate of registration under
Section 44(e), Applicant respectfully requests deletion of the intent to use filing basis under Section 1(b). The subject application is to proceed to publication based solely on the corresponding
foreign certificate of registration under Section 44(e). |
| MISCELLANEOUS FILE NAME(S) |
| ORIGINAL PDF FILE |
mis-144121130114-20190731143113751641_._93887-momentoLOC.pdf |
CONVERTED PDF FILE(S)
(2 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\863\299\86329917\xml11\RSI0002.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\863\299\86329917\xml11\RSI0003.JPG |
| SIGNATURE SECTION |
| RESPONSE SIGNATURE |
/Richard Y. Kim/ |
| SIGNATORY'S NAME |
Richard Y. Kim |
| SIGNATORY'S POSITION |
Attorney of Record - DC Bar Member |
| SIGNATORY'S PHONE NUMBER |
202.756.8000 |
| DATE SIGNED |
07/31/2019 |
| AUTHORIZED SIGNATORY |
YES |
| FILING INFORMATION SECTION |
| SUBMIT DATE |
Wed Jul 31 17:00:30 EDT 2019 |
| TEAS STAMP |
USPTO/RSI-XXX.XXX.XXX.XXX
-20190731170030691711-863
29917-62068499cf311ab6415
8deb09b135c7bdac68d08268c
25eb11648b898c987c-N/A-N/
A-20190731143113751641 |
Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
PTO Form 1822 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
Response to Suspension Inquiry or Letter of Suspension
To the Commissioner for Trademarks:
Application serial no.
86329917 MOMENTO(Standard Characters, see http://uspto.report/TM/86329917/mark.png) has been amended as follows:
FOREIGN REGISTRATION
The applicant herein submits a digitized image of a copy, a certification, or a certified copy of a registration in the applicant's country of origin showing that the mark has been registered in that
country, and that the registration is in full force and effect. If the foreign registration is not in English, an English translation thereof is being submitted. The applicant hereby requests removal
of this application from suspension for further action by the examining attorney.
The applicant requests that the examining attorney delete the Section 1(b) basis for the goods and/or services that the foreign registration submitted herewith covers,
IF the Section 44(e)
basis is accepted for those goods and/or services.
Filing Basis: Section 44(e), Based on Foreign Registration: A copy of Canada registration number TMA1027174 registered 06/18/2019, with a renewal date of __________ and an expiration date of
06/18/2029, and translation thereof (if appropriate), is attached in accordance with 15 U.S.C. Section 1126(e), as amended.
Original PDF file:
FR_144121130114-143113751_._93887-111CAcert.PDF
Converted PDF file(s) (3 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
ADDITIONAL STATEMENTS
Miscellaneous Statement
Section 2(d) Refusal In the Suspension Inquiry dated February 20, 2019, the Examining Attorney maintained a refusal to register Applicant's mark MOMENTO based on an alleged likelihood of confusion
with the mark MOMENTO (AND DESIGN) in U.S. Registration No. 3589766. Applicant hereby respectfully submits that the cited registration should not bar registration of the subject mark in light of the
attached Letter of Consent and the Section 7 amendments to the cited registration. In accordance with the standards established by In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q.
563 (C.C.P.A. 1973), the Trademark Manual of Examining Procedure ("TMEP") provides a number of factors for determining whether a likelihood of confusion exists between two marks. One important factor
is the market interface between the applicant and the owner of a prior registration. See TMEP § 1207.01(d)(viii). As the Court noted in the du Pont case, "when those most familiar with use in the
marketplace and most interested in precluding confusion enter agreements designed to avoid it, the scales of evidence are clearly tilted." 476 F.2d at 1363, 177 U.S.P.Q. at 568. In the instant case,
the Applicant and the cited registrant have, after careful review, concluded that there are significant differences between the parties' respective marks in appearance, pronunciation, meaning and
overall commercial impression such that confusion would not be likely. The parties also agree that their goods are not intended to be competitive, target different consumer bases, and appeal to
consumers who are sophisticated and use great care in selecting the identified goods, such that there is no danger of confusion presented by these two companies' use of their respective marks for
their respective goods. Pursuant to TMEP § 1207.01(d)(viii), an Examining Attorney should give great weight to a proper consent agreement and "should not interpose his or her own judgment that
confusion is likely" when a credible consent agreement is executed between the parties. Amalgamated Bank of New York v. Amalgamated Trust & Savings Bank, 842 F.2d 1270, 6 U.S.P.Q.2d 1305 (Fed.
Cir. 1988); Bongrain Int'l (American) Corp. v. Delice de France Inc., 811 F.2d 1479, 1 U.S.P.Q.2d 1775 (Fed. Cir. 1987); and In re N.A.D. Inc., 754 F.2d 996, 224 U.S.P.Q. 969 (Fed. Cir. 1985).
Applicant hereby submits that the attached Letter of Consent from the cited registrant satisfactorily resolves the Section 2(d) refusal and respectfully requests that the 2(d) refusal be withdrawn
and the application approved for publication. Should the Examining Attorney accept the corresponding foreign certificate of registration under Section 44(e), Applicant respectfully requests deletion
of the intent to use filing basis under Section 1(b). The subject application is to proceed to publication based solely on the corresponding foreign certificate of registration under Section
44(e).
Original PDF file:
mis-144121130114-20190731143113751641_._93887-momentoLOC.pdf
Converted PDF file(s) (2 pages)
Miscellaneous File1
Miscellaneous File2
Response Suspension Inquiry Signature
Signature: /Richard Y. Kim/ Date: 07/31/2019
Signatory's Name: Richard Y. Kim
Signatory's Position: Attorney of Record - DC Bar Member
Signatory's Phone Number: 202.756.8000
The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and
other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.
attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a
signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney
appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this
matter.
Serial Number: 86329917
Internet Transmission Date: Wed Jul 31 17:00:30 EDT 2019
TEAS Stamp: USPTO/RSI-XXX.XXX.XXX.XXX-20190731170030
691711-86329917-62068499cf311ab64158deb0
9b135c7bdac68d08268c25eb11648b898c987c-N
/A-N/A-20190731143113751641
