To: | Terrell, Mercedes (mmartin@fpllaw.com) |
Subject: | U.S. Trademark Application Serial No. 88207438 - MAJIC - N/A |
Sent: | September 11, 2019 11:54:26 AM |
Sent As: | ecom124@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88207438
Mark: MAJIC
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Correspondence Address: FISCHBACH, PERLSTEIN, LIEBERMAN & ALMOND |
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Applicant: Terrell, Mercedes
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Reference/Docket No. N/A
Correspondence Email Address: |
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SUSPENSION NOTICE
No Response Required
Issue date: September 11, 2019
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. 87847650 (THE MAGIC MAN)
The pending application 88056221 (SUPERFICIALMAGIC) with Registration No. 5713405 has since registered, but the examining attorney is suspending pending the outcome of the other pending mark.
Refusal and requirement resolved and maintained and continued. The following requirement is satisfied:
• Mark Description and Color Claim Requirement
See TMEP §713.02.
The following refusal is maintained and continued:
• Section 2(d) Refusal – Likelihood of Confusion
The examining attorney is not persuaded by applicant’s arguments against refusal at this time.
While applicant argues that the marks are different in total, the only wording in the applicant’s mark is a phonetic equivalent of “magic” which is the dominant wording in the phrasing “YOU ARE MAGIC” in the registered mark. Further, the design and stylization in the applicant’s mark does not distinguish the marks sufficiently because the registered mark appears in standard character format and therefore could have a similar stylization and design elements in use.
The applicant has also provided a list of registration using the wording “MAGIC” to demonstrate weakness of the term in these classes. As an initial matter, the examining attorney objects to the evidence provided to support point because the applicant has not appropriately provided the full registration records as evidence rather than a list of search results. As such, the examining attorney cannot view what the goods and services are listed in these registrations and determine whether they are similar to those in the applicant’s and cited mark. The examining attorney has found that for the applicant’s and registrant’s podcast related goods and services in the fields currently specified that the wording “magic” is not weak wording on the register, but in fact is fairly strong at this time.
Regarding applicant’s arguments regarding presumption of registration, in a Section 2(d) analysis the overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
See id. The refusal 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.
/Alexandra El-Bayeh/
Trademark Examining Attorney
Law Office 124
(571) 270-5911
alexandra.el-bayeh@uspto.gov