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:  September 09, 2020

 

The Office received applicant’s communication filed on July 28, 2020.  The identification of services and specimen requirements have been satisfied.

 

The application is suspended for the reason specified below.  See 37 C.F.R. §2.67; TMEP §§716 et seq. 

 

The pending applications below have earlier filing dates or effective filing dates than applicant’s application.  If a mark in the applications 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 applications below either register or abandon.  37 C.F.R. §2.83(c).  Information relevant to the applications below was sent previously.

 

            - U.S. Application Serial Nos. 88761279, 87680560, and 87680555

 

U.S. Application Serial No. 88602116 has abandoned and no longer presents a potential bar to registration. 

 

In the response, applicant argues that confusion is unlikely because the mark is weak and diluted.  This argument is unpersuasive.  Although other trademarks may feature the word “REPLY,” the services in the present applications include software that perform highly similar functions.  Applicant provides software for sales engagement and automation of communications.  The applicants in the pending applications provide similar types of software for wireless communication, marketing automation, email marketing, messaging, customer relationship management, and a variety of sales functions.  Additionally, applicant’s mark is comprised of only the term “REPLY” and a generic top-level domain.  So, consumers are more likely to be confused as to the source of applicant’s services and the services provided in the pending applications.

 

Applicant has submitted a list of registration numbers and generally referenced the existence of registrations containing the word “REPLY.”  However, the mere submission of a list of registrations or a copy of a private company search report does not make such registrations part of the record.  See In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1405 n.17 (TTAB 2018) (citing In re 1st USA Realty Prof’ls, 84 USPQ2d 1581, 1583 (TTAB 2007); In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974)); TBMP §1208.02; TMEP §710.03.

 

To make third party registrations part of the record, an applicant must submit copies of the registrations, or the complete electronic equivalent from the USPTO’s automated systems, prior to appeal.  In re Star Belly Stitcher, Inc., 107 USPQ2d 2059, 2064 (TTAB 2013); TBMP §1208.02; TMEP §710.03.  Accordingly, these registrations will not be considered.

 

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. 

 

 

/Clare Cahill/

Clare Cahill

Examining Attorney

Law Office 120

571-272-5218

Clare.Cahill@uspto.gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on September 09, 2020 for

U.S. Trademark Application Serial No. 88805989

 

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. 

 

/Clare Cahill/

Clare Cahill

Examining Attorney

Law Office 120

571-272-5218

Clare.Cahill@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.”