TEAS Response to Suspension Inquiry

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1822 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1822 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Suspension Inquiry or Letter of Suspension

To the Commissioner for Trademarks:

Application serial no. 87943274 MUSE(Standard Characters, see http://tmng-al.gov.uspto.report/resting2/api/img/87943274/large) has been amended as follows:
PENDING SERIAL NUMBER(S)
Serial number(s) 79149123 should not be used as a citation(s) under Section 2(d), in the event that said serial number(s) mature(s) into a registration(s). The applicant hereby requests removal of this application from suspension, based on the following arguments. If the examining attorney is not persuaded by these arguments, the applicant hereby requests that this application be returned to suspended status, awaiting ultimate disposition of the referenced serial number(s).

ARGUMENT(S)

Dear Commissioner:

THE APPLICATION SHOULD BE PASSED TO PUBLICATION

Applicant requests the Examining Attorney lift the suspension and withdraw the refusal to register the Application pursuant to 15 U.S.C. § 1052(d) on the grounds that Applicant’s mark is likely to be confused with the Serial No. 79/149,123 for MUSE in Classes 9 and 11, owned by Muse Concept (“Muse Concept”) (“the Cited Mark”).

On April 13, 2019, the Examining Attorney suspended the Application pending disposition of the Cited Mark.

Applicant recently entered a coexistence agreement with Muse Concept with respect to the use and registration of Applicant’s mark and of the Cited Mark.  A true and correct copy of the parties’ executed coexistence agreement, is attached hereto as Exhibit A.  Pursuant to TMEP § 716.02(a), Applicant now requests that the Examining Attorney lift the suspension of action on Applicant’s application in light of the coexistence agreement between the parties. 

Consent agreements are to be accorded “great weight, and . . . the USPTO should not substitute its judgment concerning likelihood of confusion for the judgment of the real parties in interest without good reason, that is, unless the other relevant factors clearly dictate a finding of likelihood of confusion.”  TMEP § 1207.01(d)(viii).  Indeed, the Federal Circuit has mandated that consent agreements are to be afforded nearly conclusive weight in assessing likelihood of confusion.  See In re Four Seasons Hotels, Ltd., 987 F. 2d 1565, 1567 (Fed. Cir. 1993); In re du Pont DeNemours & Co., 476 F.2d 1357 (CCPA 1973); Amalgamated Bank of New York v. Amalgamated Trust & Savings Bank, 842 F.2d 1270 (Fed. Cir. 1988); Bongrain International (American) Corp. v. Delice de France, Inc., 811 F.2d 1479 (Fed. Cir. 1987); In re N.A.D. Inc., 754 F.2d 996 (Fed. Cir. 1985). 

The Federal Circuit explained the rationale for affording consent agreements such great weight as follows:

The role of the PTO is not in denying registration if it feels there is, by its independent determination, any likelihood of confusion of any kind as between the mark sought to be registered and the prior registration, without regard to the desires, opinions or agreements of the owner of the prior registration.  Rather, the PTO’s role is to protect owners of trademarks by allowing them to register their marks.  Denial of registration does not deny the owner the right to use the mark, and thus, will not serve to protect the public from confusion.

Four Seasons Hotels, 987 F. 2d at 1566.

In the instant situation, it is clear that coexistence agreement is proper and credible.  Both Applicant and Muse Concept were informed signatories represented by counsel.  Also, the coexistence agreement includes covenants to avoid and prevent any likelihood of confusion in the future.

In addition, in the April 13, 2019 suspension, the Examining Attorney continued and maintained the refusal under Trademark Act Section 2(d) as to Registration No. 4,678,804 of MUSE in Class 9 owned by Amused, Inc. (“the Cited Registration”).  As a result of Trademark Trial and Appeal Board proceedings, on August 22, 2019, Cancellation No. 92-071279 was terminated in Applicant's favor and the Cited Registration was canceled.  A canceled registration cannot be grounds for a likelihood of confusion refusal.  Consequently, this Cited Registration can no longer be a bar to registration of Applicant’s mark.

Based on the foregoing, Applicant respectfully requests that the Examining Attorney lift the suspension, and pass the Application to publication.

