To: | Hotaling & Co., LLC (jwk@kinnearlaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88244746 - FIERO - N/A |
Sent: | 5/28/2019 4:23:26 PM |
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. 88244746
MARK: FIERO
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CORRESPONDENT ADDRESS: |
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/trademarks/index.jsp
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APPLICANT: Hotaling & Co., 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: 5/28/2019
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:
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.