To: | Black Dragon Capital, LLC (ip@akerman.com) |
Subject: | U.S. Trademark Application Serial No. 88160086 - BLACK DRAGON - 11501-6 |
Sent: | August 05, 2019 06:59:25 PM |
Sent As: | ecom112@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88160086
Mark: BLACK DRAGON
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Correspondence Address: |
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Applicant: Black Dragon Capital, LLC
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Reference/Docket No. 11501-6
Correspondence Email Address: |
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SUSPENSION NOTICE
No Response Required
Issue date: August 05, 2019
The application is suspended for the reason(s) specified below. See 37 C.F.R. §2.67; TMEP §§716 et seq.
The pending application(s) below has an earlier filing date or effective filing date than applicant’s application. If the mark in the application(s) 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(s). 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(s) below either registers or abandons. 37 C.F.R. §2.83(c). Information relevant to the application(s) below is provided in this letter.
- U.S. Application Serial No(s). 87670374
Refusal(s) and/or requirement(s) resolved and maintained and continued. The following refusal(s) and/or requirement(s) is/are withdrawn:
• potential citation to U.S. Application Serial No. 87898329 because the application has abandoned
See TMEP §713.02.
The following refusal(s) and/or requirement(s) is/are maintained and continued:
• Section 2(d) Refusal as to U.S. Registration Number 3696721 (DRAGON CAPITAL)
See id. These refusals will be made final once this application is removed from suspension, unless a new issue arises. See TMEP §716.01.
Response to Applicant’s Arguments
- Objection to Applicant’s Evidence
- Relatedness
- Sophisticated Consumers
The fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011). Further, where the purchasers consist of both professionals and the public, the standard of care for purchasing the goods is that of the least sophisticated potential purchaser. In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. at 1325, 110 USPQ2d at 1163).
- Specimens and Website Evidence
Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)). In this case the applicant attempts to limit the breadth of the services of the Registrant by attempting to cite their specimens and website as evidence that the services offered by the parties are not related. The determination of the scope of the Registrant’s services are from the plain meaning of the identification of services and not extrinsic evidence.
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.
/Charles H Hiser IV/
Examining Attorney
Law Office 112
(571) 272-7526
charles.hiser@uspto.gov