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: 8/8/2017

 

 

The trademark examining attorney is suspending action on the application for the reason(s) 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. 86967274

 

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.

 

Additional Fees

 

Applicant paid for three additional classes that have been added to the application.  

 

Signed Declaration

 

Applicant provided a signed declaration. 

 

Section 2(d) – Prior Pending Application 

 

Applicant claimed ownership of the mark in Application Serial Nos. 87016479 and therefore it does not bar registration of applicant’s mark.  In the response, applicant argued that the mark in Application Serial No. 87016479 was approved for publication despite the earlier-filed Application Serial No. 86967274 so applicant’s mark should also be approved for publication.  Whatever are the proper or improper reasons for the examining attorney who examined Application Serial No. 87016479 for approving the mark for publication, such reasons are not dispositive of the present case.  It is well-settled that the Board is not bound by any action taken by previous trademark examining attorneys with respect to prior applications or registrations.  Likelihood of confusion is determined based the analysis of the facts as presented in this case.  See Mattel Inc. v. Funline Merchandise Co., 81 USPQ2d 1372, 1375 (TTAB 2006). 

 

Applicant contends that the term DAYTON in Application Serial No. 86967274 is disclaimed because it denotes a geographical location.  Marks must be considered in their entireties; therefore, a disclaimer does not remove the disclaimed portion from the mark for the purposes of comparing marks in a likelihood of confusion determination.  Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 1053, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012); In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010).  The public is generally not aware of disclaimers in trademark applications and registrations that reside only in the USPTO’s records.  See In re Nat’l Data Corp., 753 F.2d 1056, 1059, 224 USPQ 749, 751 (Fed. Cir. 1985).

 

Lastly, applicant attempts to place limitations on the goods associated with the cited mark by asserting that such goods are marketed to soccer fans.  With respect to goods associated with each mark, the question of likelihood of confusion is determined based on the description of the goods and/or services stated in the applications, not arguments based on extrinsic evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).  The goods in the cited application are listed as follows:  “t-shirts, shirts, hoodies, hats, scarves, soccer jerseys, socks, shorts, and soccer pinnies being vests.”  It is noted that only “soccer jerseys” and “soccer pinnies being vests” are the only goods that could be construed as being specialized but still may be related.  All other goods would be related and identical in part, to applicant’s goods.  Consequently, applicant has not persuaded the examining attorney that there is no likelihood of confusion between its mark and the mark in Application Serial No. 86967274.

 

Identification of Goods

 

Specific wording in the amended identification of goods is unacceptable.  See TMEP §1402.01. 

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

“eyewear, namely, sunglasses, eyeglasses, eyeglass frames; non-illuminated signs [wording “non-illuminated signs” is indefinite and may identify goods in multiple classes—identify signs using online ID Manual referenced above and classify accordingly]; motorcycle clothing, namely, motorcycle riding suits [wording “motorcycle riding suits” identifies Class 25 goods], bandannas [wording “bandannas” identifies Class 25 goods], protective helmets” – Class 9;

 

“bags and luggage, namely, purses, wallets, trunks and travelling bags, backpacks, duffel bags, pouches [term “pouches” is indefinite]” – Class 18;

 

“footwear, namely, work boots and dress shoes; footwear, namely, motorcycle boots; clothing, namely, leather jackets, golf shirts, t-shirts, nylon shells and baseball hats; leather clothing, namely, jackets, vests, pants; clothing, namely, denims, sweaters, pants, rain suits, shirts, sweatshirts, sweat pants, tank tops, coats, rain coats, vests, shorts, coveralls, skirts, jeans, halter tops, jackets, jerseys, nightgowns, night shirts, pajamas, underwear; clothing accessories, namely, belts, chaps, gloves, mitts, socks, suspenders, scarves, wrist bands; headwear, namely, head bands headbands, hats, knit hats, rain hats, caps, beanie caps” – Class 25; [ACCCEPTABLE]

 

“belt buckles; parts of footwear, namely, boot tips [“boot tips” Class 25 goods], sole plates [“sole plates” Class 25 goods], heel guards [wording “heel guards” identifies Class 25 goods], decorative boot straps [wording “boot straps” identifies Class 25 goods], boot chains, shoe buckles, shoe trimmings” – Class 26.

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

The application may identify goods in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Sections 1(b) and 44:

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp). 

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.

 

Section 44 Basis

 

The application does not include a copy of a foreign registration.  An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. 

 

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.

 

 

 

 

 

 

/Christopher Buongiorno/

Attorney

Law Office 102

(571) 272-9251

christopher.buongiorno@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 8/8/2017 FOR U.S. APPLICATION SERIAL NO.87218504

 

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.