Suspension Letter

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

SUSPENSION NOTICE: NO RESPONSE NEEDED

 

ISSUE/MAILING DATE: 5/18/2015

 

 

This Office action is in response to applicant’s communication filed on February 27, 2015.

 

In a previous Office action dated December 26, 2014, applicant was required to satisfy the following requirement: Explain mark’s significance. 

 

In addition, applicant was advised that the marks in prior-filed pending U.S. Application Serial Nos. 86196701 (GME SUPPLY CO) and 86196735 (GME SUPPLY CO & design) could give rise to a conflict with applicant’s mark.

 

Based on applicant’s response, wherein applicant provided the required information about mark’s significance, the following requirement has been satisfied: Explanation of mark’s significance.  See TMEP §§713.02, 714.04.

 

In the same response, applicant argued that the marks in the pending applications are not likely to cause confusion with applicant’s mark.  Specifically, applicant pointed out that applicant’s goods are entirely different from the registrant’s services because the applied-for goods involve expensive metal panels, which are extremely sophisticated pieces of equipment that require technical expertise, while the equipment and industrial supplies offered by registrant are small-scale, less expensive portable products. 

 

In support, applicant submitted webpages from applicant’s and registrant’s websites, and advertising material with images and textual descriptions of the applied-for goods.  However, this argument is unpersuasive because registrant’s identification of “online retail store services featuring fall prevention safety equipment and fall protection supplies” in Class 35 and “delivery of fall protection safety equipment” in Class 39 is broadly worded to include the retail sale and delivery services of products that are similar to those of applicant in the present case.   With respect to applicant’s and registrant’s goods and services, the question of likelihood of confusion is determined based on the description of the goods and services stated in the applications [and registrations] at issue, not on extrinsic evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).  In this case, the identifications set forth in the applications have no restrictions as to nature, type, channels of trade, or classes of purchasers.  Therefore, it is presumed that the respective goods and services travel in all normal channels of trade, and are available to the same class of purchasers. 

 

 Accordingly, the trademark examining attorney has found applicant’s arguments unpersuasive and still believes there may be a likelihood of confusion between applicant’s mark and the marks in the cited prior-pending applications, should they register.  Thus, this application is suspended.

 

 

 

/Miroslav Novakovic/

Examining Attorney

Law Office 108

(571) 272-2866

miroslav.novakovic@uspto.gov

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the Trademark Electronic Application System (TEAS) form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 5/18/2015 FOR U.S. APPLICATION SERIAL NO.86387734

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.gov.uspto.report/, enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.