To: | Flat World Holdings, LLC (ddonahue@cvlfirm.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88231118 - HIVE - FWSC-5 |
Sent: | 5/6/2019 9:48:36 AM |
Sent As: | ECOM125@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88231118
MARK: HIVE
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CORRESPONDENT ADDRESS: |
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/trademarks/index.jsp
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APPLICANT: Flat World Holdings, 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: 5/6/2019
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 applications 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 these referenced applications was sent previously.
- Application Serial Nos. 79216026 and 87763864
Although Application Serial No. 87780626 has now registered, the trademark examining attorney is maintaining and continuing the potential refusal(s) until final disposition of the remaining earlier-filed applications. A copy of information relevant to Application Serial Nos. 79216026 and 87763864 was sent previously. The trademark examining attorney notes applicant’s arguments that the marks in the pending applications are not likely to cause confusion with applicant’s mark. However, the trademark examining attorney has found applicant’s arguments unpersuasive and still believes there may be a likelihood of confusion between applicant’s mark and the mark(s) in the cited prior-pending application(s), should they register. Thus, this application is suspended.
REFUSAL AND REQUIREMENT CONTINUED AND MAINTAINED: The following refusal and requirement are continued and maintained:
Section 2(d) Partial Refusal – Likelihood of Confusion
Applicant’s applied-for mark is substantially similar to registrant’s mark. In addition, it is common for entities providing applicant’s software services to also provide registrant’s software goods. Therefore, consumers encountering applicant’s and registrant’s marks used in connection with the respective goods and services are likely to believe that the goods and services emanate from the same source.
Identification of Services
The wording “Providing temporary use of on-line non-downloadable software and applications for transportation … inbound shipments, outbound delivery” in the identification of services is indefinite and must be clarified because it does not make clear the function or purpose of the software as it relates to transportation, inbound shipments and outbound delivery.
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.
/Leslie Ann Thomas-Riggs/
Leslie Ann Thomas-Riggs
Trademark Examining Attorney
USPTO, Law Office 125
(571) 272-5469
leslie.thomas-riggs@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.