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: 7/24/2017

 

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. 86671131

 

REFUSA CONTINUED AND MAINTAINED:  The following refusal is continued and maintained: Section 2(d) Refusal for a Likelihood of Confusion with U.S. Reg. No. 4914607.

 

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.

Notes:

 

The trademark examining attorney notes that the following requirements have been satisfied: (1) Specimen Refusal; (2) Requirement to Provide Information About Specimen; and (3) Requirement to Explain the Mark’s Significance.   See TMEP §§713.02, 714.04. 

 

The examining attorney notes that U.S. App. No. 86622246 has matured to registration, now U.S. Reg. No. 5178886, and argument regarding a likelihood of confusion with the mark therein will be presented upon resolution of U.S. App. No. 86671131.  It is noted, however, in light of applicant’s argument against a likelihood of confusion, that the applicant’s mark and the registration are essentially phonetic equivalents and thus sound similar.  Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).

 

Furthermore, it is noted that the applicant has amended its identification of goods in International Class 4 to overcome the Section 2(d) Refusal; however, as noted in the previous Office Action, the identification set forth in the application—as to “charcoal”, “charcoal briquettes”, and “charcoal briquettes (tadon)—and registration has no restrictions as to nature, type, channels of trade, or classes of purchasers.  Therefore, it is presumed that these goods travel in all normal channels of trade, and are available to the same class of purchasers.  Further, the registration uses broad wording to describe the goods for “fuels, namely, biofuels, [and] renewable fuels”, and this wording is presumed to encompass all goods of the type described, including those in applicant’s more narrow identification—specifically, applicant’s goods for “Charcoal; Charcoal briquettes; Charcoal briquettes (tadon); Coconut charcoal for fuel, in all cases to be used with a hookah apparatus”.

 

To the extent that the applicant argues that the registrant’s goods are narrowly tailored to a specific use—namely, only offered at gas stations—the examining attorney notes that the presumption under Trademark Act Section 7(b), 15 U.S.C. §1057(b), is that the registrant is the owner of the mark and that use of the mark extends to all goods identified in the registration.  The presumption also implies that the registrant operates in all normal channels of trade and reaches all classes of purchasers of the identified goods.  In re Melville Corp., 18 USPQ2d 1386, 1389 (TTAB 1991); McDonald’s Corp. v. McKinley, 13 USPQ2d 1895, 1899 (TTAB 1989); RE/MAX of Am., Inc. v. Realty Mart, Inc., 207 USPQ 960, 964-65 (TTAB 1980); see TMEP §1207.01(a)(iii).

 

 

 

/David I. Dubin/

Examining Attorney

Law Office 107

(571) 272-6722

david.dubin@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 7/24/2017 FOR U.S. APPLICATION SERIAL NO.87179664

 

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.