To: | Areoz GmbH (TrademarksUS@eip.com) |
Subject: | U.S. Trademark Application Serial No. 88555620 - XLUBE - N/A |
Sent: | February 20, 2020 04:39:09 PM |
Sent As: | ecom108@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88555620
Mark: XLUBE
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Correspondence Address: |
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Applicant: Areoz GmbH
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Reference/Docket No. N/A
Correspondence Email Address: |
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SUSPENSION NOTICE
No Response Required
Issue date: February 20, 2020
This Office action is in response to applicant’s communication filed on 02/03/20.
Applicant’s Response, Dated 02/03/20
In its response, applicant explained that cited U.S. Registration No. 3655935 should be cancelled for failure to file renewal documents. The examining attorney has confirmed the cancellation of cited U.S. Registration No. 3655935, and therefore, the Trademark Act Section 2(d) refusal with U.S. Registration No. 3655935 is hereby withdrawn as said refusal is rendered moot.
Finally, in its response, applicant explained that it has filed a cancellation proceeding (Cancellation No. 92073381) against cited U.S. Registration No. 5099063. Accordingly, the examining attorney is hereby suspending action on the instant application pending the final disposition of Cancellation No. 92073381. As such, the examining attorney continues and maintains the underlying Trademark Act Section 2(d) Likelihood of Confusion refusal with U.S. Registration No. 5099063 herein.
Suspension
The application is suspended for the reason(s) specified below. See 37 C.F.R. §2.67; TMEP §§716 et seq.
Application suspended until legal proceeding(s) involving the applied-for mark is resolved. The legal proceeding(s) below involves (1) a registered mark that conflicts with applicant’s mark under Trademark Act Section 2(d), a mark in a pending application(s) that could conflict with applicant’s mark under Section 2(d) if it registers, and/or (3) the registrability of applicant’s mark. 15 U.S.C. §1052; see 37 C.F.R. §2.83; TMEP §§716.02(a), (c)-(d), 1208 et seq. Because the outcome of this proceeding(s) could directly affect whether applicant’s mark can register, action on this application is suspended until proceeding(s) is resolved. See 37 C.F.R. §2.67; TMEP §§716.02(a), (c)-(d).
- Cancellation No. 92073381
Refusal(s) resolved and maintained and continued. The following refusal is withdrawn:
• Section 2(d) Likelihood of Confusion Refusal with U.S. Reg. No. 3655935
See TMEP §713.02.
The following refusal is maintained and continued:
• Section 2(d) Likelihood of Confusion Refusal with U.S. Reg. No. 5099063
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.
/Brian P. Callaghan/
Trademark Examining Attorney
Law Office 108
Phone: (571) 272-4906
Email: brian.callaghan@uspto.gov