UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

REQUEST FOR RECONSIDERATION DENIED

 

ISSUE/MAILING DATE: 2/6/2018

 

 

This Office action responds to applicant’s communication dated January 18, 2018 where applicant:

 

1. Deleted Class 35;
2. Submitted additional arguments against the Section 2(d) Refusal.

The examining attorney has reviewed the applicant’s response and determined the following:

1. The deletion of Class 35 is acceptable and made of record;
2. The additional arguments are not persuasive, therefore, the FINAL Refusal is continued and maintained.

 

REQUEST DENIED:  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. §2.63(b)(3); TMEP §§715.03(a)(ii)(B), 715.04(a).  The following refusal made final in the Office action dated July 18, 2018 are maintained and continue to be final:  Section 2(d) Refusal for Registration No. 3177971.  See TMEP §§715.03(a)(ii)(B), 715.04(a). 

 

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

 

Applicant argued that the goods are different, which as discussed in the first Office action and FINAL action is not the standard for likelihood of confusion.  The compared goods need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).  The previous Office action and FINAL evidence provide evidence that the goods are provided by the same source and travel in the same trade channels.  Applicant also argues that the goods travel through different trade channels, however, previous evidence supports the argument that the goods travel through the same trade channel.  Accordingly, the previous Office action and FINAL action demonstrate that that the goods are related.  Therefore, applicant’s argument is not persuasive.

 

Applicant argues also that no likelihood of confusion exists because (1) applicant owned a prior registration for a substantially similar or identical mark for identical or identical in part goods to those in the application, and (2) such registration has co-existed with the cited registration.  Applicant concludes there is no likelihood of confusion between the applied-for mark and registrant’s mark; therefore, the trademark examining attorney should withdraw the Trademark Act Section 2(d) refusal.   

 

However, in In re Strategic Partners, Inc., 102 USPQ2d 1397, 1399-1400 (TTAB 2012), the Trademark Trial and Appeal Board only reversed a Section 2(d) refusal based on an applicant’s prior registration for the following unique set of facts:  (1) an applicant owns an existing prior registration for the same mark or a mark with no meaningful difference from the applied-for-mark; (2) the goods were identical in part; and (3) the prior registration had co-existed for at least five years with the cited registration (both being more than five years old and thus immune from attack on likelihood of confusion grounds).  See TMEP §1207.01.  The Board acknowledged these facts constituted a “unique situation,” such that an applicant’s prior registration would generally need to fit within these precise parameters to overcome a Section 2(d) refusal.  In re Strategic Partners, Inc., 102 USPQ2d at 1400; see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793-94 (TTAB 2017); TMEP §1207.01.

 

In this case, by contrast, applicant’s prior registration does not correspond to the facts set forth in In re Strategic Partners, Inc.  See TMEP §1207.01.  Specifically, applicant no longer owns the prior registration as the prior registration has died and no longer exists. Thus applicant’s prior dead registration does not obviate the Section 2(d) refusal.

 

Therefore, applicant’s arguments are not persuasive.  Accordingly, the request is denied.

 

If applicant has already filed a timely notice of appeal with the Trademark Trial and Appeal Board, the Board will be notified to resume the appeal.  See TMEP §715.04(a).

 

If no appeal has been filed and time remains in the six-month response period to the final Office action, applicant has the remainder of the response period to (1) comply with and/or overcome any outstanding final requirement(s) and/or refusal(s), and/or (2) file a notice of appeal to the Board.  TMEP §715.03(a)(ii)(B); see 37 C.F.R. §2.63(b)(1)-(3).  The filing of a request for reconsideration does not stay or extend the time for filing an appeal.  37 C.F.R. §2.63(b)(3); see TMEP §§715.03, 715.03(a)(ii)(B), (c). 

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

/Emma Sirignano/

Examining Attorney, Law Office 113

United States Patent and Trademark Office

(571) 272-7031

emma.sirignano@uspto.gov