To: | SOHO BEATS, LLC (tm@sohobeats.me) |
Subject: | U.S. Trademark Application Serial No. 88454219 - B - N/A |
Sent: | April 01, 2020 03:38:54 PM |
Sent As: | ecom130@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88454219
Mark: B
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Correspondence Address: |
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Applicant: SOHO BEATS, LLC
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Reference/Docket No. N/A
Correspondence Email Address: |
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SUSPENSION NOTICE
No Response Required
Issue date: April 01, 2020
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). 86781131
Refusal(s) and/or requirement(s) resolved and maintained and continued. The following refusal(s) and/or requirement(s) is/are obviated:
• Prior-filed application advisories re: Ser. Nos. 86819656, 86819639, 86819587 and 86819547 (now all abandoned)
See TMEP §713.02.
The following refusal(s) and/or requirement(s) is/are maintained and continued:
• Section 2(d) Refusal as to Reg. Nos. 5196428, 5520056, 4814904, 4814905, 5355341, 4988864, 3514282, 4060781, 3881677, 4517948 and 4317339.
See id. These refusal(s) and/or requirement(s) will be made final once this application is removed from suspension, unless a new issue arises. See TMEP §716.01.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
The trademark examining attorney incorporates by reference all of the relevant arguments and evidence made of record in the Office Action dated August 22, 2019 and further submits the following:
In its response to the Office Action, applicant submits generally that registrant’s goods were acquired through “fraud by impersonation and criminal impersonations, [and] hence, neither they enjoy the protection provided by the Trademark Act of 1946 nor their cancellation is governed by this provisions of the said Act…” and further submits specific claims/evidence to support its position. Further, applicant submits generally that Beats Electronics (owner of the cited registrations) is no longer a business entity and thus, can no longer hold/own the cited trademark registrations. Please reference applicant’s response to the Office Action dated February 21, 2020. The trademark examining attorney has considered applicant’s arguments and found the foregoing unpersuasive.
Thus, evidence and arguments that constitute a collateral attack on a cited registration, such as information or statements regarding a registrant’s nonuse of its mark, business entity dissolution or other similar claim(s) 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(s) instituted by an applicant or other third party.
The trademark examining attorney reserves and maintains the right to more fully address applicant’s arguments and evidence if and when a further and/or final Office Action issues pending the disposition of the prior-pending cited application.
RESPONSE GUIDELINES
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.
/Erin Z. Dyer/
Erin Zaskoda Dyer
Trademark Examining Attorney
Law Office 130/TM Innovation Lab
(571) 272-9740
erin.dyer@uspto.gov (preferred)