Petition Decision

United States Patent and Trademark Office (USPTO)

 

U.S. Application Serial No. 87929777   U.S. Registration No.   Mark:  NEWPORT
Correspondence Address:         MATTHEW A. WILLIAMS        WYATT, TARRANT & COMBS, LLP        500 WEST JEFFERSON STREET        SUITE 2800        LOUISVILLE, KY 40202
Owner:  HEAVEN HILL DISTILLERIES, INC.
Reference/Docket No. 019354.64366   Correspondence Email Address:         mwilliams@wyattfirm.com

 

 

PETITION DECISION

 

 

Issue date:  September 4, 2019

 

The petition to the Director of the United States Patent and Trademark Office (USPTO) on behalf of Heaven Hill Distilleries, Inc. (petitioner) requesting review of the examining attorney’s action continuing suspension of the above-referenced application was received on April 25, 2019.  The Director has the authority to review this request.  See 37 C.F.R. §2.146; TMEP §1704.  The petition is DISMISSED.

 

A review of USPTO records indicates that, on August 26, 2019, during the pendency of the petition, the examining attorney issued a fourth suspension notice that addressed petitioner’s arguments against the potential likelihood of confusion refusal and in favor of removal of the application from suspension.  In light of the additional August 26, 2019 suspension notice that petitioner had not yet received as of the filing of the petition, the issue on petition is not ripe for consideration.  

 

Should petitioner opt to file another petition on this issue, it is advised that such a petition is likely to be denied.  When there are potentially conflicting marks in pending applications, action on the later-filed application will be suspended if the application appears to be otherwise in condition for publication or final action until the marks in the conflicting applications with the earlier filing dates are either registered or abandoned.  37 C.F.R. §2.83(c); Trademark Manual of Examining Procedure (TMEP) §716.02(c).  As the above-referenced application is in condition for publication but for the potentially conflicting marks, suspension appears to be procedurally proper.  Moreover, the examining attorney has now issued a suspension notice addressing petitioner’s arguments and explaining why the request for removal from suspension is not be granted.  See TMEP §716.03.  As such, it is unlikely that petitioner will be able to demonstrate that the examining attorney has committed a clear error or abuse of discretion in continuing the suspension of the application. 

 

The crux of the petition is whether the examining attorney was correct in continuing the potential refusal under Trademark Act Section 2(d).  This is a disagreement with a substantive issue, which is not to be decided on petition to the Director.  “Questions of substance arising during the ex parte prosecution of applications, including, but not limited to, questions arising under §§2, 3, 4, 5, 6 and 23 of the Act of 1946, are not considered to be appropriate subject matter for petitions to the Director.”  37 C.F.R. §2.146(b). 

 

As the petition has been dismissed, the petition fee will be refunded in due course.  See TMEP §405.04.

 

 

/Sara Benjamin/

Attorney Advisor

Office of the Deputy Commissioner

  for Trademark Examination Policy

sara.benjamin@uspto.gov

571.272.8847