To: | Artpool LLC (maryfran@aspireip.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88147549 - MUSE - 4130-103 |
Sent: | 4/23/2019 8:00:58 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. 88147549
MARK: MUSE
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CORRESPONDENT ADDRESS: |
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/trademarks/index.jsp
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APPLICANT: Artpool LLC
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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: 4/23/2019
REFUSALS CONTINUED AND MAINTAINED: In a previous Office action dated January 25, 2019 the trademark examining attorney refused registration of the applied-for mark based on the following:
In addition, applicant was required to satisfy the following requirement:
Applicant filed a response on April 8, 2019, and the trademark examining attorney notes that, based on the response, the Identification Requirement has been satisfied. See TMEP §§713.02.
In regards to the remaining Section 2(d) refusals, applicant provided arguments that revolve around the dilution of the term MUSE. However, applicant did not provide any third party registrations for reference, and was not able to specifically demonstrate dilution of MUSE for fashion shows, the primary service of applicant, specifically for marks that begin and contain only MUSE as the dominant element. Therefore, the 2(d) citation for Registration No. 5462419 must be maintained. In addition, applicant was not able to specifically demonstrate dilution of identical or nearly identical MUSE marks for art showcases, and therefore the remaining citations must also be maintained. The trademark examining attorney will note that a general weakness or dilution of a term in a class (such as here in Class 41) does not eliminate protection for that wording, it often merely narrows the scope of specific services, and the scope of similarity in marks that may be protected. Here the various registrants have slightly different services, and each must be protected against applicant’s performing highly similar or identical services with highly similar or identical marks.
It should however be noted that Registration No. 4174021 has canceled and no longer presents a bar to registration.
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). 79247595 and 87830187
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.
/benjaminrosen/
Benjamin Rosen
Examining Attorney
Law Office 120
(571) 272-8425
benjamin.rosen@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.