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:  September 19, 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. 88072684

 

Application suspended until disposition of cited registration(s).  Registration maintenance documents are or were due to be filed for a registration cited against applicant in a refusal based on Trademark Act Section 2(d), specifically U.S. Registration No. 2279785.  15 U.S.C. §1052(d).  If the maintenance documents are not timely filed and accepted by the USPTO, the cited registration will cancel and/or expire and will no longer bar registration of applicant’s mark under Section 2(d).  See 15 U.S.C. §§1058, 1059, 1141k.  Action on this application is suspended for six months to await disposition of the cited registration; after which, the trademark examining attorney will determine whether to maintain or withdraw the Section 2(d) refusal.  See 37 C.F.R. §2.67; TMEP §716.02(e). 

 

Refusals maintained and continued.  The following refusals are maintained and continued: 

 

•         Section 2(d) Refusal – Likelihood of Confusion:  The refusal to register the mark as to Class 028 because of a likelihood of confusion with the mark in U.S. Registration No. 5037097 is maintained and continued.  Similarly, the refusal to register the mark as to Class 025 because of a likelihood of confusion with the mark in U.S. Registration No.  2902061 is maintained and continued.  Applicant’s arguments have been considered and are found unpersuasive.

 

Specifically, with respect to applicant’s argument as to the “weakness” of the wording in the mark, applicant provided no evidence and merely referred to a total number of “live” registrations and active applications containing the term.  However, merely referencing registrations does not make such registrations part of the record.  See In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1405 n.17 (TTAB 2018) (citing In re 1st USA Realty Prof’ls, 84 USPQ2d 1581, 1583 (TTAB 2007); In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974)); TBMP §1208.02; TMEP §710.03.

 

To make third party registrations part of the record, an applicant must submit copies of the registrations, or the complete electronic equivalent from the USPTO’s automated systems, prior to appeal.  In re Star Belly Stitcher, Inc., 107 USPQ2d 2059, 2064 (TTAB 2013); TBMP §1208.02; TMEP §710.03.  Accordingly, these registrations will not be considered, and applicant’s argument regarding weakness is found unpersuasive.

 

Applicant also argues that its deletion of “mobiles” from the identification nullifies the refusal as to the mark in U.S. Reg. No. 2902061.  However, the refusal was not limited to the identical goods and therefore applicant’s deletion would not obviate the refusal.  Applicant itself provides both mobiles and stuffed toys, as shown by applicant’s specimens, so the goods are provided in commerce under the same marks.  Additional third party marketplace evidence showing the relatedness of stuffed toys and mobiles with be provided in the final Office action.  Therefore, applicant’s argument regarding the “nullified” refusal are also found unpersuasive. 

 

See TMEP §713.02.

 

These 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. 

 

 

/Christina M. Riepel/

Trademark Examining Attorney

Law Office 124

(571) 272-6358

christina.riepel@uspto.gov

 

 

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on September 19, 2019 for

U.S. Trademark Application Serial No. 88247182

 

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. 

 

/Christina M. Riepel/

Trademark Examining Attorney

Law Office 124

(571) 272-6358

christina.riepel@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.”