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:  July 08, 2019

 

INTRODUCTION

 

This Suspension Notice is in response to applicant’s communication filed on May 31, 2019.

 

In a previous Office action dated April 18, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: 

 

-       Prior-Filed Applications – Advisory

-       Disclaimer Requirement

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied:

 

-       Disclaimer Requirement

 

See TMEP §§713.02, 714.04. 

 

ADVISORY CONTINUED AND MAINTAINED:

 

-       Prior-Filed Applications – Advisory

 

See TMEP §716.01.

                                                                                                      

SUSPENSION

 

Action on this application is SUSPENDED pending the disposition of the previously referenced potentially-conflicting pending applications.  37 C.F.R. §2.83(c); TMEP §§716.02(c), 1208.02(c).

 

Applicant was previously provided information regarding pending U.S. Application Serial Nos. 87473509 and 87473543, which may present a bar to registration of applicant’s mark based on a likelihood of confusion under Trademark Act Section 2(d).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  In response, applicant unpersuasively argued that the marks in the pending applications is not likely to cause confusion with applicant’s mark. 

 

First, applicant’s argument that the marks are not confusingly similar because the marks contain additional wording is unpersuasive because applicant’s PORTSIDE BBQ mark is confusingly similar to the cited pending PORTSIDE PIER and PORTSIDE GELATO & COFFEE applications as the marks share an identical first term. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”). Thus, because consumers are most likely to focus on the term PORTSIDE when requesting the services of the parties, the dominant portion of the marks that must be given greater weight in this analysis is the term PORTSIDE – which is identical between the marks.

 

Second, applicant’s argument that the services of the parties are unrelated is equally unpersuasive because although applicant has limited the identification of the services, the cited prior-filed applications do not contain any limitations as to the services. Determining likelihood of confusion is based on the description of the 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)).  In this case, the cited prior-filed applications use broad wording to describe “restaurant, café, and bar services” – without any limitations as to cannels of trade or classes of purchasers – which presumably encompasses all services of the type described, including applicant’s more narrow “restaurant and bar services onboard a cruise ship, excluding cafe, ice cream parlor, and coffee shop services.”  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, the services of the parties are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

The trademark examining attorney has found applicant’s arguments unpersuasive and still believes there may be a likelihood of confusion between applicant’s mark and the marks in the cited prior-pending applications, should they register.  Thus, this application is suspended.

 

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. 

 

 

/Xheneta Ademi/

Examining Attorney

Law Office 122

(571) 272-7151

xheneta.ademi@uspto.gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on July 08, 2019 for

U.S. Trademark Application Serial No. 88311922

 

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. 

 

/Xheneta Ademi/

Examining Attorney

Law Office 122

(571) 272-7151

xheneta.ademi@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.”