UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

SUSPENSION NOTICE: NO RESPONSE NEEDED

 

ISSUE/MAILING DATE: 11/26/2018

 

 

INTRODUCTION

 

This Suspension Notice is in response to applicant's communication filed on November 7, 2018.

 

In an Office action dated November 3, 2018, the trademark examining attorney required applicant to satisfy the following requirements:  (1) amend identification of goods, (2) disclaimer descriptive wording, (3) amend mark description, and (4) provide information regarding owner of mark. Applicant was also advised of prior-filed applications.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirements have been satisfied: (1) disclaimer of descriptive wording provided, (2) amended mark description amendment provided, and (3) information provided regarding owner of mark.  See TMEP §§713.02, 714.04. 

 

In addition, the following advisory has been withdrawn:  prior-filed application advisory as to the mark in U.S. Application No. 87838179.  See TMEP §§713.02, 714.04. 

 

 

REQUIREMENT CONTINUED AND MAINTAINED

 

The following requirement is continued and maintained: amend identification of goods.

 

Particular wording in the proposed amendment to the identification is not acceptable because it exceeds the scope of the identification in the application.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07.  Applicant’s goods may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the original identification in the application, and any previously accepted amendments, remain operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

 

In this case, the application originally identified the goods as follows:  “magazines featuring original creator-owned characters from animated, action adventure, comedy and/or drama features.”

 

However, the proposed amendment identifies the following goods:  “Magazines featuring printed stories in illustrated form and comic book stories and artwork.”  

 

This portion of the proposed amendment is beyond the scope of the original identification because the amended identification does not limit applicant's magazines to those featuring original creator-owned characters from animated, action adventure, comedy and/or drama features. As such, the amended identification is broader in scope than the original identification.

 

Applicant may adopt the following wording, if accurate:

 

Class 16: Comic books; comic magazines featuring printed fictional short stories in illustrated form which feature original creator-owned characters from animated, action adventure, comedy, or drama features

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

 

REASON FOR SUSPENSION

 

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). 87566648

 

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.uspto.gov/rsi/rsi.

 

 

 

/Justine N. Burke/

Justine N. Burke

Trademark Examining Attorney

Law Office 121

571-270-1631

Justine.Burke@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.uspto.gov/.  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.uspto.gov/trademarks/process/status/.

 

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