To: | Superfly Events, LLC (Trademarks@loeb.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87628915 - SUPERFLY - 209726-00010 |
Sent: | 7/27/2018 2:10:35 PM |
Sent As: | ECOM104@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87628915
MARK: SUPERFLY
|
|
CORRESPONDENT ADDRESS: |
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/trademarks/index.jsp
|
APPLICANT: Superfly Events, LLC
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
|
SUSPENSION NOTICE: NO RESPONSE NEEDED
ISSUE/MAILING DATE: 7/27/2018
INTRODUCTION: 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 this application is suspended pending the disposition of the previously referenced potentially-conflicting pending application. 37 C.F.R. §2.83(c); TMEP §§716.02(c), 1208.02(c). Applicant was previously provided information regarding pending U.S. Application Serial No. 87430525, which may present a bar to registration of applicant’s mark based on a likelihood of confusion under Trademark Act Section 2(d). See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.
In response, applicant argued that the mark in the pending application is not likely to cause confusion with applicant’s mark. Specifically, applicant argued that (1) applicant’s prior registrations establish the prior use and recognition of applicant’s mark, and (2) the applied-for mark is diluted, and as such, is entitled only to a narrow scope of protection.
With respect to applicant’s argument, applicant’s claim of priority of use is not relevant to this ex parte proceeding. See In re Calgon Corp., 435 F.2d 596, 168 USPQ 278 (C.C.P.A. 1971). Trademark Act Section 7(b), 15 U.S.C. §1057(b), provides that a certificate of registration on the Principal Register is prima facie evidence of the validity of the registration, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the mark in commerce on or in connection with the goods specified in the certificate. During ex parte prosecution, the trademark examining attorney has no authority to review or to decide on matters that constitute a collateral attack on the cited registration. TMEP §1207.01(d)(iv). Additionally, 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)).
Accordingly, the trademark examining attorney has found applicant’s arguments unpersuasive at this time, and still believes there may be a likelihood of confusion between applicant’s mark and the mark in the cited prior-pending application, should they register. Thus, this application is suspended.
REFUSAL CONTINUED AND MAINTAINED: The examining attorney has carefully reviewed and is unpersuaded by applicant’s arguments and evidence in favor of registration. Therefore, the Section 2(d) refusal as to U.S. Registration No. 4708165 is continued and maintained at this time.
PROCEDURAL INFORMATION: 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.
RESPONSE GUIDELINES: 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.
/Tamara Hudson/
Examining Attorney
Law Office 104
571.272.2575
tamara.hudson@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.