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:  August 14, 2019

 

This Office action is in response to applicant’s communication filed on 8/7/19.

 

The examining attorney has considered the applicant’s arguments regarding the Section 2(d) refusal but has found them to be unpersuasive.  Applicant has argued that the marks are not confusingly similar because they include an additional word that is not included in the applied-for mark.  The examining attorney respectfully disagrees.  Although applicant’s mark does not contain the entirety of the registered marks, applicant’s mark is likely to appear to prospective purchasers as a shortened form of the registrants’ mark.  See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)).  Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion.  See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii).  In this case, applicant’s mark does not create a distinct commercial impression from the registered marks because it contains some of the wording in the registered marks and does not add any wording that would distinguish it from those marks.

 

Applicant has argued that the cited “United-formative” marks are entitled to a narrow scope of protection.  The examining attorney respectfully disagrees.  Consumers may be able to distinguish “United-formative” marks from one another by looking to the additional word.  Since the applied-for mark does not include any additional wording or design element, this argument is not persuasive.

 

Applicant has finally argued that the refusal should be withdrawn because “UNITED serves as a source identified for United Airlines.” While this statement may be true as applied to transportation services, it does not obviate the stated refusal as to “USB cables, battery chargers” “Shirts, jackets, hats, scarves, socks.”

 

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 was sent previously.

 

            - U.S. Application Serial No(s). 87738758

 

The following refusal(s) and/or requirement(s) is/are maintained and continued: 

 

Section 2(d) refusal limited to “USB cables, battery chargers” “Shirts, jackets, hats, scarves, socks” based on a likelihood of confusion with the marks in U.S. Registration Nos. 5577152, 5539401, 5633717, and 5403450.

 

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. 

 

 

/Ronald McMorrow/

Examining Attorney

Law Office 118

571-272-9306

ronald.mcmorrow@uspto.gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on August 14, 2019 for

U.S. Trademark Application Serial No. 88171332

 

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. 

 

/Ronald McMorrow/

Examining Attorney

Law Office 118

571-272-9306

ronald.mcmorrow@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.”