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:

 

This Office action is in response to the applicant’s communication dated April 23, 2019. In a previous Office action issued April 15, 2019, the examining attorney refused registration of the applied-for mark for the following issue: a partial refusal under Section 2(d) of the Trademark Act for a likelihood of confusion with U.S. Registration No. 2519686. After consideration of the applicant’s communication, this refusal is CONTINUED and MAINTAINED. However, the trademark examining attorney is suspending action on the application for the reason stated below.  See 37 C.F.R. §2.67; TMEP §§716 et seq. 

 

Prior-Filed Applications

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

 

            - Application Serial Nos. 87747239, 87747139, 88113391, and 88000759

 

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.

 

Advisory: Section 2(d) Likelihood of Confusion

In its April 23, 2019 communication, the applicant argues that, in actual use, the registered mark is only being used in connection with “border towels”. However, the determination of likelihood of confusion is based on the description of the goods in the application and registration at issue, not on extrinsic evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014).  Broad and unrestricted identifications are presumed to encompass all goods of the type described. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018). The identification of goods in the registration broadly identifies its goods as “towels” and this wording is presumed to encompass all goods of the type described, including hooded towels in the application.

 

The inclusion of different design elements in the marks does not diminish the similarity between the marks. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911. Thus, the term “VALIANT” in the applied-for mark will be considered the source-indicating term and this is the shared term, which is depicted first and largest in the registered mark.

 

The applicant indicates in its communication that if its argument is not accepted, International Class 24 should be deleted from the application. However, the Office does not accept requests to delete goods from the application in the alternative. The applicant must affirmatively and unconditionally elect to delete International Class 24 from the application if it would like to do so. Accordingly, a likelihood of confusion remains between the applied-for mark and the cited registration and action on this application is suspended pending the disposition of the prior-filed applications.

 

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.

 

/Thomas Young/

Examining Attorney

Law Office 120

thomas.young@uspto.gov

(571) 272-5152

 

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.