Suspension Letter

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

SUSPENSION NOTICE: NO RESPONSE NEEDED

 

ISSUE/MAILING DATE: 5/28/2019

 

 

REFUSALS CONTINUED AND MAINTAINED: In a previous Office action dated March 20, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:

• Section 2(d) Refusal – Likelihood of Confusion

 

Applicant filed a response on May 6, 2019.  In regards to the 2(d) refusals, applicant provided numerous arguments, but the arguments were, overall, unpersuasive.  In regards to its first argument, applicant provided no federal registrations that demonstrated any evidence of weakness or dilution – the COLA search results cannot be considered in this proceeding.  In regards to applicant’s second argument, the fact that two registrant’s co-exist is also not persuasive and mostly irrelevant.  These two marks are appear to be full names, which are readily distinguished from each other, whereas applicant’s mark appears to match both of those surnames identically (or nearly identically) without any additional matter to obviate any confusion.  In regards to its third argument that the goods are not related, applicant’s argument is not supported by the evidence, and to the extent applicant is claiming they are not related enough for these weak marks, applicant fails to demonstrate any alleged weakness to support this secondary argument.  Applicant also hypothetically proposes amending the identification of goods, but has not actually amended the goods, and therefore this argument is not ripe for consideration and not relevant.  It is also noted that the wording TEQUILA is a registered certification mark (U.S. Reg. No. 5225126) and must not be used to identify goods, as a registered mark cannot be used in that manner.  Therefore the refusal must be continued and maintained.

 

The examining attorney has also considered applicant’s arguments regarding the pending application, but the trademark examining attorney must still suspend action on the application for the reason stated below.  See 37 C.F.R. §2.67; TMEP §§716 et seq. 

 

The effective filing date of the pending application(s) 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 this referenced application(s) was sent previously.

 

            - Application Serial No(s). 87091191

 

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.

 

 

 

/benjaminrosen/

Benjamin Rosen

Examining Attorney

Law Office 120

(571) 272-8425

benjamin.rosen@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 5/28/2019 FOR U.S. APPLICATION SERIAL NO.88244746

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.gov.uspto.report/, enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.