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 26, 2019

 

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

 

Application suspended until legal proceeding involving the applied-for mark is resolved.  The legal proceeding below involves (1) a registered mark that conflicts with applicant’s mark under Trademark Act Section 2(d), a mark in a pending application that could conflict with applicant’s mark under Section 2(d) if it registers, and/or (3) the registrability of applicant’s mark.  15 U.S.C. §1052; see 37 C.F.R. §2.83; TMEP §§716.02(a), (c)-(d), 1208 et seq.  Because the outcome of this proceeding could directly affect whether applicant’s mark can register, action on this application is suspended until proceeding is resolved.  See 37 C.F.R. §2.67; TMEP §§716.02(a), (c)-(d).

 

            - Opposition No. 92072256

 

Refusal maintained and continued.  The following refusal is maintained and continued:    

 

• Refusal under Trademark Act Section 2(d) – Likelihood of Confusion

 

See TMEP §713.02.  This refusal will be made final once this application is removed from suspension, unless a new issue arises.  See TMEP §716.01.

 

Furthermore, prior-filed U.S. Application Serial No. 87334598 (CLAROGEL) has abandoned and is no longer a potential bar towards the registration of the applied-for mark.

 

Applicant’s Arguments Against the Section 2(d) Refusal

 

Applicant’s arguments have been considered and found unpersuasive for the reasons set forth below.

 

Applicant argues that its “mark CLARO has a different pronunciation, commercial impression and meaning than the marks in the cited registrations” 5221043 (CLAROR) and 3003490 (ACLARO).

 

Applicant’s argument is unpersuasive because there is only one letter that differentiates applicant’s mark from the registered marks.  As such, there is only a slight difference in sounds between the marks.  However, slight differences in the sound of similar marks will not avoid a likelihood of confusion.  In re Energy Telecomm. & Elec. Ass’n, 222 USPQ 350, 351 (TTAB 1983); see In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012).  In light of the closely related goods, the does not outweigh the similarities between the marks.

 

Applicant points out that “Applicant’s mark is used for a light emitting device (in Class 10) whereas the marks in the cited registration are used for skin care preparations in Class 5.”

 

This information is unpersuasive because the compared goods need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

The previously attached evidence shows that applicant’s and registrants’ goods are related because goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use.

 

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. 

 

/Marco Wright/

Trademark Examining Attorney

Law Office 120

(571) 272-4918

marco.wright@uspto.gov

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on September 26, 2019 for

U.S. Trademark Application Serial No. 88271379

 

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. 

 

/Marco Wright/

Trademark Examining Attorney

Law Office 120

(571) 272-4918

marco.wright@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.”