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 23, 2019

 

The Office has reassigned this application to the undersigned trademark examining attorney.

 

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

 

Refusals, advisory, and requirements maintained and continued

 

The following refusals, advisory, and requirements are maintained and continued: 

• Section 2(d) Refusal – Likelihood of Confusion;
• Potentially Conflicting Prior Pending Application;
• Identification and Classification of Goods.

 

See TMEP §713.02.

 

These refusals and requirements will be continued once this application is removed from suspension.  See TMEP §716.01.

 

 

Section 2(d) Refusal – Likelihood of Confusion

 

In the Response dated October 1, 2019, applicant provided arguments against the refusals.  Applicant’s arguments are not persuasive in light of the similarities of the marks and the relatedness of the goods.  Accordingly, the refusals are continued and maintained. 

 

Potentially Conflicting Prior Pending Application

 

In the Response dated October 1, 2019, applicant provided arguments against the prior-filed application.  Applicant’s arguments are not persuasive.  Where the marks of the respective parties are virtually identical, as in this case, the degree of similarity or relatedness between the goods needed to support a finding of likelihood of confusion declines.  See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).  As such, the advisory is continued and maintained.

 

The pending application below has an earlier filing date or effective filing date than applicant’s application.  If the mark in the application 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. 88000569

 

 

Identification and Classification of Goods

 

In the Response dated October 1, 2019, applicant amended the identifications of goods and added International Class 21.  However, the identification in International Class 21 remains indefinite.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  As such, the requirement is continued and maintained.  The identification in International Class 19 is acceptable. 

 

Specifically, “glass tiles” are classified in International Class 19 and not in Class 21.  Moreover, “Non-metal mosaic tiles for building” are classified in International Class 19.  “Mosaic art tiles made of glass and ceramic”, “Mosaics of glass and ceramic tiles, not for construction”, and “Decorative ceramic tiles not for use as building materials” are classified in International Class 21.  As such, the type and purpose of the tile mosaics in Class 21 must be specified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Additionally, the original wording of “title mosaics” should be incorporated into the identification to show that the goods are within the scope of the original identification.  See the bold text below. 

 

Applicant may substitute the following wording, if accurate:

 

Class 21:  Tile mosaics in the nature of vitrified porcelain and glass tiles, not for use as building materials

 

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods may not later be reinserted.  See TMEP §1402.07(e).

 

For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

Accordingly, the specimen for International Class 21 is not acceptable as it appears to be a building material in the nature of a backsplash in Class 19. 

 

 

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. 

 

/Rebecca T. Caysido/

Trademark Examining Attorney

Law Office 123

571-270-0926

Rebecca.Caysido@uspto.gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on October 23, 2019 for

U.S. Trademark Application Serial No. 88331513

 

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. 

 

Caysido, Rebecca

/Rebecca T. Caysido/

Trademark Examining Attorney

Law Office 123

571-270-0926

Rebecca.Caysido@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.”