To: | Microsoft Corporation (april.besl@dinsmore.com) |
Subject: | U.S. Trademark Application Serial No. 90023489 - FABLE - N/A |
Sent: | July 30, 2021 05:58:42 PM |
Sent As: | ecom123@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90023489
Mark: FABLE
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Correspondence Address: 255 East Fifth Street Suite 1900 |
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Applicant: Microsoft Corporation
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Reference/Docket No. N/A
Correspondence Email Address: |
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SUSPENSION NOTICE
No Response Required
Issue date: July 30, 2021
The Office has reassigned this application to the undersigned trademark examining attorney.
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). 88856518
Refusal(s) and/or requirement(s) resolved and maintained and continued. The following refusal(s) and/or requirement(s) are satisfied:
• Registration is Refused for Likelihood of Confusion (refusal withdrawn as to U.S. Registration No. 2926617)
• Identification of Goods and Services Requires Amendment (Classes 3, 9, 25, 28, and 41)
See TMEP §713.02.
The following refusal(s) and/or requirement(s) is/are maintained and continued:
• Registration is Refused for Likelihood of Confusion (refusal maintained as to U.S. Registration Nos. 5005492 and 6115441)
• Identification of Goods and Services Requires Amendment (Classes 14, 16, 18, 21, and 42)
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.
The examining attorney notes that applicant has submitted various arguments against the likelihood of confusion refusal. Applicant’s arguments have been considered and found unpersuasive for the reason(s) set forth below.
Applicant argues that the marks embody different commercial impressions. This argument is unpersuasive. The marks at issue are identical standard character marks for the word “FABLE”. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services. Id.
Applicant further argues that the goods and services at issue are distinct. This argument is unpersuasive. The application includes various goods that are identical to or encompassed by goods identified in the cited registrations.
To the extent applicant attempts to differentiate its mark and its identified goods and services by arguing that the mark has “acquired a secondary meaning which differs from the meaning of ‘FABLE’ in the cited registrations,” this argument is found unpersuasive. Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
Further, “‘[A] showing of actual confusion is not necessary to establish a likelihood of confusion.’” In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); TMEP §1207.01(d)(ii). “[T]he relevant test is likelihood of confusion, not actual confusion.” In re Detroit Athletic Co., 903 F.3d 1297, 1309, 128 USPQ2d 1047, 1053 (Fed. Cir. 2018) (emphasis in original). “Uncorroborated statements of no known instances of actual confusion . . . are of little evidentiary value,” especially in ex parte examination. In re Majestic Distilling Co., 315 F.3d 1311, 1317, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003).
The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
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.
/Rachel E. Desjardins/
Examining Attorney
Trademark Law Office 123
Phone: (571) 270-0104
Email: Rachel.Desjardins@USPTO.gov
(Informal communications only – Do not respond to Office action via email.)