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: 4/17/2018

 

 

INTRODUCTION:  This suspension action follows applicant’s communication filed on March 14, 2018.

 

In a previous Office action dated September 14, 2017, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(d) for a likelihood of confusion with a registered mark, and specimen refusal for the mark differing on the drawing and specimen.  In addition, applicant was required to satisfy the following requirements:  amend the identification and classification of services, and clarify the mark description and color claim.  Applicant was also advised that five prior-filed applications may bar registration of the applied-for mark.

 

In the response, applicant amended the identification of services, but further amendments are required.  Therefore, the identification requirement is continued and maintained.  Also, applicant amended the mark description, but the amendment contained a typographical error which must be corrected.  Therefore, the mark description requirement is continued and maintained.

 

Also, applicant submitted arguments regarding the Section 2(d) refusal, but these arguments were found unpersuasive for the reasons described below.  Therefore, the Section 2(d) refusal is continued and maintained.  In addition, applicant submitted arguments regarding the specimen refusal, but these arguments were found unpersuasive.  Therefore, the specimen refusal is continued and maintained.

 

Finally, the trademark examining attorney is suspending action on the application for the reason stated below.  See 37 C.F.R. §2.67; TMEP §§716 et seq. 

 

ACTION ON APPLICATION SUSPENDED: The effective filing dates of the pending applications identified below precede the filing date of applicant’s application.  If the marks in the referenced applications register, applicant’s mark may be refused registration under Section 2(d) because of a likelihood of confusion with the 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 are either registered or abandoned.  37 C.F.R. §2.83(c).  Copies of information relevant to these referenced applications were sent previously.

 

            - Application Serial Nos. 87093827, 87093829, 86972853, 86972974, and 87254963

 

REFUSALS AND REQUIREMENTS CONTINUED AND MAINTAINED:  The following refusals and requirements are continued and maintained:

 

• Section 2(d) Refusal – Likelihood of Confusion – Continued and Maintained
• Specimen Unacceptable – Continued and Maintained
• Identification of Services – Continued and Maintained
• Mark Description – Continued and Maintained

 

In regards to the Section 2(d) refusal, applicant argues that the services are not similar because “Registrant’s services are directed entirely to military spouses” while “Applicant’s services are directed entirely to middle school, high school and college athletes and their parents…and athletic talent recruiters”.  However, determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on 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)).  Here, registrant’s
“Career planning services” are not limited to any particular field or audience, and therefore can encompass any kind of career planning services.  Further, the previously attached websites from ntxsoccer.org, optionssolutionsed.com, and simssports.com show that it is quite common for the same parties to offer career planning/development services, sports recruiting services, public relations services, sports competitions, athlete development services, and sports camps/training services under the same mark.  This evidence establishes that the same entity commonly provides the relevant services and markets the services under the same mark. 

 

Applicant also argues that applicant has a prior registration.  However, this prior registration is for different services than those in the present application (for example, the prior registration is for “operating basketball camps” while the present application contains “public relations services in the field of amateur sports; career development services for middle school, high school and college athletes; providing information and news in the field of amateur sports recruitment”, amongst other unrelated services).  Further, prior decisions and actions of other trademark examining attorneys in registering other marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial and Appeal Board.  TMEP §1207.01(d)(vi); see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017).  Each case is decided on its own facts, and each mark stands on its own merits.  In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d at 1793 n.10 (quoting In re Boulevard Entm’t, 334 F.3d 1336, 1343, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003)).

 

In regards to the specimen refusal, applicant argues that “the specimens submitted support the mark to be registered as shown in the drawing because users of the internet are accustomed to see website banners, such as Applicant’s, in which the graphics extend slightly outside the borders of the screen. In Applicant’s case, the website banner is so cropped to maximize useable space on the screen…”.  However, even if it is the custom to extend graphics beyond the borders of online banners, this nevertheless cuts off a part of the mark, and the mark on the specimen must match the mark shown in the mark drawing.

 

In regards to the mark description, please note that the amended mark description contained a typographical error that must be corrected.  Specifically, the amended mark description contains the wording “…which is further surrounded by a think black border…”, which should read “thin black border”.

 

NO RESPONSE NECESSARY: 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.

 

 

 

/Jessica Hilliard/

Jessica Hilliard

Examining Attorney, Law Office 120

Ph: 571-272-4031

Jessica.Hilliard@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 4/17/2018 FOR U.S. APPLICATION SERIAL NO.87533795

 

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.