To: | Essenlix Corporation (esxip@essenlix.com) |
Subject: | U.S. Trademark Application Serial No. 88205002 - SNAP - ESX-T065 |
Sent: | September 05, 2019 10:19:38 AM |
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. 88205002
Mark: SNAP
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Correspondence Address: |
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Applicant: Essenlix Corporation
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Reference/Docket No. ESX-T065
Correspondence Email Address: |
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SUSPENSION NOTICE
No Response Required
Issue date: September 05, 2019
The application is suspended for the reason specified below. See 37 C.F.R. §2.67; TMEP §§716 et seq.
The pending application below has an earlier filing date or effective filing date than applicant’s application. If the mark in the application 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. 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 below either registers or abandons. 37 C.F.R. §2.83(c). Information relevant to the application below was sent previously.
- U.S. Application Serial No. 88137974
Applicant states that there is no relatedness of the goods, but the trademark examining attorney remains concerned regarding a likelihood of confusion.
Refusal and requirement resolved and maintained and continued. The following advisory and refusal are obviated:
• U.S. Serial No. 8731321 has abandoned and no longer presents a possible bar to registration
• Section 2(d) Refusal – Likelihood of Confusion based on U.S. Registration No. 4246624 (SNAPPATH) as applicant has deleted the goods at issue in this refusal
See TMEP §713.02.
The following refusal and requirement are maintained and continued:
• Section 2(d) Refusal – Likelihood of Confusion based on U.S. Registration Nos. 4320844 (SNAPMD) and 4834468 (SNAPCARE).
Applicant puts forth twelve other SNAP marks in Class 44. In the first place, the mere submission of a list of registrations or a copy of a private company search report does not make such registrations part of the record. See In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1405 n.17 (TTAB 2018) (citing In re 1st USA Realty Prof’ls, 84 USPQ2d 1581, 1583 (TTAB 2007); In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974)); TBMP §1208.02; TMEP §710.03.
To make third party registrations part of the record, an applicant must submit copies of the registrations, or the complete electronic equivalent from the USPTO’s automated systems, prior to appeal. In re Star Belly Stitcher, Inc., 107 USPQ2d 2059, 2064 (TTAB 2013); TBMP §1208.02; TMEP §710.03. Accordingly, these registrations will not be considered.
Nor does applicant’s exclusionary identification language overcome the refusal. The fact that the services of the parties differ is not controlling in determining likelihood of confusion. The issue is not likelihood of confusion between particular services, but likelihood of confusion as to the source or sponsorship of those services. In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003); In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); TMEP §1207.01.
• Identification of Services
Applicant still has not specified the “healthcare testing” in Class 44.
Medical services, medical assistance, medical counseling, healthcare testing in the nature of diagnostic testing, and diagnostic tests for personal wellness, namely, in the fields of cancer, blood abnormalities, immune diseases, neurological diseases, cardiovascular diseases, infectious diseases, viral diseases, genetic diseases, and other tissue-based diagnostic testing, cytology, and cell-based testing; Medical services for the detection and identification of nucleic acids in a sample, namely, DNA and RNA screening for medical purposes; all of the aforesaid services not including medical consultations provided via phone, online or videoconferencing and providing information about medical test results to patients and medical professionals in the form of reports
See id. The refusal and requirement 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.
/Leslee A. Friedman/
Leslee A. Friedman
Trademark Examining Attorney
Office 120
leslee.friedman@uspto.gov
(571) 272 - 5278