To: | SBL Brands, LLC (rlamanna@fortislawpartners.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88197269 - FACEPLANT - N/A |
Sent: | 4/22/2019 11:19:53 AM |
Sent As: | ECOM103@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88197269
MARK: FACEPLANT
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CORRESPONDENT ADDRESS: |
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/trademarks/index.jsp
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APPLICANT: SBL Brands, 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: 4/22/2019
This Office action is in response to applicant’s communication filed on April 17, 2019. In a previous Office action(s) dated February 25, 2019, the trademark examining attorney cited a prior pending application that may pose a bar to registration in the event that it matures to registration. In addition, applicant was required to amend the identification of goods.
Based on applicant’s response, the trademark examining attorney notes that the requirement for a definite amended identification has been satisfied. See TMEP §§713.02, 714.04.
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). 88082862
Applicant presented brief arguments against this refusal, which were considered and found unpersuasive. With respect to the similarity of the marks, both marks contain the distinctive wording FACEPLANT. With respect to the relatedness of the goods, applicant offers soaps and lotions, while the prior pending application includes the goods “pre-moistened cosmetic wipes.” These goods are highly related, as both are cleansing products used on the face, and these goods are often offered by the same entity under the same mark. As such, the addition of the wording DREAMS in the third party mark is insufficient to overcome the identical nature of the FACEPLANT wording and the highly related nature of the goods.
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.
/Laura Golden/
Examining Attorney
Law Office 103
(571) 272-3928
laura.golden@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.