Suspension Letter

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

SUSPENSION NOTICE

No Response Required

 

 

Issue date:  July 19, 2019

 

STATUS OF APPLICATION

 

Pursuant to TMEP §716, applicant is advised of the following status of the application. Prior to issuance of this suspension notice, the following issues were outstanding with this application:

 

• Prior-Filed Application Advisory
• Identification of Goods Amendment Requirement
• Disclaimer Requirement of "LOCKBOX"

 

In light of applicant's response dated July 3, 2019, the examining attorney has determined the following:

 

• The Prior-Filed Application Advisory is continued and maintained.
• The Identification of Goods Amendment Requirement is satisfied.
• The Disclaimer Requirement is satisfied.

 

The application is suspended for the reason specified below.  See 37 C.F.R. §2.67; TMEP §§716 et seq. 

 

The pending application below has an earlier filing date or effective filing date than applicant’s application.  If the mark in the application below registers, the USPTO may refuse registration of applicant’s mark under Section 2(d) because of a likelihood of confusion with the registered mark.  15 U.S.C. §1052(d); see 37 C.F.R. §2.83; TMEP §1208.02(c).  Action on this application is suspended until the prior-filed application below either registers or abandons.  37 C.F.R. §2.83(c).  Information relevant to the application below was sent previously.

 

            - U.S. Application Serial No. 87922295 ("LOCK BOX" & Design)

 

Applicant argues that the design of the mark of the prior-filed application is the dominant portion, and thus that there is no likelihood of confusion between the marks. See July 3, 2019 office action response, pgs. 6-8. However, when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). Moreover, the wording of the mark of the prior-filed application is larger than the design, and though the wording "LOCK" is in the form of a lock, the wording "LOCK" is still the most prominent feature. Therefore, this argument is not persuasive.

 

Similarly, applicant argues that the wording "DIAMOND" is the dominant portion of the applied-for mark, and thus that consumers are likely to focus on the wording such that there is no likelihood of confusion between the marks. See July 3, 2019 office action response, pg. 8. However, marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii). Here, "LOCKBOX" or "LOCK BOX" is shared by both marks, and creates the same overall commercial impression, due to the similar nature of the goods. Moreover, the wording "DIAMOND" does not obviate similarity of the marks. Specifically, applicant is "Diamond Paper Box Company," and thus it is likely that consumers would believe that the mark in the prior-filed application is merely a shortening of the applied-for mark (emphasis added). Therefore, this argument is not persuasive.

 

Furthermore, applicant argues that the mark in the prior-filed application only includes the word "BOX", rather than "LOCK". See July 3, 2019 office action response, pg. 8. However, this is not accurate. The literal element of the mark of the prior-filed application is "LOCK BOX", regardless of whether "LOCK" is also in the shape of a lock. See application, attached to the January 9, 2019 office action and hereby incorporated by reference. Therefore, this argument is not persuasive.

 

Finally, applicant argues that the disclaimer of "LOCKBOX" and "LOCK BOX" in both marks renders those portions the non-dominant portions of the marks, and therefore that there is no likelihood of confusion. See July 3, 2019 office action response, pg. 9. However, marks must be considered in their entireties; therefore, a disclaimer does not remove the disclaimed portion from the mark for the purposes of comparing marks in a likelihood of confusion determination.  Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 1053, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012); In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010).  The public is generally not aware of disclaimers in trademark applications and registrations that reside only in the USPTO’s records.  See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing Shen Mfg. Co. v. Ritz Hotel, Ltd., 393 F.3d 1238, 1243, 73 USPQ2d 1350, 1355 (Fed. Cir. 2004); In re Nat’l Data Corp., 753 F.2d 1056, 1059, 224 USPQ 749, 751 (Fed. Cir. 1985)). Therefore, though the wording is disclaimed, it is still considered in the comparison of marks and, as noted above, adds to the similarity of the marks. Thus, this argument is not persuasive.

 

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. 

 

 

/Bianca Allen/

Trademark Examining Attorney

Law Office 123

(571) 272-5667

bianca.allen@uspto.gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on July 19, 2019 for

U.S. Trademark Application Serial No. 88130404

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter.  Please follow the steps below.

 

(1)  Read the official letter.  No response is necessary.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

/Bianca Allen/

Trademark Examining Attorney

Law Office 123

(571) 272-5667

bianca.allen@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”