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:  March 30, 2021

 

 

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

 

Application suspended until disposition of cited registration.  Registration maintenance documents are or were due to be filed for the registration cited against applicant in a refusal based on Trademark Act Section 2(d).  15 U.S.C. §1052(d).  Specifically, U.S. Registration No. 4601309.  If the maintenance documents are not timely filed and accepted by the USPTO, the cited registration will cancel and/or expire and will no longer bar registration of applicant’s mark under Section 2(d).  See 15 U.S.C. §§1058, 1059, 1141k.  Action on this application is suspended for six months to await disposition of the cited registration; after which, the trademark examining attorney will determine whether to maintain or withdraw the Section 2(d) refusal.  See 37 C.F.R. §2.67; TMEP §716.02(e).

 

Refusal and requirement resolved, and maintained and continued.  The following requirement is satisfied: 

 

            •  Applicant clarified the applicant’s U.S.-licensed attorney of record

 

See TMEP §713.02.

 

The following refusal is maintained and continued: 

 

•         Section 2(d) Refusal – Likelihood of confusion with U.S. Reg. Nos. 4237878 and 4601309

 

See id.  This refusal will be made final once this application is removed from suspension, unless a new issue arises.  See TMEP §716.01.

 

Addressing the arguments in the response.

 

In the previous Office action, registration of the applied-for mark was refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4237878 and 4601309.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  All arguments and attachments contained in the Initial Office action are incorporated herein.

 

In the response, applicant listed eight third-party registrations for marks containing the wording “MYKONOS” to support the argument that this wording is weak, diluted, or so widely used that it should not be afforded a broad scope of protection.  However, the mere mention of a list of registrations 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.

 

Moreover, even if these registrations were to be considered, they appear to be for goods that are predominantly different from or unrelated to those identified in applicant’s application. 

 

The weakness or dilution of a particular mark is generally determined in the context of the number and nature of similar marks in use in the marketplace in connection with similar goods.  See Nat’l Cable Tel. Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1579-80, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973).  Evidence of widespread third-party use of similar marks with similar goods “is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection” in that particular industry or field.  Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 1324, 128 USPQ2d 1686, 1693 (Fed. Cir. 2018) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005)).

 

However, evidence comprising third-party registrations for similar marks with different or unrelated goods, has “no bearing on the strength of the term in the context relevant to this case.”  See Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1058 (TTAB 2017) (citing In re i.am.symbolic, llc, 866 F.3d at 1328, 123 USPQ2d at 1751).  Here, applicant asserts that the wording “MYKONOS” has been registered for “gyro meat,” “cheese,” and “computer software platform for development of web applications.”  These types of goods are completely unrelated to the applicant’s identified “jewelry” because they are not commercially related to and they generally do not travel in the same trade channels with applicant’s goods.  Applicant also did not provide any evidence they travel through the same trade channels.  Conversely, the Initial Office action includes ample evidence from third-party entities that provide applicant’s types of jewelry goods, along with registrants’ types of goods, such as, perfume and eau de toilette, and blouses, dresses, and tops, all marketed under the same marks.  Because consumers are accustomed on seeing applicant’s and registrants’ types goods commonly provided by the same types of entities and marketed under the same marks, consumers are likely to believe that the compared goods emanate from the same source.  As such, contrary what is averred in relations to other third-party registrations, applicant’s goods and the cited registrations’ goods are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).  Thus, the third-party registrations mentioned by applicant would be insufficient to establish that the wording MYKONOS is weak or diluted, if they were considered. 

 

Therefore, applicant’s argument has been found unpersuasive.

 

Accordingly, the Section 2(d) refusal is maintained and continued.

 

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. 

 

 

/G. Iñaki Liñero Guarda/

G. Iñaki Liñero, Esq.

Examining Attorney

Law Office 127

(571)270-1783

Gerardo.LineroGuarda@uspto.gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on March 30, 2021 for

U.S. Trademark Application Serial No. 90019562

 

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. 

 

/G. Iñaki Liñero Guarda/

G. Iñaki Liñero, Esq.

Examining Attorney

Law Office 127

(571)270-1783

Gerardo.LineroGuarda@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.”