Suspension Letter

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

SUSPENSION NOTICE

No Response Required

 

 

Issue date:  August 26, 2019

 

The examining attorney has carefully reviewed applicant’s responses filed 2/27/19 and 4/25/19 and remains of the view that this application is properly suspended.

 

Applicant argues that neither application should be cited as a potential bar to registration inasmuch as applicant owns four prior registrations that warrant publication of the instant application.  Specifically, applicant owns (1) U.S. Registration No. 0772007 for the mark  NEWPORT for “Brandy,” in Class 33; (2) U.S. Registration No. 0725709 for the mark NEWPORT for “Gin and Vodka,” in Class 33; (3) U.S. Registration No. 0311971 for the mark NEWPORT (stylized) for “Whiskies,” in Class 33; and (4) U.S. Registration No. 0799215 for the mark NEWPORT for “Rum,” in Class 33.

 

It is the view of the examining attorney that suspension is appropriate inasmuch as application Serial Nos. 87814002 and 87911633 have a filing date that precedes applicant’s filing date of the instant application.  It should be noted that applicant’s claim of priority of use is not relevant to this ex parte proceeding.  Applicant argues that the applied-for mark is part of a family of marks and that the purchasing public’s familiarity with these marks obviates any likelihood of confusion.  However, the Trademark Trial and Appeal Board has found that a family of marks argument is “not available to an applicant seeking to overcome a [likelihood of confusion] refusal.”  In re Cynosure, Inc., 90 USPQ2d 1644, 1645-46 (TTAB 2009).  Specifically, an applicant’s ownership of other similar marks has little relevance in this context because the focus of a likelihood of confusion analysis in an ex parte case is on the mark applicant seeks to register, rather than other marks applicant has used or registered.  In re Cynosure, Inc., 90 USPQ2d at 1645-46; In re Ald, Inc., 148 USPQ 520, 521 (TTAB 1965); TMEP §1207.01(d)(xi). 

 

Specifically, application Serial Nos. 87814002 and 87911633 have filing dates that precede applicant’s filing date of the instant application.  Filing dates are controlling for likelihood of confusion purposes.  Inasmuch as the examining attorney is required to act consistently with the issues raised in the two pending applications, suspension is appropriate. 

 

As for the ‘002 application, applicant’s four prior registered marks have been cited against the applicant therein.  Inasmuch as that cite is still of record, the examining attorney is required to act in a consistent manner.  As for the ‘633 application, applicant’s four prior registered marks have been cited against the applicant therein in addition to the ‘002 application.  Therefore, the examining attorney is required to act in a consistent manner with the potentially blocking applications and suspension is therefore appropriate.

 

 

The application is suspended for the reason(s) specified below.  See 37 C.F.R. §2.67; TMEP §§716 et seq. 

 

The pending application(s) below has an earlier filing date or effective filing date than applicant’s application.  If the mark in the application(s) below registers, the USPTO may refuse registration of applicant’s mark under Section 2(d) because of a likelihood of confusion with the registered mark(s). 15 U.S.C. §1052(d); see 37 C.F.R. §2.83; TMEP §§1208.02(c). Action on this application is suspended until the prior-filed application(s) below either registers or abandons.  37 C.F.R. §2.83(c).  Information relevant to the application(s) below was sent previously.

 

            - U.S. Application Serial No(s). 87814002 and 87911633

 

Suspension process.  The USPTO will periodically check this application to determine if it should remain suspended.  See TMEP §716.04.  As needed, the trademark examining attorney will issue a letter to applicant to inquire about the status of the reason for the suspension.  TMEP §716.05. 

 

No response required.  Applicant may file a response, but is not required to do so. 

 

 

/efalk/

Erin Falk

Trademark Examining Attorney

Law Office 101

571-272-1110

erin.falk@uspto.gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on August 26, 2019 for

U.S. Trademark Application Serial No. 87929777

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter.  Please follow the steps below.

 

(1)  Read the official letter.  No response is necessary.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

/efalk/

Erin Falk

Trademark Examining Attorney

Law Office 101

571-272-1110

erin.falk@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”