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:  July 31, 2019

 

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on July 9, 2019.

 

In a previous Office action dated January 16, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(d) for a likelihood of confusion with a registered mark, namely, the marks in Registration Nos. 2665807 (“FIRST THINGS FIRST”) and 5296291 (“FIRST THINGS FIRST”), both owned by First Things First, Inc.  In addition, applicant was required to satisfy the following requirement:  amend the identification of goods. Finally, applicant was provided information regarding pending U.S. Application Serial No. 88171827 (“FIRST THINGS”), which may present a bar to registration of applicant’s mark based on a likelihood of confusion under Trademark Act Section 2(d).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. 

 

In response, applicant amended the identification of goods and argued that there is no likelihood of confusion between the applied-for mark and the mark in U.S. Registration No. 2701448 (“K U R T W A R N E R FIRST THINGS FIRST F O U N D A T I O N MATTHEW 6:33”). Applicant appears to have attached the wrong argument. In addition, applicant did not address the mark in the prior-filed pending application.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: definite amended identification provided.  See TMEP §§713.02, 714.04. 

 

In addition, the Trademark Act Section 2(d) refusal is continued and maintained and this application is suspended. See TMEP §716.01. 

 

 

SUSPENSION

 

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. 88171827 (“FIRST THINGS”)

 

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

 

No response required.  Applicant may file a response, but is not required to do so. 

 

 

/Jacquelyn A. Jones/

Jacquelyn A. Jones

Examining Attorney

Law Office 120

(571) 272-4432

Jacquelyn.jones@uspto.gov

 

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on July 31, 2019 for

U.S. Trademark Application Serial No. 88207124

 

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. 

 

/Jacquelyn A. Jones/

Jacquelyn A. Jones

Examining Attorney

Law Office 120

(571) 272-4432

Jacquelyn.jones@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.”