To: | Polish Folklore Import Co., Inc. (klahey@sponslerlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88322387 - PRL - 2015-164 - Request for Reconsideration Denied - Return to TTAB |
Sent: | June 08, 2020 05:50:17 PM |
Sent As: | ecom107@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88322387
Mark: PRL
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Correspondence Address: |
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Applicant: Polish Folklore Import Co., Inc.
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Reference/Docket No. 2015-164
Correspondence Email Address: |
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REQUEST FOR RECONSIDERATION
AFTER FINAL ACTION
DENIED
Issue date: June 08, 2020
Applicant has provided additional arguments against the refusal to register which are unpersuasive. Applicant’s arguments relate primarily to extrinsic circumstances surrounding the use of the registered mark. As noted in the final action, likelihood of confusion determinations are based on the description of goods and services in the application and registration at issue, and not on extrinsic evidence of actual use. The registrant owns a registration for PRL for “bar services.” Applicant seeks registration of PRL for “beer.” The evidence of record has established that it is exceedingly common for the same entity to provide both beer and bar services under the same mark and in the same channels of trade. See the newly attached evidence from www.birdsongbrewing.com, www.highlandbrewing.com, and www.bellsbeer.com.
Despite applicant’s qualification that applicant is “making no statement whatsoever concerning the legitimacy of the registered mark,” applicant’s arguments amount to a collateral attack on the registered mark by stating that the mark is abandoned or not used. These statements are not relevant during ex parte prosecution. See In re Dixie Rests., 105 F.3d 1405, 1408, 41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997); In re Peebles Inc., 23 USPQ2d 1795, 1797 n.5 (TTAB 1992); TMEP §1207.01(d)(iv). Such evidence and arguments may, however, be pertinent to a formal proceeding before the Trademark Trial and Appeal Board to cancel the cited registration. The appropriate inquiry is as to whether PRL used in connection with “beer” and PRL used in connection with “bar services” are likely to be confused, and the evidence and analysis of record establishes that such confusion is likely.
Accordingly, the following requirement(s) and/or refusal(s) made final in the Office action dated 11/15/20 are maintained and continued:
• Section 2(d) Refusal – Likelihood of Confusion
See TMEP §§715.03(a)(ii)(B), 715.04(a).
If applicant has already filed an appeal with the Trademark Trial and Appeal Board, the Board will be notified to resume the appeal. See TMEP §715.04(a).
If applicant has not filed an appeal and time remains in the six-month response period, applicant has the remainder of that time to (1) file another request for reconsideration that complies with and/or overcomes any outstanding final requirement(s) and/or refusal(s), and/or (2) file a notice of appeal to the Board. TMEP §715.03(a)(ii)(B). Filing a request for reconsideration does not stay or extend the time for filing an appeal. 37 C.F.R. §2.63(b)(3); see TMEP §715.03(c).
Diane Collopy
/Diane Collopy/
Trademark Examining Attorney
Law Office 107
diane.collopy@uspto.gov
(571) 270-3118 (informal communication only)