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:  October 08, 2019

 

 

The application is suspended for the reasons specified below.  See 37 C.F.R. §2.67; TMEP §§716 et seq. 

 

The pending application below has an earlier filing date or effective filing date than applicant’s application.  If the mark in the application 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. 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 below either registers or abandons.  37 C.F.R. §2.83(c).  Information relevant to the application below was sent previously.

 

            - U.S. Application Serial No.  87901487

 

 

The application is also suspended until disposition of the following cited registration:  U.S. Registration Number 4441728.  Registration maintenance documents are or were due to be filed for the registration cited against applicant in a refusal based on Trademark Act Section 2(d).  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). 

 

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. 

 

 

Please note that the amended identifications of goods submitted in the following classes are accepted:  International Classes 3 and 21. However, the requirement for an acceptable identification regarding the International Class 5 goods is maintained and CONTINUED.  In this regard, please note that the wording “deodorizing agents, except for human and animals” in the International Class 5 identification is unacceptable as unduly broad.  In this regard, the following is acceptable:  “all purpose deodorizing preparations for household, commercial or industrial use; the foregoing not for human beings or for animals.”

 

 

Moreover, the Section 2(d) refusal regarding cited U.S. Registration Number 4441728 is maintained and CONTINUED.  In this regard, the applicant argues that the respective goods are in no way related, in particular, because the applicant has specifically excluded any application to animals in the identification.  The examiner finds this argument unpersuasive.  The majority of the identification of goods does not exclude application to animals.  Moreover, the evidence already of record clearly indicates that the respective goods travel along the same channels of trade rendering confusion likely here.  See again the excerpt from the initial refusal below:

 

“The applicant’s cleaning preparations, including soaps, articles for cleaning, including sponges, brushes, and air freshening and air deodorizing agents, all presumably for pets or for use by pet owners, and the registrant’s pet products, i.e. pet bets and pets cushions, are all goods likely to interest and be used by the same end pet owners rendering confusion likely in this instance. This is particularly true in that these types of goods can travel along the same channels of trade, as well as emanate from the same sources. See the attached Internet evidence in this regard.  For example, see the attached Internet excerpts indicating that Pet Smart sells pet brushes, pet hair removing sponges, odor eliminators/air fresheners, as well as pet beds in trade.  See also the attached Internet excerpts regarding Harry Barker brand pet brushes, refreshing spray and pet beds.  See also the attached Internet excerpts from sitstayforever.com offering dog soap as well as dog beds in trade.  Under these circumstances, confusion is likely.”

 

 

Now see also the additional Internet evidence attached in further support of the stated refusal.  For example, see the attached Internet excerpt regarding Bodhi Dog brand carpet deodorizer specifically for pet applications.  See also the attached internet excerpt regarding Bubbas brand pet odor eliminator specifically for pet beds. See also the attached Internet excerpts regarding All Pet Supplies Outlet offering scrubber sponges specifically for pets in trade, as well as air deodorizers specifically for use by pet owners, including for use in pet beds.  Under these circumstances, confusion is highly likely.

 

Finally, please note that where the marks of the respective parties are identical or virtually identical, as in this case (i.e. PLANETLOVE/PLANET LOVE) the degree of similarity or relatedness between the goods needed to support a finding of likelihood of confusion declines.  See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).

 

 

 

/Zhaleh Delaney/

Trademark Attorney

Trademark Law Office 116

(571) 272-9153

Zhaleh.Delaney@uspto.gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on October 08, 2019 for

U.S. Trademark Application Serial No. 88260402

 

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. 

 

/Zhaleh Delaney/

Trademark Attorney

Trademark Law Office 116

(571) 272-9153

Zhaleh.Delaney@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.”