To: | Costa Limited (nfriedma@hodgsonruss.com) |
Subject: | U.S. Trademark Application Serial No. 88114859 - COSTA - N/A |
Sent: | August 18, 2019 06:25:26 AM |
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. 88114859
Mark: COSTA
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Correspondence Address: |
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Applicant: Costa Limited
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Reference/Docket No. N/A
Correspondence Email Address: |
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SUSPENSION NOTICE
No Response Required
Issue date: August 18, 2019
The application is suspended for the reason(s) specified below. See 37 C.F.R. §2.67; TMEP §§716 et seq.
Application suspended until submission of foreign registration or proof that foreign registration was renewed. Applicant is required to provide a copy of a foreign registration from applicant’s country of origin; the foreign registration must be valid when the U.S. registration issues. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii)-(iii); TMEP §§1004, 1004.01(a). Action on the application is suspended until the USPTO receives a copy of such foreign registration or proof that the foreign registration was renewed. TMEP §§716.02(b), 1003.04. Applicant must also provide an English translation if the foreign registration or renewal document is not in English. 37 C.F.R. §2.34(a)(3)(ii)-(iii).
If the foreign application abandons or the foreign registration is not renewed, applicant should promptly notify the trademark examining attorney. See TMEP §§1003.08, 1004.01(a). In such case, applicant may amend the application to rely on another filing basis, if appropriate, and will retain the priority filing date, if applicable. TMEP §§1003.08, 1004.01(a).
Refusal(s) and/or requirement(s) resolved and maintained and continued. The following refusal(s) and/or requirement(s) is/are satisfied, obviated and/or withdrawn:
• 2(d) refusals based on U.S. Registration Nos. 4642872 (obviated due to consent agreement) and 5573711 (withdrawn (based on applicant’s arguments)
• Prior Pending Advisory based on U.S. Application Serial No. 88100286 (based on
applicant’s effective filing date preceding the cited applicant’s filing date)
• Identification of Goods for Class 029 and 032 (in part, as set forth below)
See TMEP §713.02.
The following refusal(s) and/or requirement(s) is/are maintained and continued:
• Identification of Goods (in part, as set forth below)
Specifically, the wording “liquid drinks mixers namely, syrups for making flavored drinks, essences for making flavored water (not in the nature of essential oils)” in Class 032 contains parentheses. Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed. See TMEP §1402.12. The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).” Id.
Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.
The following amendment is suggested for this particular phrase: “liquid drinks mixers namely, syrups for making flavored drinks, essences for making flavored water, not in the nature of essential oils”.
See id. These refusal(s) and/or requirement(s) will be made final once this application is removed from suspension, unless a new issue arises. See TMEP §716.01.
Suspension process. The USPTO will periodically check this application to determine if it should remain suspended. See TMEP §716.04. As needed, the trademark examining attorney will issue a letter to applicant to inquire about the status of the reason for the suspension. TMEP §716.05.
No response required. Applicant may file a response, but is not required to do so.
/tfrazier/
Tamara Frazier
Trademark Attorney
Law Office 116
(571) 272-8256
tamara.frazier@uspto.gov