Suspension Letter

ACE

Enterprise Holdings, Inc.

U.S. TRADEMARK APPLICATION NO. 88001867 - ACE - 51017-176442

To: Enterprise Holdings, Inc. (ipdocket@thompsoncoburn.com)
Subject: U.S. TRADEMARK APPLICATION NO. 88001867 - ACE - 51017-176442
Sent: 4/4/2019 1:17:08 PM
Sent As: ECOM124@USPTO.GOV
Attachments:

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

U.S. APPLICATION SERIAL NO.  88001867

 

MARK: ACE

 

 

        

*88001867*

CORRESPONDENT ADDRESS:

      THOMAS A. POLCYN

      THOMPSON COBURN LLP

      ONE US BANK PLAZA

      ST. LOUIS, MO 63101

      

 

GENERAL TRADEMARK INFORMATION:

http://www.gov.uspto.report/trademarks/index.jsp

 

VIEW YOUR APPLICATION FILE

 

APPLICANT: Enterprise Holdings, Inc.

 

 

 

CORRESPONDENT’S REFERENCE/DOCKET NO:  

      51017-176442

CORRESPONDENT E-MAIL ADDRESS: 

      ipdocket@thompsoncoburn.com

 

 

 

SUSPENSION NOTICE: NO RESPONSE NEEDED

 

ISSUE/MAILING DATE: 4/4/2019

 

 

The trademark examining attorney is suspending action on the application for the reason(s) stated below.  See 37 C.F.R. §2.67; TMEP §§716 et seq. 

 

The effective filing date of the pending application(s) identified below precedes the filing date of applicant’s application.  If the mark in the referenced application(s) registers, applicant’s mark may be refused registration under Section 2(d) because of a likelihood of confusion with that registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, action on this application is suspended until the earlier-filed referenced application(s) is either registered or abandoned.  37 C.F.R. §2.83(c).  A copy of information relevant to this referenced application(s) was sent previously.

 

            - Application Serial No(s). 87577033 (NEULION ACE ANALYTICS), 87849932 (ACEMD), and 87103650 (ACE MICROSYSTEMS)

 

REFUSAL(S)/REQUIREMENT(S) CONTINUED AND MAINTAINED:  The following refusal is continued and maintained:

  • Section 2(d) Refusal – Likelihood of Confusion - regarding Registration Nos. 4849355 (ACE DOCS), 4198282 (ORDERACE), 4433375 (ACE FACTORY), and 5610685 (PROLIFIQ ACE)

 

The applicant has amended its identification and as such a number of the Section 2(d) registered marks have been removed from the refusal. However, the applicant has not amended sufficiently to overcome the refusal as to the mark listed above. The examining attorney also notes that one of the pending marks, Registration No. 5610685, has since registered and that an action will be forthcoming pending the outcome of the remaining pending applications.

 

Although applicant argued that the registration for ACE DOCS was limited to use as part of a quality management system, there is nothing in the wording of the applicant’s identification that clarifies that its document management software could not also have a similar function to the registrant’s.  As such, the applicant’s software that features document management and organization could have a similar function on its face. Further, although the applicant has limited its field of use to automobiles, the registrant has no such restriction and therefore could operate in this space as well. Further, even assuming that the purchasers were sophisticated, the fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion.  TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011).  Further, where the purchasers consist of both professionals and the public, the standard of care for purchasing the goods is that of the least sophisticated potential purchaser.  In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. at 1325, 110 USPQ2d at 1163). As such, this refusal is continued and maintained.

 

Regarding ORDERACE, the applicant has not fully overcome the problematic identification entries for this registration. The examining attorney notes that “Software as a service (SAAS) services, namely, software that provide real-time, integrated business management intelligence by combining information from various databases and presenting it in an easy-to-understand user interface” in Class 42 features software for the purpose of database management as similarly noted in the application. As such, this refusal is continued and maintained.

 

Regarding ACE FACTORY, the applicant has not fully overcome the problematic identification entries for this registration. The examining attorney notes that “computer services, namely, design, development, implementation, installation, maintenance, and updating of computer software, and providing consultation for the aforesaid” in Class 42 features software development and consulting services. As such, this refusal is continued and maintained.

 

The USPTO will periodically conduct a status check of the application to determine whether suspension remains appropriate, and the trademark examining attorney will issue as needed an inquiry letter to applicant regarding the status of the matter on which suspension is based.  TMEP §§716.04, 716.05.  Applicant will be notified when suspension is no longer appropriate.  See TMEP §716.04.

 

No response to this notice is necessary; however, if applicant wants to respond, applicant should use the “Response to Suspension Inquiry or Letter of Suspension” form online at http://teasroa.gov.uspto.report/rsi/rsi.

 

 

 

/Alexandra El-Bayeh/

Trademark Examining Attorney

Law Office 124

(571) 270-5911

alexandra.el-bayeh@uspto.gov

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the Trademark Electronic Application System (TEAS) form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

 

 

U.S. TRADEMARK APPLICATION NO. 88001867 - ACE - 51017-176442

To: Enterprise Holdings, Inc. (ipdocket@thompsoncoburn.com)
Subject: U.S. TRADEMARK APPLICATION NO. 88001867 - ACE - 51017-176442
Sent: 4/4/2019 1:17:10 PM
Sent As: ECOM124@USPTO.GOV
Attachments:

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 4/4/2019 FOR U.S. APPLICATION SERIAL NO.88001867

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.gov.uspto.report/, enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.

 

 


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