Reconsideration Letter

United States Patent and Trademark Office (USPTO)

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

 

 

 

REQUEST FOR RECONSIDERATION

AFTER FINAL ACTION

DENIED

 

 

Issue date:  January 27, 2020

 

This letter is in response to applicant’s communication filed December 16, 2019.

 

Applicant’s request for reconsideration is denied.  See 37 C.F.R. §2.63(b)(3).  The trademark examining attorney has carefully reviewed applicant’s request and determined the request did not:  (1) raise a new issue, (2) resolve all the outstanding issue(s), (3) provide any new or compelling evidence with regard to the outstanding issue(s), or (4) present analysis and arguments that were persuasive or shed new light on the outstanding issue(s).  TMEP §§715.03(a)(ii)(B), 715.04(a). 

 

Specifically, applicant argues that the highly similar wording in the marks should be given little weight because the applicant disclaimed the wording in the applied-for mark. The entry of a disclaimer will not overcome a refusal under Section 2(d) of the Trademark Act. See In re MCI Commc’ns Corp., 21 USPQ2d 1534, 1538 (Comm’r Pats. 1991); TMEP §1213.01(c).

 

Applicant further argues that stylization in the applied-for mark distinguishes it from the registered mark. Applicant argues that the registered mark is a standard character mark and thus cannot be used with a design. Respectfully, applicant appears to conflate the mark in a registration (which cannot include a design element and be registered as a standard character mark) and the actual real-world use of that mark, which may include stylization and/or design. As explained in the previous actions, a mark in typed or standard characters only claims rights in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Regardless of the applicant’s design, the applied-for mark contains wording that is highly similar to the wording that the registrant claims a right to. That wording makes the marks confusingly similar and such similarity cannot be overcome by applicant’s design.

 

Accordingly, the following requirement(s) and/or refusal(s) made final in the Office action dated September 16, 2019, are maintained and continued: 

 

            • Section 2(d) Refusal – Likelihood of Confusion

 

See TMEP §§715.03(a)(ii)(B), 715.04(a). 

 

If applicant has already filed an appeal with the Trademark Trial and Appeal Board, the Board will be notified to resume the appeal.  See TMEP §715.04(a).

 

If applicant has not filed an appeal and time remains in the six-month response period, applicant has the remainder of that time to (1) file another request for reconsideration that complies with and/or overcomes any outstanding final requirement(s) and/or refusal(s), and/or (2) file a notice of appeal to the Board.  TMEP §715.03(a)(ii)(B).  Filing a request for reconsideration does not stay or extend the time for filing an appeal.  37 C.F.R. §2.63(b)(3); see TMEP §715.03(c). 

 

/Robert Ratcliffe/

Examining Attorney        

Law Office 109

Phone: (571) 272-5257

Fax: (571) 273-5562

robert.ratcliffe@uspto.gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on January 27, 2020 for

U.S. Trademark Application Serial No. 88200741

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

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

 

 

/Robert Ratcliffe/

Examining Attorney        

Law Office 109

Phone: (571) 272-5257

Fax: (571) 273-5562

robert.ratcliffe@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).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from January 27, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

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.”