To: | IMPERIUM HOLDINGS, INC. (ZGTrademarks@taftlaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88111661 - LATITUDE - S9731 GN001 |
Sent: | 2/4/2019 5:41:33 PM |
Sent As: | ECOM120@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88111661
MARK: LATITUDE
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CORRESPONDENT ADDRESS: |
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/trademarks/index.jsp
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APPLICANT: IMPERIUM HOLDINGS, INC.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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SUSPENSION NOTICE: NO RESPONSE NEEDED
ISSUE/MAILING DATE: 2/4/2019
INTRODUCTION: This suspension notice is in response to applicant’s communication filed on January 4, 2019.
In a previous Office action dated December 26, 2018, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with two registered marks. In addition, applicant was required to satisfy the following requirements: amend the identification and classification of services, and comply with multiple-class application requirements. Applicant was also advised that a prior-filed mark may bar registration of the applied-for mark.
Based on applicant’s response, the trademark examining attorney notes that the following requirements have been satisfied: amend the identification and classification of services, and comply with multiple-class application requirements. See TMEP §§713.02, 714.04.
Also, in the response, applicant submitted the following statement regarding the prior-filed mark: “Applicant is also the owner of Application US Serial Number 88108046”. However, this statement of ownership of the prior-filed mark was not submitted with the proper verification/declaration. Therefore, this ownership claim has not been accepted and will not be entered into the record (see below for instructions on how to submit an ownership statement verified with an affidavit or signed declaration under 37 C.F.R. §2.20). Further, this prior-filed mark is still pending. Therefore, the trademark examining attorney is suspending action on the application for the reason stated below. See 37 C.F.R. §2.67; TMEP §§716 et seq.
Also, please note that the Section 2(d) refusal is continued and maintained.
ACTION ON APPLICATION SUSPENDED: The effective filing date of the pending application identified below precedes the filing date of applicant’s application. If the mark in the referenced application registers, applicant’s mark may be refused registration under Section 2(d) because of a likelihood of confusion with that registered mark. 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 is either registered or abandoned. 37 C.F.R. §2.83(c). A copy of information relevant to this referenced application was sent previously.
- Application Serial No. 88108046
Applicant may provide evidence of ownership of the mark by satisfying one of the following:
(1) Record the assignment with the USPTO’s Assignment Recordation Branch (ownership transfer documents such as assignments can be filed online at http://etas.uspto.gov) and promptly notify the trademark examining attorney that the assignment has been duly recorded.
(2) Submit copies of documents evidencing the chain of title.
(3) Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant is the owner of Application Serial No. 88108046.” To provide this statement using the Trademark Electronic Application System (TEAS), use the “Response to Office Action” form; answer “yes” to wizard questions #3 and #10; then, continuing on to the next portion of the form, in the “Additional Statement(s)” section, check the box for “Miscellaneous Statement” and write in the free form text field for the “Miscellaneous Statement” that “Applicant is the owner of Application Serial No. 88108046,” inserting the relevant application serial number; and follow the instructions within the form for signing. The form must be signed twice; a signature is required both in the “Declaration Signature” section and in the “Response Signature” section.
TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.25, 3.73(a)-(b); TMEP §502.02(a).
Recording a document with the Assignment Recordation Branch does not constitute a response to an Office action. TMEP §503.01(d).
REFUSAL CONTINUED AND MAINTAINED: The following refusal is continued and maintained:
NO RESPONSE NECESSARY: 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.
/Jessica Hilliard/
Jessica Hilliard
Examining Attorney, Law Office 120
Ph: 571-272-4031
Jessica.Hilliard@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.