Original PDF file:
PE_12146203103-210155350_._Exhibit_A_to_MUSE_-_Request_to_Lift_Suspension.pdf
Converted PDF file(s) (21 pages)
Pending File1
Pending File2
Pending File3
Pending File4
Pending File5
Pending File6
Pending File7
Pending File8
Pending File9
Pending File10
Pending File11
Pending File12
Pending File13
Pending File14
Pending File15
Pending File16
Pending File17
Pending File18
Pending File19
Pending File20
Pending File21
The referenced serial number(s) 4678804 has/have now abandoned/cancelled/expired. I am requesting removal of this application from suspension for consideration by the examining attorney.

CANCELLATION PROCEEDING(S)
Cancellation No(s). 92071279 has/have been terminated. The applicant hereby requests removal of this application from suspension for further action by the examining attorney.
Comment(s)/Remark(s):

In the April 13, 2019 suspension, the Examining Attorney continued and maintained the refusal under Trademark Act Section 2(d) as to Registration No. 4,678,804 of MUSE in Class 9 owned by Amused, Inc. (“the Cited Registration”).  As a result of Trademark Trial and Appeal Board proceedings, on August 22, 2019, Cancellation No. 92-071279 was terminated and the Cited Registration was canceled.  A canceled registration cannot be grounds for a likelihood of confusion refusal.  Consequently, this Cited Registration can no longer be a bar to registration of Applicant’s mark.

The applicant's current attorney information: Jill M. Pietrini. Other appointed attorneys are Jill M. Pietrini. Jill M. Pietrini of SHEPPARD MULLIN RICHTER & HAMPTON LLP, and the attorney(s) is located at

      1901 AVENUE OF THE STARS, SUITE 1600
      LOS ANGELES, California
      US
The docket/reference number is 30NT-166791.

The phone number is 310-228-3700.

The fax number is 310-228-3701.

The applicants proposed attorney information: Jill M. Pietrini. Other appointed attorneys are Paul A. Bost, Benjamin O. Aigboboh, Susan Hwang. Jill M. Pietrini of SHEPPARD MULLIN RICHTER & HAMPTON LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      1901 Avenue of the Stars, Suite 1600
      Los Angeles, California 90067
      United States
The docket/reference number is 30NT-166791.

The phone number is 310-228-3700.

The fax number is 310-228-3701.

The email address is trademarkscc@sheppardmullin.com

Jill M. Pietrini submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: JILL M. PIETRINI. Other appointed attorneys are Jill M. Pietrini. JILL M. PIETRINI of SHEPPARD MULLIN RICHTER & HAMPTON LLP, and the attorney(s) is located at

      1901 AVENUE OF THE STARS, SUITE 1600
      LOS ANGELES, California
      US
The docket/reference number is 30NT-166791.

The phone number is 310-228-3700.

The fax number is 310-228-3701.

The email address is trademarkscc@sheppardmullin.com; rwalsh@smrh.com; rlhudson@sheppardmullin.com

The applicants proposed correspondence information: Jill M. Pietrini. Jill M. Pietrini of SHEPPARD MULLIN RICHTER & HAMPTON LLP, is located at

      1901 Avenue of the Stars, Suite 1600
      Los Angeles, California 90067
      United States
The docket/reference number is 30NT-166791.

The phone number is 310-228-3700.

The fax number is 310-228-3701.

The email address is trademarkscc@sheppardmullin.com; rwalsh@smrh.com

Response Suspension Inquiry Signature
Signature: /Jill M. Pietrini/     Date: 08/30/2019
Signatory's Name: Jill M. Pietrini, Esq.
Signatory's Position: Attorney of Record, California Bar Member
Signatory's Phone Number: 310-228-3700

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    JILL M. PIETRINI
   SHEPPARD MULLIN RICHTER & HAMPTON LLP
   
   1901 AVENUE OF THE STARS, SUITE 1600
   LOS ANGELES, California
Mailing Address:    Jill M. Pietrini
   SHEPPARD MULLIN RICHTER & HAMPTON LLP
   1901 Avenue of the Stars, Suite 1600
   Los Angeles, California 90067
        
Serial Number: 87943274
Internet Transmission Date: Fri Aug 30 18:01:11 EDT 2019
TEAS Stamp: USPTO/RSI-XX.XXX.XXX.XXX-201908301801114
85613-87943274-610eeb76de4c334ac6d2386b1
d4a371c1be4ea2772966ed870188b2a9a7b8f6a-
N/A-N/A-20190830175711854563