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:  November 01, 2019

 

INTRODUCTION

 

This Office action is in response to applicant’s two communications filed on 10/17/2019.

 

In a previous Office action(s) dated 04/17/2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with a registered mark. In addition, applicant was required to satisfy the following requirement(s): clarify the mark description. Applicant was also notified of prior-filed applications which would present potential refusals of registration under Trademark Act Section 2(d) should they register.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement(s) have been satisfied: clarified mark description.

 

Applicant’s arguments and amendment with respect to the refusals have been considered and found unpersuasive for the reasons set forth below. Applicant makes 3 main arguments with respect to the refusal:

 

·     Applicant requests withdrawal of the cited prior Registration for ROMAN with a ROMAN LEGIONNAIRE SOLDIER, U.S. Registration No. 0251517 for "bread" based upon the overall differences between the marks LAROMANA & CROWN DESIGN and ROMAN with a ROMAN SOLDIER DESIGN.

 

With respect to the differences in design elements, case law establishes that the word portion may be more likely to be impressed upon a purchaser’s memory and to be used when requesting the goods and/or services. Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d 1424, 1431 (TTAB 2013) (citing In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999)); TMEP §1207.01(c)(ii); see In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012) (citing CBS Inc. v. Morrow, 708 F.2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir 1983)). Moreover, registrant’s mark is “Roman” while applicant’s mark translates to “the Roman”. Both marks include “Roman”. Case law establishes that the inclusion of the term “the” (or the Italian equivalent, in this case) at the beginning of one of the marks will generally not affect or otherwise diminish the overall similarity between the marks. See In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009) (finding WAVE and THE WAVE “virtually identical” marks; “[t]he addition of the word ‘The’ at the beginning of the registered mark does not have any trademark significance.”); In re Narwood Prods. Inc., 223 USPQ 1034, 1034 (TTAB 1984) (finding THE MUSIC MAKERS and MUSIC-MAKERS “virtually identical” marks; the inclusion of the definite article “the” is “insignificant in determining likelihood of confusion”). Therefore, under the doctrine of foreign equivalents, the two marks are confusingly similar.

 

·     Applicant argues that Registrant’s mark creates a different overall commercial impression because Registrant uses the mark with “MEAL”, not just the word “ROMAN”.

 

Applicant argues that Registrant's mark, as demonstrated by the attached specimens of use filed with the initial application, Declarations of Use and Renewals, all show prior Registrant's mark as "ROMAN MEAL", not just the word ROMAN.

 

However, determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  Additionally, the goods and/or services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).

 

·     Eight (8) out of Eleven (11) ROMAN marks owned by Registrant, have been cancelled due to non-use.

 

The cited registered mark is not cancelled. A trademark or service mark registration on the Principal Register is prima facie evidence of the validity of the registration and the registrant’s exclusive right to use the mark in commerce in connection with the specified goods and/or services.  See 15 U.S.C. §1057(b); TMEP §1207.01(d)(iv).

 

As such, the following refusal and requirement are continued and maintained:

 

·      REFUSAL – SECTION 2(d) – LIKELIHOOD OF CONFUSION

·      POTENTIAL REFUSAL – PRIOR-FILED APPLICATIONS

 

 

See id.  These refusal(s) and requirement(s) will be made final once this application is removed from suspension, unless a new issue arises.  See TMEP §716.01.

 

Further, the trademark examining attorney is suspending action on the application for the reason(s) stated below.  See 37 C.F.R. §2.67; TMEP §§716 et seq. 

 

SUSPENSION OF APPLICATIONS

 

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

 

Application suspended until legal proceeding(s) involving the applied-for mark is resolved.  The legal proceeding(s) below involves (1) a registered mark that conflicts with applicant’s mark under Trademark Act Section 2(d), a mark in a pending application(s) 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(s) could directly affect whether applicant’s mark can register, action on this application is suspended until proceeding(s) is resolved.  See 37 C.F.R. §2.67; TMEP §§716.02(a), (c)-(d).

 

          - Opposition No(s). 91249150

 

CONCLUSION

 

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. 

 

 

/Xu, Elaine/

Trademark Examining Attorney

Law Office 128

(571) 270-5297

elaine.xu@uspto.gov

 

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on November 01, 2019 for

U.S. Trademark Application Serial No. 88287006

 

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. 

 

/Xu, Elaine/

Trademark Examining Attorney

Law Office 128

(571) 270-5297

elaine.xu@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.”