To: | American Student Dental Association (mvallone@btlaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87177031 - CONTOUR - 39008-258435 |
Sent: | 7/17/2017 2:38:36 PM |
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. 87177031
MARK: CONTOUR
|
|
CORRESPONDENT ADDRESS: |
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/trademarks/index.jsp
|
APPLICANT: American Student Dental Association
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
|
SUSPENSION NOTICE: NO RESPONSE NEEDED
ISSUE/MAILING DATE: 7/17/2017
This Suspension Notice is in response to Applicant’s communication of June 30, 2017. In an Office Action dated January 3, 2017 the examining attorney required applicant to provide a definite amended identification of goods and services, to classify the goods and services properly, and to adhere to multiple class application requirements, if necessary. Based on applicant’s response, applicant has satisfied the noted requirements in the June 2017 Action.
The examining attorney also previously noted two prior-filed pending applications. The examining attorney has considered applicant’s arguments regarding the potential likelihood of confusion between applicant’s mark and the marks in the prior-filed applications. With respect to applicant’s arguments on channels of trade, the examining attorney may only consider limitations that appear in the identifications of goods and services in the application and the potential registrations and may not consider extrinsic evidence of actual use. Further, applicant’s application and the prior-filed applications provide publications in sufficiently broad fields that consumers could believe that such publications come from the same source. For example, companies that publish magazines about general human interests, fitness, and health may also publish magazines on students’ rights, personal financial decisions, and/or dentistry. As such, these applications remain a potential concern.
Thus, the examining attorney is now suspending action on the application based on the prior-filed pending applications for the reasons stated below. See 37 C.F.R. §2.67; TMEP §§716 et seq.
The effective filing date of the pending application(s) identified below precedes the filing date of applicant’s application. If the mark in the referenced application(s) registers, applicant’s mark may be refused registration under Section 2(d) because of a likelihood of confusion with that registered mark(s). 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(s) is either registered or abandoned. 37 C.F.R. §2.83(c). A copy of information relevant to this referenced application(s) was sent previously.
- Application Serial No(s). 87085788 and 86545541
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.
If the applicant has any questions regarding this Suspension Notice, please telephone the assigned examining attorney.
/gaynne g zimmerman/
Gaynne G. Zimmerman
Examining Attorney
Law Office 120
Telephone: 571-272-4027
gaynne.zimmerman@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.