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:  October 05, 2020

 

The application is suspended for the reasons 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. 87896191

 

Application suspended until legal proceeding involving the applied-for mark is resolved.  The legal proceeding below involves a mark in a pending application that could conflict with applicant’s mark under Section 2(d) if it registers, and/or 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 could directly affect whether applicant’s mark can register, action on this application is suspended until proceeding is resolved.  See 37 C.F.R. §2.67; TMEP §§716.02(a), (c)-(d).

 

            - Cancellation No. 91263392

 

Refusal(s) and/or requirement(s) resolved and maintained and continued. 

 

The following refusal(s) and/or requirement(s) is/are maintained and continued because applicant did not address sufficiently these requirements in its response: 

 

•        SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE

 

A claim of distinctiveness under §2(f) is normally not filed in a §1(b) application before the applicant files an allegation of use, because a claim of acquired distinctiveness, by definition, requires prior use. TMEP 1212.09(a).

 

However, an intent-to-use applicant who has used the mark on related goods or services may file a claim of acquired distinctiveness under §2(f) before filing an allegation of use, if the applicant can establish that, as a result of the applicant’s use of the mark on other goods or services, the mark has become distinctive of the goods or services in the intent-to-use application, and that this previously created distinctiveness will transfer to the goods and services in the intent-to-use application when use in commerce begins. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1347, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001).

 

The Trademark Trial and Appeal Board has set forth the requirements for showing that a mark in an intent-to-use application has acquired distinctiveness:

 

The required showing is essentially twofold. First, applicant must establish, through the appropriate submission, the acquired distinctiveness of the same mark in connection with specified other goods and/or services in connection with which the mark is in use in commerce. All of the rules and legal precedent pertaining to such a showing in a use-based application are equally applicable in this context . . . . Second, applicant must establish, through submission of relevant evidence rather than mere conjecture, a sufficient relationship between the goods or services in connection with which the mark has acquired distinctiveness and the goods or services recited in the intent-to-use application to warrant the conclusion that the previously created distinctiveness will transfer to the goods or services in the application upon use.

 

In re Rogers, 53 USPQ2d 1741, 1744 (TTAB 1999).

 

To satisfy the first element, the applicant must establish acquired distinctiveness as to the other goods or services, such as via ownership of an active prior registration for the same mark for sufficiently similar or related goods or services.  To satisfy the second element, applicant must show "the extent to which the goods or services in the intent-to-use application are related to the goods or services in connection with which the mark is distinctive, and that there is a strong likelihood that the mark’s established trademark function will transfer to the related goods or services when use in commerce occurs." Rogers, 53 USPQ2d at 1745. In this case, the second element is not satisfied as it is not clear that apparel and beauty preparations are related to such an extent that goodwill with transfer to the related goods when use in commerce occurs. The relationship between the goods is not self-evident. Applicant must submit extrinsic evidence.

 

•        REQUEST FOR INFORMATION

•        AMENDED IDENTIFICATION OF GOODS

 

See id.  These requirements 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. 

 

 

/Valeriya Painter/

Examining Attorney

Law Office 121

(571) 270-7132

valeriya.painter@uspto.gov

 

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on October 05, 2020 for

U.S. Trademark Application Serial No. 88759109

 

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. 

 

/Valeriya Painter/

Examining Attorney

Law Office 121

(571) 270-7132

valeriya.painter@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.”