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 28, 2019

 

This Office action is in response to the applicant’s communication dated October 15, 2019. In a previous Office action issued April 15, 2019, the examining attorney refused registration of the applied-for mark for the following issues: a partial refusal under Section 2(d) of the Trademark Act for a likelihood of confusion with U.S. Registration Nos. 2896651, 3128439, 4704956, 5131938, and 5131939; a requirement that the identification of goods be made definite; a requirement for additional information about the applicant’s goods; and a requirement for a disclaimer of the term “WILD”.

 

After consideration of the applicant’s communication, the following requirements are SATISFIED: the requirement that the identification of goods be made definite; and requirement for additional information about the applicant’s goods. In addition, in light of the amendment of the identification of goods, the following refusal and requirement are OBVIATED: the partial refusal under Section 2(d) of the Trademark Act for a likelihood of confusion with U.S. Registration Nos. 2896651 and 3128439; and the requirement for a disclaimer of the term “WILD”.

 

However, the following refusal is CONTINUED and MAINTAINED: the partial refusal with respect to International Class 3 under Section 2(d) of the Trademark Act for a likelihood of confusion with U.S. Registration Nos. 4704956, 5131938, and 5131939. Further, the application is suspended for the reason specified below.  See 37 C.F.R. §2.67; TMEP §§716 et seq. 

 

Prior-Filed Applications

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

 

            - U.S. Application Serial Nos. 86651821 and 86651823

 

Advisory: Section 2(d) Likelihood of Confusion

In the applicant’s October 15, 2019 communication, it argues that the marks are sufficiently distinct because the cited registrations coexist. However, this does not establish that the applied-for mark would be unlikely to cause consumer confusion with the registered marks. The applicant also submits no evidence that demonstrates consumers would believe the goods at issue emanate from different commercial entities based on the slight differences in the marks despite the shared commercial impressions and sound.

 

Furthermore, prior decisions and actions of other trademark examining attorneys in registering other marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial and Appeal Board.  TMEP §1207.01(d)(vi); see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017).  Each case is decided on its own facts, and each mark stands on its own merits.  In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d at 1793 n.10.

 

In addition, the applicant’s argument that its prior registrations peacefully coexist with the cited registrations is unpersuasive. In In re Strategic Partners, Inc., 102 USPQ2d 1397, 1399-1400 (TTAB 2012), the Trademark Trial and Appeal Board only reversed a Section 2(d) refusal based on an applicant’s prior registration for the following unique set of facts:  (1) the marks in applicant’s prior registration and application were virtually identical (“no meaningful difference” existed between them, such that they were “substantially similar”); (2) the goods were identical in part; and (3) the prior registration had co-existed for at least five years with the cited registration (both being more than five years old and thus immune from attack on likelihood of confusion grounds).  See TMEP §1207.01.  The Board acknowledged these facts constituted a “unique situation,” such that an applicant’s prior registration would generally need to fit within these precise parameters to overcome a Section 2(d) refusal.  In re Strategic Partners, Inc., 102 USPQ2d at 1400; TMEP §1207.01.

 

In this case, by contrast, applicant’s prior registration does not correspond to the facts set forth in In re Strategic Partners, Inc.  See TMEP §1207.01.  Specifically, applicant’s prior registration is not for the same relevant goods in International Class 3.  Thus applicant’s prior registration does not obviate the Section 2(d) refusal.

 

Similarly, the applicant’s argument regarding the number and nature of similar marks is also unpersuasive. Applicant has submitted printed or electronic copies of third-party registrations for marks containing the wording “WILD HARVEST” to support the argument that this wording is weak, diluted, or so widely used that it should not be afforded a broad scope of protection.  These registrations appear to be for goods and services that are predominantly different from or unrelated to those identified in applicant’s application. 

 

The weakness or dilution of a particular mark is generally determined in the context of the number and nature of similar marks in use in the marketplace in connection with similar goods or services.  See Nat’l Cable Tel. Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1579-80, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991).  Evidence of widespread third-party use of similar marks with similar goods and/or services “is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection” in that particular industry or field.  Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373-74, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005); see In re Coors Brewing Co., 343 F.3d 1340, 1345, 68 USPQ2d 1059, 1062-63 (Fed. Cir. 2003). 

 

However, evidence comprising third-party registrations for similar marks with different or unrelated goods and services, as in the present case, has “no bearing on the strength of the term in the context relevant to this case.”  See Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1058 (TTAB 2017) (citing In re i.am.symbolic, llc, 866 F.3d at 1328, 123 USPQ2d at 1751).  Thus, these third-party registrations submitted by applicant are insufficient to establish that the wording “WILD HARVEST” is weak or diluted.

 

Lastly, “‘[a] showing of actual confusion is not necessary to establish a likelihood of confusion.’”  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); TMEP §1207.01(d)(ii).  “[T]he relevant test is likelihood of confusion, not actual confusion.”  In re Detroit Athletic Co., 903 F.3d 1297, 1309, 128 USPQ2d 1047, 1053 (Fed. Cir. 2018) (emphasis in original).

 

Accordingly, a likelihood of confusion persists between the applied-for mark and the cited registrations with respect to the goods in International Class 3 and the partial refusal is CONTINUED and MAINTAINED.

 

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. 

 

 

/Thomas P. Young/

Examining Attorney

Law Office 120

thomas.young@uspto.gov

(571) 272-5152

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on October 28, 2019 for

U.S. Trademark Application Serial No. 88284885

 

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. 

 

/Thomas P. Young/

Examining Attorney

Law Office 120

thomas.young@uspto.gov

(571) 272-5152

 

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.”