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:  February 10, 2021

 

 

This suspension notice is in response to applicant’s communication filed on January 19, 2021.

 

In a previous Office action dated July 16, 2020, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(d) for a likelihood of confusion with a registered mark, namely, the mark in U.S. Registration No. 5574951 (“REVOLT”).  In addition, applicant was required to satisfy the following requirement:  amend the identification of goods. Finally, applicant was provided information regarding pending U.S. Application Serial Nos. 88774050 (“REVOLT”), 88733807 (“DYNAMIC REVOLT”), 88757211 (“DYNAMIC REVOLT”), and 88678386 (“REVOLT BATTERY EXCHANGE”), which may present a bar to registration of applicant’s mark based on a likelihood of confusion under Trademark Act Section 2(d).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. 

 

In response, applicant amended the identification and argued that the cited registered is not likely to cause confusion with applicant’s mark.  Specifically, applicant argued that the “V” in the registered mark conveys a commercial impression of “re-volt”, i.e., putting life into something vs “revolt” i.e., a rising rebellion. Applicant also argued that the goods are unrelated. Applicant’s arguments have been considered and found unpersuasive.

 

The applied-for mark, “REVOLT” (standard characters) is similar to the cited registered mark “REVOLT” (plus design). The word portions of the marks are nearly identical in appearance, sound, connotation, and commercial impression; therefore, the addition of a design element does not obviate the similarity of the marks in this case.  See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii). When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).

 

Applicant’s “Electrical power generation systems, comprised of a vehicle mountable electric power source having one or more alternators in series which provide electricity to a power distribution panel, for use in service vehicles, to run compressors and electrical power driven equipment mounted or stored within the vehicle” are related to registrant’s “batteries.” The fact that the goods of the parties differ is not controlling in determining likelihood of confusion.  The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source or sponsorship of those goods.  In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003); In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); TMEP §1207.01. Both applicant and registrant’s goods are power supplies. Moreover, registrant’s identification of “batteries” is broad enough to include vehicle batteries and batteries for powering electric vehicles.  

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: definite amended identification provided.  See TMEP §§713.02, 714.04. 

 

In addition, the advisory regarding U.S. Application Serial No. 88774050 (“REVOLT”) is withdrawn. See TMEP §§713.02, 714.04. 

 

Finally, please note that U.S. Application Serial No. 88678386 (“REVOLT BATTERY EXCHANGE”) has since registered. 

 

The Trademark Act Section 2(d) refusal for a likelihood of confusion with the mark in U.S. Registration No. 5574951 (“REVOLT”) is continued and maintained.

 

Action on this application is SUSPENDED pending the disposition of the previously referenced potentially-conflicting pending applications.  37 C.F.R. §2.83(c); TMEP §§716.02(c), 1208.02(c).

 

The application is suspended for the reason 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 applications below was sent previously.

 

            - U.S. Application Serial Nos. 88733807 ("DYNAMIC REVOLT") and 88757211 ("DYNAMIC REVOLT")

 

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. 

 

 

/Jacquelyn A. Jones/

Jacquelyn A. Jones

Examining Attorney

Law Office 120

571-272-4432

jacquelyn.jones@uspto.gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on February 10, 2021 for

U.S. Trademark Application Serial No. 88877746

 

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. 

 

/Jacquelyn A. Jones/

Jacquelyn A. Jones

Examining Attorney

Law Office 120

571-272-4432

jacquelyn.jones@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.”