To: | Precare Corp. (norman@feldman-law.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88253868 - UNICARE - N/A |
Sent: | 5/28/2019 3:27:44 PM |
Sent As: | ECOM127@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88253868
MARK: UNICARE
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CORRESPONDENT ADDRESS: |
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/trademarks/index.jsp
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APPLICANT: Precare Corp.
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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
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 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.