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 13, 2019

 

 

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

 

The pending application(s) 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 is provided in this letter.

 

            - U.S. Application Serial Nos. 88353898 and 87582011

 

Applicant will note that application serial no. 88353898 has registered. However, “[w]hen an application is suspended pending the disposition of more than one earlier-filed conflicting application, and one of the conflicting applications matures into registration, the examining attorney will normally not issue a refusal of registration until all the remaining conflicting application(s) are registered or abandoned, in order to avoid issuing piecemeal refusals.” TMEP §716.02(c).

 

Refusal and requirements resolved and maintained and continued. 

 

The following refusals and requirements are satisfied/obviated/withdrawn: 

·       Acceptable identification of services and compliance with multiple-class application requirements;

·       The Section 2(d) Refusal as to the following registration ONLY is obviated by applicant’s identification amendments: U.S. Registration no. 3072614;

·       The Section 2(d) Refusal as to the following registrations ONLY is withdrawn: U.S. Registration nos. 4607341 and 4615794; and

·       USPTO records indicate that cited registration nos. 1927534 and 3595239 have been cancelled and/or expired and is no longer a bar to registration of applicant’s mark.  Therefore, the Section 2(d) refusal is withdrawn with respect to these particular registrations.

 

See TMEP §713.02.

 

The following refusal is maintained and continued: 

·       Section 2(d) Refusal as to U.S. Registration no. 4004840 – limited to all goods in Class 025 and the following in Class 009: Protective wear, namely, safety goggles, helmets

 

See id.  The refusal will be made final once this application is removed from suspension, unless a new issue arises.  See TMEP §716.01.

 

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

 

Applicant was previously provided information regarding the above pending U.S. Application Serial Nos which may present a bar to registration of applicant’s mark based on a likelihood of confusion under Trademark Act Section 2(d) and the mark was refused under Trademark Act Section for a likelihood of Confusion with registration no. 4004840.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  In response, applicant argued that the marks in the pending applications is not likely to cause confusion with applicant’s mark and that there is no likelihood of confusion with the registered mark.  Specifically, applicant argued that TRACKER is dilute and that applicant owns a family of marks.

 

With respect to applicant’s argument, applicant argues that the applied-for mark is part of a family of marks and that the purchasing public’s familiarity with these marks obviates any likelihood of confusion.  However, the Trademark Trial and Appeal Board has found that a family of marks argument is “not available to an applicant seeking to overcome a [likelihood of confusion] refusal.”  In re Cynosure, Inc., 90 USPQ2d 1644, 1645-46 (TTAB 2009).  Specifically, an applicant’s ownership of other similar marks has little relevance in this context because the focus of a likelihood of confusion analysis in an ex parte case is on the mark applicant seeks to register, rather than other marks applicant has used or registered.  In re Cynosure, Inc., 90 USPQ2d at 1645-46; In re Ald, Inc., 148 USPQ 520, 521 (TTAB 1965); TMEP §1207.01(d)(xi). 

 

In addition, the goods and services in the prior registrations are not the same as those in the current application.

 

Further, applicant’s and registrant’s marks are identical and cover identical and closely related goods. Similarly, the prior-filed applications are closely related to those of applicant’s goods. Thus, applicant’s arguments are unpersuasive.

 

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, and that there is a likelihood of confusion with the cited registration.  Thus, this application is suspended ad applicant’s arguments will be more fully addressed in a future communication.

 

 

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. 

 

 

/Sarah E. Kunkleman/

Sarah E. Kunkleman

Trademark Examining Attorney

Law Office 105

571-272-6151

sarah.kunkleman@uspto.gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on November 13, 2019 for

U.S. Trademark Application Serial No. 88361790

 

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. 

 

/Sarah E. Kunkleman/

Sarah E. Kunkleman

Trademark Examining Attorney

Law Office 105

571-272-6151

sarah.kunkleman@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.”