To: | Tottenham Hotspur Limited (trademark@cll.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87521347 - LILY - 29357 |
Sent: | 5/29/2018 10:54:03 PM |
Sent As: | ECOM119@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87521347
MARK: LILY
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CORRESPONDENT ADDRESS: |
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/trademarks/index.jsp
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APPLICANT: Tottenham Hotspur Limited
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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SUSPENSION NOTICE: NO RESPONSE NEEDED
ISSUE/MAILING DATE: 5/29/2018
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(s). 87389169, 87008936, 87340155, 87389155
FOREIGN REGISTRATION: Applicant is required to provide a true copy, a photocopy, a certification, or a certified copy of a foreign registration from applicant’s country of origin that will be in force at the time the United States registration issues. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii)-(iii); In re Societe D’Exploitation de la Marque Le Fouquet’s, 67 USPQ2d 1784, 1788-89 (TTAB 2003); TMEP §§1003.04(a)-(b), 1004.01, 1004.01(a). Action on this application is suspended until the USPTO receives a copy of such foreign registration or proof of its renewal. TMEP §§716.02(b), 1003.04(a)-(b), 1004.01(a). If the foreign registration or renewal document is not in English, applicant must provide an English translation. 37 C.F.R. §2.34(a)(3)(ii)-(iii); TMEP §1004.01(b). Further, applicant should notify the trademark examining attorney in the event that the foreign application abandons or the foreign registration is not renewed. See TMEP §§1003.08, 1004.01(a). In such case, applicant may amend the application to rely on another basis, if appropriate, and will retain the priority filing date, if applicable. TMEP §§1003.08, 1004.01(a).
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.
Please note that the examining attorney has reviewed applicant’s response and determined the following: Applicant’s signed declaration has been accepted and made of record. The Section 2(d) likelihood of confusion refusal with respect to Reg. Nos. 4977163, 4212616, and 3095669 is now withdrawn. In addition, prior pending application Serial Nos. 86626566, 87419797, 87357853 are withdrawn as potential bars to registration.
The likelihood of confusion with the marks in Reg. Nos. 4881867, 4288187, 4212616, 3098677, 2599997, 5257798, 1653281, 3167823, 5304955, 5068852 and 4262123 is maintained and continued. Applicant’s contention that there are multiple “LILY” marks on the register is not persuasive because they feature goods and/or services that are unrelated to each other. Further, applicant’s attempt to limit the trade channels for their goods and services is not persuasive because the registered marks contain no trade channel limitations and because products related to a professional soccer team are often found in the marketplace with products that are not related to a professional soccer team.
Finally, the amendments to the identification and classification of goods and services has been accepted with the exception of the underlined wording in Class 9 below.
Class 9
scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking, life-saving and teaching apparatus and instruments [this wording is repetitive/duplicative and must be removed] scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking, life-saving and teaching apparatus and instruments, namely, cameras; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity [this wording is repetitive/duplicative and should be removed] apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, namely, light switches; apparatus for recording, transmission or reproduction of sound or images; blank magnetic data carriers, pre-recorded magnetic data carriers featuring soccer videos, blank recording discs, pre-recorded video discs featuring soccer videos; compact discs, dvds and digital media, namely, pre-recorded DVDs, downloadable audio and video recordings, and CDs featuring soccer; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software [this wording is repetitive/duplicative and must be removed] computer software for organizing and compiling soccer statistics; fire-extinguishing apparatus; hologram apparatus; pre-recorded compact discs featuring music; pre-recorded compact discs featuring video games; pre-recorded motion picture films about soccer; keyboards; cd players; bags for cameras and photographic equipment; magnets; decorative magnets; magnetic badges in the nature of magnetic identifying cards; fridge magnets; USB battery chargers; frames for spectacles and sunglasses; sunglasses; sunglasses frames; cases for spectacles and sunglasses; cases for children's eyeglasses; eyewear; smartglasses; chains for spectacles and for sunglasses; application software for organizing and compiling soccer statistics; application software for smart phones for organizing and compiling soccer statistics; downloadable computer software applications for organizing and compiling soccer statistics; education software featuring instruction in soccer; downloadable wallpapers for computers and phones; computer games entertainment software; structural parts and fittings relating to all the aforesaid goods; magnetically encoded gift cards; all of the foregoing related to and to promote a professional soccer team
/Blake Lovelace/
James Blake Lovelace
Examining Attorney
Law Office 119
(571)-270-1533
james.lovelace@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.