Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
PTO Form 1822 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
Response to Suspension Inquiry or Letter of Suspension
The table below presents the data as entered.
Input Field
|
Entered
|
| SERIAL NUMBER |
87405259 |
| LAW OFFICE ASSIGNED |
LAW OFFICE 111 |
| MARK SECTION |
| MARK FILE NAME |
http://uspto.report/TM/87405259/mark.png |
| LITERAL ELEMENT |
L4 |
| CANCELLATION PROCEEDING(S) |
| Cancellation No(s). 92067418 is/are still pending. However, the applicant hereby requests removal of this application from
suspension for the examining attorney to consider a submission, such as an amendment or consent agreement. |
| COMMENT(S)/REMARK(S) |
| The Examining Attorney refused registration of the subject application under U.S.C. Section 1052(d) based on likelihood of
confusion with U.S. Registration No. 5175616 owned by Naseem Abdullah ("Registrant"). The Applicant having grounds to cancel U.S. Registration No. 5175616, filed a Petition to Cancel with the
Trademark Trial and Appeal Board. After the discovery conference, Applicant filed a consent motion to suspend Board proceedings, anticipating settlement contingent upon the parties entering into a
Consent Agreement and the Examining Attorney finding that the Consent Agreement overcomes the 2(d). Applicant annexes hereto the Consent To Registration and Use and Exhibits, wherein the parties
address and provide solid reasoning for why confusion will not occur between the sources of the marks. The parties explain how they engage in different trade channels, how the classes of consumers
are different, how the marks make different commercial impressions etc. In addition, the parties state how any potential confusion will be avoided in the future, and specifically how they will
cooperate. Please note there was a typographical error and there is no Exhibit B, only an Exhibit A & C. Applicant respectfully submits that the Court of Appeals for the Federal Circuit has made
it clear that consent agreements should be given great weight if they detail the reasons why confusion will not occur. The Courts have stated that the USPTO should not substitute its judgment with
regard to confusion for the judgment of real parties with vested interests. See In re Four Seasons Hotel Ltd., 26 U.S.P.Q.2d 1071, 1074 (Fed. Cir. 1993), where the Federal Circuit Court declared that
in the absence of contrary evidence, a Consent Agreement is evidence that there is no likelihood of confusion. Applicant respectfully submits that the Consent To Registration and Use Agreement
annexed hereto demonstrates that consumer confusion will not occur between the sources of the Applicant's mark, U.S. Serial No. 87405259 and Registrant's mark, U.S. Registration No, 5175616.
Applicant respectfully requests that the Examining Attorney withdraw the likelihood of confusion refusal and pass the subject application to publication at her earliest convenience. |
| REMARKS FILE NAME(S) |
| ORIGINAL PDF FILE |
CAR_678555108-165655083_._Consent_to_Registration_and_Use_Agreement_-with_Exhibits.pdf |
CONVERTED PDF FILE(S)
(4 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\874\052\87405259\xml6\RSI0002.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\874\052\87405259\xml6\RSI0003.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\874\052\87405259\xml6\RSI0004.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\874\052\87405259\xml6\RSI0005.JPG |
| SIGNATURE SECTION |
| RESPONSE SIGNATURE |
/Nikki Siesel/ |
| SIGNATORY'S NAME |
Nikki Siesel |
| SIGNATORY'S POSITION |
Attorney of Record, New York Bar Member |
| SIGNATORY'S PHONE NUMBER |
(914) 381-2728 |
| DATE SIGNED |
03/07/2018 |
| AUTHORIZED SIGNATORY |
YES |
| FILING INFORMATION SECTION |
| SUBMIT DATE |
Wed Mar 07 17:08:42 EST 2018 |
| TEAS STAMP |
USPTO/RSI-XX.XX.XX.XXX-20
180307170842625012-874052
59-51071eaae1fb9c9364fec0
5be6d3edd45fd896350e92869
a3837a4a5d547692d4-N/A-N/
A-20180307165655083545 |
Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
PTO Form 1822 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
Response to Suspension Inquiry or Letter of Suspension
To the Commissioner for Trademarks:
Application serial no.
87405259 L4 (Stylized and/or with Design, see http://uspto.report/TM/87405259/mark.png) has been amended as follows:
CANCELLATION PROCEEDING(S)
Cancellation No(s). 92067418 is/are still pending. However, the applicant hereby requests removal of this application from suspension for the examining attorney to consider a submission, such as an
amendment or consent agreement.
Comment(s)/Remark(s):
The Examining Attorney refused registration of the subject application under U.S.C. Section 1052(d) based on likelihood of confusion with U.S. Registration No. 5175616 owned by Naseem Abdullah
("Registrant"). The Applicant having grounds to cancel U.S. Registration No. 5175616, filed a Petition to Cancel with the Trademark Trial and Appeal Board. After the discovery conference, Applicant
filed a consent motion to suspend Board proceedings, anticipating settlement contingent upon the parties entering into a Consent Agreement and the Examining Attorney finding that the Consent
Agreement overcomes the 2(d). Applicant annexes hereto the Consent To Registration and Use and Exhibits, wherein the parties address and provide solid reasoning for why confusion will not occur
between the sources of the marks. The parties explain how they engage in different trade channels, how the classes of consumers are different, how the marks make different commercial impressions etc.
In addition, the parties state how any potential confusion will be avoided in the future, and specifically how they will cooperate. Please note there was a typographical error and there is no Exhibit
B, only an Exhibit A & C. Applicant respectfully submits that the Court of Appeals for the Federal Circuit has made it clear that consent agreements should be given great weight if they detail
the reasons why confusion will not occur. The Courts have stated that the USPTO should not substitute its judgment with regard to confusion for the judgment of real parties with vested interests. See
In re Four Seasons Hotel Ltd., 26 U.S.P.Q.2d 1071, 1074 (Fed. Cir. 1993), where the Federal Circuit Court declared that in the absence of contrary evidence, a Consent Agreement is evidence that there
is no likelihood of confusion. Applicant respectfully submits that the Consent To Registration and Use Agreement annexed hereto demonstrates that consumer confusion will not occur between the sources
of the Applicant's mark, U.S. Serial No. 87405259 and Registrant's mark, U.S. Registration No, 5175616. Applicant respectfully requests that the Examining Attorney withdraw the likelihood of
confusion refusal and pass the subject application to publication at her earliest convenience.
Original PDF file:
CAR_678555108-165655083_._Consent_to_Registration_and_Use_Agreement_-with_Exhibits.pdf
Converted PDF file(s) (4 pages)
Cancellation File1
Cancellation File2
Cancellation File3
Cancellation File4
Response Suspension Inquiry Signature
Signature: /Nikki Siesel/ Date: 03/07/2018
Signatory's Name: Nikki Siesel
Signatory's Position: Attorney of Record, New York Bar Member
Signatory's Phone Number: (914) 381-2728
The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and
other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.
attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a
signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney
appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this
matter.
Serial Number: 87405259
Internet Transmission Date: Wed Mar 07 17:08:42 EST 2018
TEAS Stamp: USPTO/RSI-XX.XX.XX.XXX-20180307170842625
012-87405259-51071eaae1fb9c9364fec05be6d
3edd45fd896350e92869a3837a4a5d547692d4-N
/A-N/A-20180307165655083545
