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

 

This Office action is supplemental to and supersedes the previous Office action issued on March 25, 2019 in connection with this application. 

 

In a previous Office action dated March 25, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  Specimen Refusal- Mark Specimen Appears to be Digital Mock-Up. In addition, applicant was advised of a prior-filed pending application which if registered could result in a Section 2(d) Likelihood of Confusion Refusal.

 

Based on applicant’s response, the trademark examining attorney notes that the following refusal have been obviated:  verified substitute specimen acceptable to overcome specimen refusal. See id. 

 

As such, the only remaining issue is the prior-filed pending application. In the May 21, 2019 response, applicant argued that the goods of the prior-filed application and the applied-for goods are not related and therefore no likelihood of confusion is possible should the prior-filed application register. Specifically, applicant argues that the applied-for goods “incontinence diapers, guards, and pads” are “absorbent clothing items . . . sold in a particular aisle devoted to such products” and as such are unrelated to the cleaning products offered by the prior applicant. The examining attorney finds this argument unpersuasive. While, the goods relating to the prior-filed application and applicant’s goods are not identical, the goods are clearly related and could be sold under the same mark. As such, because the marks are identical and the goods are related, if the prior-filed application registers, a Section 2(d) Refusal would be required. Thus, the trademark examining attorney is suspending action on the application for the reason stated.  See 37 C.F.R. §2.67; TMEP §§716 et seq. 

 

The effective filing date of the pending application identified below precedes the filing date of applicant’s application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Section 2(d) because of a likelihood of confusion with that registered mark.  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 is either registered or abandoned.  37 C.F.R. §2.83(c).  A copy of information relevant to this referenced application was sent previously.

 

            - Application Serial No. 87469248

 

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.

 

Dominic Pino

/Dominic R. Pino III/

Trademark Examining Attorney

Law Office 127

(571) 272-1611

dominic.pino@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.88253868

 

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.