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 27, 2019

 

 

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

 

INTRODUCTION

 

As previously indicated in the Office Action of May 10, 2019, the pending application 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 application(s) below was sent previously.

 

            - U.S. Application Serial No(s). 4241331

 

This Office action is in response to applicant’s communication filed on August 26, 2019.  In a previous Office action dated May 10, 2019, applicant was required to address the following refusal and requirements:  2(d) Refusal based on a likelihood of confusion with the marks in U.S. Registration Nos. 5001401 and 4241331; a requirement to amend the identification of goods. The trademark examining attorney also included an advisory that prior pending applications 88286005 and 87883244 may present a bar to registration. 

 

Based on applicant’s response, the trademark examining attorney notes that the following requirements have been satisfied: amending the identification of goods.  Also, prior pending application Serial No. 88286005 was expressly abandoned, thereby mooting it as a basis for a possible refusal under Section 2(d).  See TMEP §§713.02, 714.04. 

 

Further, the trademark examining attorney continues and maintains the refusal in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES

 

• Section 2(d) Refusal – Likelihood of Confusion
• Amendment to Identification of Goods Required

 

SECTION 2(D) REFUSAL – LIKELIHOOD OF CONFUSION

 

Applicant argues that since Section 2(d) refusals using the cited references were not made in other applications (including those cited by the Examining Attorney), then they should not be made in this application, either. 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 (quoting In re Boulevard Entm’t, 334 F.3d 1336, 1343, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003)).

 

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. 

 

 

/James Prizant/

Trademark Examining Attorney

Law Office 128

(571) 270-3068

James.Prizant@USPTO.GOV

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on September 27, 2019 for

U.S. Trademark Application Serial No. 88297585

 

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. 

 

/James Prizant/

Trademark Examining Attorney

Law Office 128

(571) 270-3068

James.Prizant@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.”