To: | Netset AB (dcdocketing@hdp.com) |
Subject: | U.S. Trademark Application Serial No. 87982566 - NETSET - 17242-009-01 - Request for Reconsideration Denied - Return to TTAB |
Sent: | November 17, 2020 05:20:03 PM |
Sent As: | ecom116@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 87982566
Mark: NETSET
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Correspondence Address: |
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Applicant: Netset AB
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Reference/Docket No. 17242-009-01
Correspondence Email Address: |
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REQUEST FOR RECONSIDERATION
AFTER FINAL ACTION
DENIED
Issue date: November 17, 2020
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