To: | Advanced Wellness Clinics LLC (caharb@gmail.com) |
Subject: | U.S. Trademark Application Serial No. 88465266 - MADERMA - N/A |
Sent: | December 03, 2019 02:06:20 PM |
Sent As: | ecom117@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88465266
Mark: MADERMA
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Correspondence Address: |
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Applicant: Advanced Wellness Clinics LLC
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Reference/Docket No. N/A
Correspondence Email Address: |
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SUSPENSION NOTICE
No Response Required
Issue date: December 03, 2019
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). 88374104 (MAMADERMA)
Refusal(s) and/or requirement(s) resolved and maintained and continued.
The following refusal(s) and/or requirement(s) is/are maintained and continued:
• Section 2(d) Refusal citing U.S. Registration Nos. 3233153 (MEDERMA), 4084438 (MEDERMA), 3139600 (MEDERMA FOR KIDS), 2464771 (MEDERMA), and 2360460 (MEDERMA
See id. This refusal will be made final once this application is removed from suspension, unless a new issue arises. See TMEP §716.01.
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.
PROPOSED AMENDMENT TO THE MARK
The applicant’s response of November 11, 2019, indicates that to avoid confusion, the applicant will use the name “MADERMA as part of a new logo design with a completely different font from the current name.” The office records do not indicate that a substitute drawing was submitted that differed from the original drawing, nevertheless, the applicant is advised that the USPTO cannot accept an amendment to a mark if it will materially alter the mark in the drawing filed with the original application. 37 C.F.R. §2.72(a)(2), (b)(2); TMEP §807.14. An amendment to the mark is material when the USPTO would need to republish the mark with the change in the USPTO Trademark Official Gazette to fairly present the mark to the public. In re Thrifty, Inc., 274 F.3d 1349, 1352, 61 USPQ2d 1121, 1123-24 (Fed. Cir. 2001) (citing In re Hacot-Columbier, 105 F.3d 616, 620, 41 USPQ2d 1523, 1526 (Fed. Cir. 1997)); TMEP §807.14.
That is, an amendment is material if the altered mark does not retain “the essence of the original mark” or if the new and old forms do not “create the impression of being essentially the same mark.” In re Hacot-Columbier, 105 F.3d at 620, 41 USPQ2d at 1526 (quoting Visa Int’l Serv. Ass’n v. Life-Code Sys., Inc., 220 USPQ 740, 743-44 (TTAB 1983)); see, e.g., In re Who? Vision Sys., Inc., 57 USPQ2d 1211, 1218 (TTAB 2000) (amendment from “TACILESENSE” to “TACTILESENSE” a material alteration); In re CTB Inc., 52 USPQ2d 1471, 1475 (TTAB 1999) (amendment of TURBO with a design to just the typed word TURBO without design a material alteration).
When determining materiality, the addition of any element that would require a further search of the USPTO database for conflicting marks is also relevant. In re Guitar Straps Online LLC, 103 USPQ2d 1745, 1747 (TTAB 2012) (citing In re Pierce Foods Corp., 230 USPQ 307, 308-09 (TTAB 1986)); In re Who? Vision Sys. Inc., 57 USPQ2d at 1218-19; TMEP §807.14.
Andrea D. Saunders
/Andrea D. Saunders/
Trademark Attorney
Law Office 117
571-270-3856
Andrea.Saunders@uspto.gov