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 18, 2019

 

This suspension notice responds to applicant’s correspondence dated October 23, 2019.

 

The first Office action issued on June 17, 2019 cited Application Serial No(s). 88226437 as a potential bar to registration.  This application has been abandoned.  Therefore, the citation to this application is hereby withdrawn. 37 C.F.R. §2.83; TMEP §§1208 et seq. 

 

The application is suspended for the reason(s) 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 was sent previously.

 

            - U.S. Application Serial No(s). 88137760 for the mark UNITY

 

Applicant has offered several arguments against what the applicant has characterized as a refusal of registration pursuant to Trademark Act Section 2(d). The mark in the cited application has not yet registered, thus, no such refusal of registration has been issued.  However, applicant’s arguments have been reviewed and carefully considered and are addressed briefly as follows.

 

Applicant first claims that the services are different. However, it has long been held that the respective goods and/or services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i). Here, the services are not only similar to the extent that they include medical and health-related services, but closely related in that they may be provided by the same institutions to the same consumers.

 

Applicant also claims that the channels of trade are different.  However, no such distinctions are set forth in the services identified in the registration. Thus, they are presumed to encompass channels similar to or the same as those of the applicant’s services.

 

Applicant further claims that the commercial impressions of the marks are different.  However, since both marks consist of the same single word in standard character form, no such presumed impressions will be readily apparent to consumers when they encounter the marks in the marketplace.

 

Thus, applicant’s arguments have been considered but are unpersuasive.

 

ACCEPTABLE IDENTIFICATION OF GOODS AND/OR SERVICES REQUIRED

 

Applicant has elected to use wording in the proposed amendment to the identification of goods and/or services that is not found in the U.S. Acceptable Identification of Goods and Services Manual.  The wording that applicant has chosen to use instead does not meet the standards set forth in the Manual and is unacceptable.  Specifically, the following underlined wording in the identification of goods and/or services is indefinite and must be clarified as set forth below.  See TMEP §1402.01.  The exact nature of the goods and/or services cannot be determined from this wording. 

 

Class 44

prenatal testing for medical purposes

 

Applicant must clarify the nature of the services as noted in the Acceptable Identification of Goods and Services Manual, for example, “prenatal medical testing for diagnostic or treatment purposes.”

 

Applicant must amend this wording to specify the common commercial or generic name for the goods and/or services.  If there is no common commercial or generic name for the goods and/or services, then applicant must describe the nature of the goods and/or services as well as their main purpose, channels of trade, and the intended consumer(s).  See TMEP §1402.01.

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

An applicant may only amend an identification to clarify or limit the goods and/or services, but not to add to or broaden the scope of the goods and/or services.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.

 

It is the applicant’s duty to identify the goods and/or services, and any goods and/or services deleted from the application by amendment may not be reinserted at a later point in prosecution.  TMEP §1402.01(e). 

 

Applicant may find acceptable identification wording by: 1) using the sample wording provided in the Identification Manual for this purpose; 2) researching the Register for wording that has recently been accepted by the Office and is consistent with the current rules governing identifications; 3) using wording that is the common name widely used in the relevant industry or trade; or 4) drafting wording that otherwise complies with the requirements described in the Code of Federal Regulations as exemplified by the entries in the Identification Manual. 

 

 

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. 

 

 

/Edward Fennessy/

Attorney Advisor

Law Office 114

571-272-8804

Edward.Fennessy@USPTO.Gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on November 18, 2019 for

U.S. Trademark Application Serial No. 88372683

 

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. 

 

/Edward Fennessy/

Attorney Advisor

Law Office 114

571-272-8804

Edward.Fennessy@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.”