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: 8/20/2018

 

 

The Office has reassigned this application to the undersigned examining attorney.

 

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

 

The effective filing date of the pending applications identified below precedes 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 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 both earlier-filed referenced applications are either registered or abandoned.  37 C.F.R. §2.83(c).  A copy of information relevant to the referenced applications was sent previously.

 

            - Application Serial Nos.  86105615 and 86901109

 

STATUS OF REFUSALS/REQUIREMENTS:  The Section 2(d) refusal, based on a likelihood of confusion with the mark in U.S. Registration No. 1141230, is continued and maintained as to applicant’s goods in International classes 6, 7 and 9 only.  The Section 2(d) refusal is withdrawn as to U.S. Registration No. 2247006. 

 

In addition, the requirement for an acceptable identification of goods and services is continued and maintained as to the wording “providing facilities for vehicle loading” in International Class 37 because this wording is overly broad and could include services in other international classes.  The service of providing specialized facilities is classified according to the purpose of the specialized facility.  If the purpose is cargo and freight loading, which is a class 39 service, applicant may amend this wording to “providing specialized facilities for loading cargo and freight into vehicles” and move the services from International Class 37 to International Class 39.  The requirement for information about applicant’s connection to the Jicarilla Apache tribe has been satisfied.  See TMEP §§713.02, 714.04. 

 

Applicant argues that no likelihood of confusion exists because (1) applicant owns two prior registrations for the mark “APACHE” for services, and (2) such registrations have co-existed with the cited “APACHE” registration for over five years.  Applicant concludes there is no likelihood of confusion between the applied-for mark and registrant’s mark; therefore, the trademark examining attorney should withdraw the Trademark Act Section 2(d) refusal.   

 

In In re Strategic Partners, Inc., 102 USPQ2d 1397, 1399-1400 (TTAB 2012), the Trademark Trial and Appeal Board only reversed a Section 2(d) refusal based on an applicant’s prior registration for the following unique set of facts:  (1) the marks in applicant’s prior registration and application were virtually identical (“no meaningful difference” existed between them, such that they were “substantially similar”); (2) the goods were identical in relevant part; and (3) the prior registration had co-existed for at least five years with the cited registration (both being more than five years old and thus immune from attack on likelihood of confusion grounds).  See TMEP §1207.01.  The Board acknowledged these facts constituted a “unique situation,” such that an applicant’s prior registration would generally need to fit within these precise parameters to overcome a Section 2(d) refusal.  In re Strategic Partners, Inc., 102 USPQ2d at 1400; see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793-94 (TTAB 2017); TMEP §1207.01.

 

In this case, by contrast, applicant’s prior registrations do not correspond to the facts set forth in In re Strategic Partners because the goods are not identical in relevant part.  See TMEP §1207.01.  Cited U.S. Registration No. 1141230 identifies the following goods:  “mobile drills for water, oil and gas wells and mineral exploration.”  Applicant’s prior registrations, however, do not include any goods; they identify services only:  U.S. Registration No. 3769833 for the mark “APACHE” identifies “Oil and gas production services” and “Oil and gas exploration, oil and gas development, namely, searching for oil and gas; oil and gas geological prospecting analysis, oil fields and gas analysis, and testing of oil and gas wells” and does not include any goods; U.S. Registration No. 4390865 for the mark “APACHE” identifies the services as “Oil and gas drilling and pumping; Installation, maintenance and repair of liquid and compressed natural gas fueling systems, namely, vehicle fueling stations for use by consumers; Maintenance of facilities for operating fleets of compressed natural gas vehicles; Vehicle refueling services; Vehicle repair services,” “Natural gas liquefaction services; Oil and gas well treatment; Oil and gas production services; Oil and gas well treatment” and “Analysis of oil and gas fields; Exploration and searching of oil and gas; Geophysical exploration for the oil industry; Geophysical exploration for the gas industry; Oil and gas field surveying; Oil and gas prospecting; Oil and gas well testing; Surveying of oil and gas beds and fields,” and again, does not include any goods.  Thus, applicant’s prior registrations do not obviate a Section 2(d) refusal as to applicant’s goods in International Classes 6, 7 and 9.

 

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.

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  

 

/Kathy de Jonge/

Trademark Examining Attorney

Law Office 107

(571) 272-9152

kathleen.dejonge@USPTO.gov (informal use only)

 

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 8/20/2018 FOR U.S. APPLICATION SERIAL NO.87619318

 

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.