To: | Amazon Technologies, Inc. (tmfilings@us.dlapiper.com) |
Subject: | U.S. Trademark Application Serial No. 88893708 - NEW WORLD - TMKM33253 |
Sent: | January 05, 2021 02:03:59 PM |
Sent As: | ecom103@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88893708
Mark: NEW WORLD
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Correspondence Address: |
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Applicant: Amazon Technologies, Inc.
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Reference/Docket No. TMKM33253
Correspondence Email Address: |
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SUSPENSION NOTICE
No Response Required
Issue date: January 05, 2021
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). 87347899, 87347903, and 88056068
Refusal(s) and/or requirement(s) resolved and maintained and continued. The following refusal(s) and/or requirement(s) is/are maintained and continued:
• Likelihood of Confusion Refusal
See id. These refusal(s) and/or requirement(s) will be made final once this application is removed from suspension, unless a new issue arises. See TMEP §716.01.
Applicant has argued that the relevant goods and services are different. However, the registered mark is registered for use with “computer programs.” This wording includes all computer programs, despite the fact that the cited goods may be used in a narrower field. The cited registration protects registrant’s WEBSTER’S NEW WORLD mark for use with all computer programs, despite the fact that such a broad identification of services would no longer be allowed. Applicant’s arguments regarding the more limited use of the cited mark are not persuasive, as they are outside the scope of the inquiry at hand.
With respect to applicant’s arguments that the marks have different commercial impression, the cited mark is identical to applicant’s mark with the addition of the WEBSTER’S house mark. Adding a house mark to an otherwise confusingly similar mark will not obviate a likelihood of confusion under Section 2(d). See In re Fiesta Palms LLC, 85 USPQ2d 1360, 1366-67 (TTAB 2007) (finding CLUB PALMS MVP and MVP confusingly similar); In re Christian Dior, S.A., 225 USPQ 533, 534 (TTAB 1985) (finding LE CACHET DE DIOR and CACHET confusingly similar); TMEP §1207.01(b)(iii). It is likely that goods and/or services sold under these marks would be attributed to the same source. See In re Chica, Inc., 84 USPQ2d 1845, 1848-49 (TTAB 2007). Accordingly, in the present case, the marks are confusingly similar.
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.
/Laura Golden/
/Laura Golden/
Examining Attorney
Law Office 103
(571) 272-3928
laura.golden@uspto.gov