To: | Kretek International, Inc. (trademarks@mayback.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87022131 - VOODOO - Kretek/VOODO |
Sent: | 12/5/2016 10:02:55 AM |
Sent As: | ECOM120@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87022131
MARK: VOODOO
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CORRESPONDENT ADDRESS: |
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/trademarks/index.jsp
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APPLICANT: Kretek International, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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SUSPENSION NOTICE: NO RESPONSE NEEDED
ISSUE/MAILING DATE: 12/5/2016
The trademark examining attorney is suspending action on the application for the reason stated below. See 37 C.F.R. §2.67; TMEP §§716 et seq.
The effective filing date of the pending application identified below precedes the filing date of applicant’s application. If the mark in the referenced application registers, applicant’s mark may be refused registration under Section 2(d) because of a likelihood of confusion with that registered mark. See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, action on this application is suspended until the earlier-filed referenced application is either registered or abandoned. 37 C.F.R. §2.83(c). A copy of information relevant to this referenced application was sent previously.
- Application Serial No. 86251312 ("BLACK VOODOO")
In the previous Office action dated May 27, 2016, the trademark examining attorney refused registration of the applied-for mark based on the following: Section 2(d) refusal. In addition, applicant was required to satisfy the following requirement: identification of goods requirement. The trademark examining attorney also advised the applicant of prior-pending U.S. Application Serial Nos. 86251312 (“BLACK VOODOO”), 86501237 (“VOODOO GOLD”), 86569269 (“VUDU”), and 86860384 (“VOODOO VAPES”).
The following refusal has been obviated: Section 2(d) refusal. See TMEP §§713.02, 714.04.
In addition, the trademark examining attorney notes that U.S. Application Serial Nos. 86569269 (“VUDU”) and 86860384 (“VOODOO VAPES”) have been abandoned, and the trademark examining attorney withdraws the advisory with regard to U.S. Application Serial No. 86501237 (“VOODOO GOLD”).
The trademark examining attorney has reviewed applicant’s arguments against the likelihood of confusion with Application Serial No. 86251312 ("BLACK VOODOO") and has found them unpersuasive at this time.
REQUIREMENT CONTINUED AND MAINTAINED: The following requirement is continued and maintained: identification of goods requirement. The trademark examining attorney notes that the applicant has argued that because its identification was accepted in a previous applicant, it should be accepted in the present applicant. However, the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual shows that the entry on which applicant’s identification is based was amended on January 1, 2015 to add “other than essential oils” to clarify the nature of the goods, as tobacco flavorings that are essential oils are classified in International Class 003.
The USPTO will periodically conduct a status check of the application to determine whether suspension remains appropriate, and the trademark examining attorney will issue as needed an inquiry letter to applicant regarding the status of the matter on which suspension is based. TMEP §§716.04, 716.05. Applicant will be notified when suspension is no longer appropriate. See TMEP §716.04.
No response to this notice is necessary; however, if applicant wants to respond, applicant should use the “Response to Suspension Inquiry or Letter of Suspension” form online at http://teasroa.gov.uspto.report/rsi/rsi.
/Sandra Snabb/
Examining Attorney
Law Office 120
571-272-4633
Sandra.Snabb@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.