Reconsideration Letter

United States Patent and Trademark Office (USPTO)

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

 

 

 

REQUEST FOR RECONSIDERATION

AFTER FINAL ACTION

DENIED

 

 

Issue date:  November 17, 2020

 

 

Applicant’s request for reconsideration is denied.  See 37 C.F.R. §2.63(b)(3).  The trademark examining attorney has carefully reviewed applicant’s request and determined the request did not:  (1) raise a new issue, (2) resolve all the outstanding issues, (3) provide any new or compelling evidence with regard to the outstanding issues, or (4) present analysis and arguments that were persuasive or shed new light on the outstanding issues.  TMEP §§715.03(a)(ii)(B), 715.04(a). 

 

The request for remand filed on October 27, 2020, included a consent agreement. The consent agreement is signed by “The Net-a-Porter Group Limited,” the owner of Registration Nos. 5202163, 5319164, 5494833, 5494834. The consent agreement is a “naked consent” and is insufficient to overcome a likelihood of confusion refusal as it pertains to these registrations because it neither (1) sets forth reasons why the parties believe there is no likelihood of confusion other than to state that they operate in different areas, nor (2) describes the arrangements undertaken by the parties to avoid confusing the public.  See In re Mastic, 829 F.2d 1114, 1117-18, 4 USPQ2d 1292, 1295-96 (Fed. Cir. 1987); In re Permagrain Prods., Inc., 223 USPQ 147, 149 (TTAB 1984); TMEP §1207.01(d)(viii).  These consents are generally accorded little weight in a likelihood of confusion determination without additional factors to support a determination that confusion is unlikely.  See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1362, 177 USPQ 563, 568 (C.C.P.A. 1973).

 

If applicant submits a consent agreement that (1) indicates the registrant’s consent to the use and registration of the mark, and (2) addresses one or both of the factors listed above, this refusal will be reconsidered.  However, consent agreements are but one factor to be taken into account with all of the other relevant circumstances bearing on a likelihood of confusion determination.  In re N.A.D. Inc., 754 F.2d 996, 999, 224 USPQ 969, 971 (Fed. Cir. 1985); In re E. I. du Pont, 476 F.2d at 1361, 177 USPQ at 567; TMEP §1207.01(d)(viii); see also In re Bay State Brewing Co., 117 USPQ2d 1958, 1963 (TTAB 2016).

 

Factors to be considered in weighing a consent agreement include the following:

 

(1)       Whether the consent shows an agreement between both parties;

 

(2)       Whether the agreement includes a clear indication that the goods and/or services travel in separate trade channels;

 

(3)       Whether the parties agree to restrict their fields of use;

 

(4)       Whether the parties will make efforts to prevent confusion, and cooperate and take steps to avoid any confusion that may arise in the future; and

 

(5)       Whether the marks have been used for a period of time without evidence of actual confusion.

 

See In re Four Seasons Hotels Ltd., 987 F.2d 1565, 1569, 26 USPQ2d 1071, 1073 (Fed. Cir. 1993); In re Mastic, 829 F.2d at 1117-18, 4 USPQ2d at 1295-96; cf. Bongrain Int’l (Am.) Corp. v. Delice de Fr., Inc., 811 F.2d 1479, 1485, 1 USPQ2d 1775, 1779 (Fed. Cir. 1987).

 

Accordingly, the following refusal made final in the Office action dated February 5, 2020, is maintained and continued: 

 

•  Likelihood of Confusion Refusal under Trademark Act Section 2(d) with respect to Registration Nos. 5202163, 5319164, 5494833, 5494834 and 5586411

 

See TMEP §§715.03(a)(ii)(B), 715.04(a). 

 

If applicant has already filed an appeal with the Trademark Trial and Appeal Board, the Board will be notified to resume the appeal.  See TMEP §715.04(a).

 

If applicant has not filed an appeal and time remains in the six-month response period, applicant has the remainder of that time to (1) file another request for reconsideration that complies with and/or overcomes any outstanding final requirement(s) and/or refusal(s), and/or (2) file a notice of appeal to the Board.  TMEP §715.03(a)(ii)(B).  Filing a request for reconsideration does not stay or extend the time for filing an appeal.  37 C.F.R. §2.63(b)(3); see TMEP §715.03(c).  

 

 

/Khanh M. Le/

Trademark Examining Attorney

Law Office 116

U.S. Patent & Trademark Office

Khanh.Le@USPTO.gov

(571) 272-9435

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on November 17, 2020 for

U.S. Trademark Application Serial No. 87982566

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

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

 

 

/Khanh M. Le/

Trademark Examining Attorney

Law Office 116

U.S. Patent & Trademark Office

Khanh.Le@USPTO.gov

(571) 272-9435

 

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).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from November 17, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

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.”