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:  June 20, 2020

 

Introduction

 

The Office has reassigned this application to the undersigned trademark examining attorney. In a previous Office action registration was refused because of a likelihood of confusion with several registered marks. In addition applicant was required to submit an acceptable specimen for the services in class 35 and to amend the identification of services.  Finally applicant was informed of a prior-filed application which could pose a likelihood of confusion if it registered.

 

Applicant has submitted a new specimen and amended the identification of services, satisfying those requirements.  Applicant has also argued against the likelihood of confusion refusal.  However applicant’s arguments are unpersuasive and the refusal is maintained as the following services:

 

Class 35: Development of advertising campaigns for television, print media and web pages via production of video and audio content; Post-production editing services for video and audio commercials.

 

Class 41: Photography; Photography services; Video production services; Film and video production

 

Applicant has filed an Opposition proceeding against the earlier filed application and has submitted a consent agreement with the owner of the earlier-filed application.  The submitted consent agreement is a “naked consent” and is insufficient to overcome a likelihood of confusion refusal because it neither (1) sets forth reasons why the parties believe there is no likelihood of confusion, nor (2) describes the arrangements undertaken by applicant to avoid confusing the public.  See In re Mastic, 829 F.2d 1114, 1117-18, 4 USPQ2d 1292, 1295-96 (Fed. Cir. 1987); In re Permagrain Prods., Inc., 223 USPQ 147, 149 (TTAB 1984); TMEP §1207.01(d)(viii).  These consents are generally accorded little weight in a likelihood of confusion determination without additional factors to support confusion is unlikely.  See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1362, 177 USPQ 563, 568 (C.C.P.A. 1973). While the owner of the earlier-filed application has limited their services, applicant has not limited their own services.  Applicant’s services include all manner of video production services, including those similar or the same as the services listed in the earlier-filed application. Therefore this consent agreement does not resolve the potential likelihood of confusion refusal and the application is resuspended pending the disposition of the opposition proceeding and the earlier-filed application.

 

If applicant submits a consent agreement that (1) indicates the registrant’s consent to the use and registration of the mark, and (2) addresses one or both of the factors listed above, this refusal will be reconsidered.  However, consent agreements are but one factor to be taken into account with all of the other relevant circumstances bearing on a likelihood of confusion determination.  In re N.A.D. Inc., 754 F.2d 996, 999, 224 USPQ 969, 971 (Fed. Cir. 1985); In re E. I. du Pont, 476 F.2d at 1361, 177 USPQ at 567; TMEP §1207.01(d)(viii); see also In re Bay State Brewing Co., 117 USPQ2d 1958, 1963 (TTAB 2016).

 

Factors to be considered in weighing a consent agreement include the following:

 

(1)        Whether the consent shows an agreement between both parties;

 

(2)        Whether the agreement includes a clear indication that the goods and/or services travel in separate trade channels;

 

(3)        Whether the parties agree to restrict their fields of use;

 

(4)        Whether the parties will make efforts to prevent confusion, and cooperate and take steps to avoid any confusion that may arise in the future; and

 

(5)        Whether the marks have been used for a period of time without evidence of actual confusion.

 

See In re Four Seasons Hotels Ltd., 987 F.2d 1565, 1569, 26 USPQ2d 1071, 1073 (Fed. Cir. 1993); In re Mastic, 829 F.2d at 1117-18, 4 USPQ2d at 1295-96; cf. Bongrain Int’l (Am.) Corp. v. Delice de Fr., Inc., 811 F.2d 1479, 1485, 1 USPQ2d 1775, 1779 (Fed. Cir. 1987).

 

Therefore 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). 88418584

 

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).

 

            - Opposition No(s). 91254835

 

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. 

 

 

/David A. Brookshire/

Examining Attorney

Law Office 114

(571) 272-7991

David.Brookshire@uspto.gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on June 20, 2020 for

U.S. Trademark Application Serial No. 88706851

 

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. 

 

/David A. Brookshire/

Examining Attorney

Law Office 114

(571) 272-7991

David.Brookshire@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.”