To: | DONGDONG WANG (tungmingchan7@gmail.com) |
Subject: | U.S. Trademark Application Serial No. 88539584 - SKINOW - N/A |
Sent: | January 10, 2020 05:59:29 PM |
Sent As: | ecom121@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88539584
Mark: SKINOW
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Correspondence Address: |
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Applicant: DONGDONG WANG
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Reference/Docket No. N/A
Correspondence Email Address: |
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SUSPENSION NOTICE
No Response Required
Issue date: January 10, 2020
This suspension notice follows applicant’s correspondence submitted on December 20, 2019.
In a previously issued Office action, the applicant was notified of a prior-filed application which may present a potential bar to registration pursuant to Section 2(d) of the Trademark Act if the prior application registers. The applicant was also required to amend the description of mark and color claim, as well as to appoint U.S. Counsel to represent the applicant. Upon further review of the applicant’s correspondence, the requirements have been satisfied. See TMEP §713.02.
However, upon further review of the register and the applicant’s arguments submitted in the record, the application is suspended for the reason specified below. See 37 C.F.R. §2.67; TMEP §§716 et seq.
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. 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 below either registers or abandons. 37 C.F.R. §2.83(c). Information relevant to the application below was sent previously.
- U.S. Application Serial No. 87328715
Applicant contends in the response that there is no likelihood of confusion because the goods and services identified in the prior-filed application are classified in Classes 009 and 042 whereas the applicant’s goods are classified in Class 007. However, this argument is unpersuasive since the fact that the Office classifies goods or services in different classes does not establish that the goods and services are unrelated under Trademark Act Section 2(d). See TMEP §1207.01(d)(v). The determination concerning the proper classification of goods or services is a purely administrative determination unrelated to the determination of likelihood of confusion. In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (citing Jean Patou, Inc. v. Theon, Inc., 9 F.3d 971, 975, 29 USPQ2d 1771, 1774 (Fed. Cir. 1993)).
Additionally, the compared goods 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] 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, because the marks at issue are identical and are for related goods and services, suspension is proper. Accordingly, because the prior-filed application is still pending and a Section 2(d) refusal is not yet appropriate, the present application is suspended until the prior-filed application either registers or abandons.
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.
/Amer Raja/
Amer Raja
Examining Attorney
Law Office 121
(571) 270 5936
amer.raja@uspto.gov