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: 4/18/2017

 

 

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. 79177962

 

The examining attorney notes that the consent agreement submitted by applicant is a “naked consent” and is insufficient to overcome a likelihood of confusion refusal because it neither (1) sets forth reasons why the parties believe there is no likelihood of confusion, nor (2) describes the arrangements undertaken by the parties to avoid confusing the public.  See In re Mastic, 829 F.2d 1114, 1117-18, 4 USPQ2d 1292, 1295-96 (Fed. Cir. 1987); In re Permagrain Prods., Inc., 223 USPQ 147, 149 (TTAB 1984); TMEP §1207.01(d)(viii).  Without additional factors to support the conclusion that confusion is unlikely, naked consents are generally accorded little weight in a likelihood of confusion determination.  See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1362, 177 USPQ 563, 568 (C.C.P.A. 1973).

 

If applicant submits a more “clothed” consent agreement indicating the registrant’s consent to the use and registration of the mark, and addressing one or both of the factors listed above, this refusal will be reconsidered.  However, consent agreements are but one factor to be taken into account with all of the other relevant circumstances bearing on a likelihood of confusion determination.  In re N.A.D. Inc., 754 F.2d 996, 999, 224 USPQ 969, 971 (Fed. Cir. 1985); In re E. I. du Pont, 476 F.2d at 1361, 177 USPQ at 567; TMEP §1207.01(d)(viii); see also In re Bay State Brewing Co., 117 USPQ2d 1958, 1963 (TTAB 2016) (“[T]here is no per se rule that a consent, whatever its terms, will always tip the balance to finding no likelihood of confusion, and it therefore follows that the content of each agreement must be examined.”).

 

Factors to be considered in weighing a consent agreement include the following:

 

(1)       Whether the consent shows an agreement between both parties;

 

(2)       Whether the agreement includes a clear indication that the goods and/or services travel in separate trade channels;

 

(3)       Whether the parties agree to restrict their fields of use;

 

(4)       Whether the parties will make efforts to prevent confusion, and cooperate and take steps to avoid any confusion that may arise in the future; and

 

(5)       Whether the marks have been used for a period of time without evidence of actual confusion.

 

See In re Four Seasons Hotels Ltd., 987 F.2d 1565, 1569, 26 USPQ2d 1071, 1073 (Fed. Cir. 1993); In re Mastic, 829 F.2d at 1117-18, 4 USPQ2d at 1295-96; cf. Bongrain Int’l (Am.) Corp. v. Delice de Fr., Inc., 811 F.2d 1479, 1485, 1 USPQ2d 1775, 1779 (Fed. Cir. 1987).

 

Further, it is unclear whether the consent agreement is signed by a person authorized to bind the registrant, Jaguar Land Rover Limited a United Kingdom Limited Company. See TMEP §611.06(g), §1207.01(d)(viii).

 

The examining attorney also notes that the requirement for a signed declaration has been SATISFIED.

 

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.

 

 

 

/Breanna Freeman/

Examining Attorney

Law Office 114

(571) 272-7099

breanna.freeman@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 4/18/2017 FOR U.S. APPLICATION SERIAL NO.87116448

 

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.