To: | Integra LTC Solution, LLC (tmoses@seiplaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87109029 - INTEGRA - INT-001 |
Sent: | 4/28/2017 10:54:28 AM |
Sent As: | ECOM105@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87109029
MARK: INTEGRA
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CORRESPONDENT ADDRESS: |
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/trademarks/index.jsp
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APPLICANT: Integra LTC Solution, LLC
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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:4/28/2017
The trademark examining attorney is suspending action on the application for the reasons 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. 86149884
The following refusal is maintained and continued: Section 2(d) Refusal as to U.S. Registration no. 4810297 (ACCESSINTEGRA). See id.
Applicant was previously provided information regarding pending U.S. Application Serial No. 86149884, which may present a bar to registration of applicant’s mark based on a likelihood of confusion under Trademark Act Section 2(d). See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.
Registration was also refused under Section 2(d) with respect to U.S. Registration no. 4810297 (ACCESSINTEGRA).
In response, applicant argued that the marks in the pending application and registration are not likely to cause confusion with applicant’s mark. Specifically, applicant argued that there are differences in the goods and services, differences in the trade channels, no actual confusion, and that the marks are weak.
To make third party registrations part of the record, an applicant must submit copies of the registrations, or the complete electronic equivalent from the USPTO’s automated systems, prior to appeal. In re Jump Designs LLC, 80 USPQ2d 1370, 1372-73 (TTAB 2006); In re Ruffin Gaming, 66 USPQ2d, 1924, 1925 n.3 (TTAB 2002); TBMP §1208.02; TMEP §710.03.
Thus, the registrations mentioned by applicant are not of record and will not be considered.
With respect to the marks, the entirety of applicant's mark appears in the prior-filed application and the cited registration.
Further, the respective marks are all related to pharmaceutical and healthcare fields and include overlapping and closely related goods and services.
[A]pplicant’s assertion that it is unaware of any actual confusion occurring as a result of the contemporaneous use of the marks of applicant and registrant is of little probative value in an ex parte proceeding such as this where we have no evidence pertaining to the nature and extent of the use by applicant and registrant (and thus cannot ascertain whether there has been ample opportunity for confusion to arise, if it were going to); and the registrant has no chance to be heard from (at least in the absence of a consent agreement, which applicant has not submitted in this case).
In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984).
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 mark in the cited prior-pending application, should it register, and that a likelihood of confusion exists between the registered mark and the applied-for mark. Thus, this application is suspended and applicant's arguments will be more fully addressed in a future communication.
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.
/Sarah E. Kunkleman/
Examining Attorney
Law Office 105
(571) 272-6151
sarah.kunkleman@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.