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:  May 18, 2021

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on 04/14/2021.

 

In a previous Office action(s) dated 10/14/2020, the trademark examining attorney refused registration of the applied-for mark based on the following: likelihood of confusion refusal.  In addition, applicant was required to satisfy the following requirement(s): amendment to identification of goods and/or services. Applicant was also notified of a prior-filed application which would present a potential refusal of registration under Trademark Act Section 2(d) should it register.

 

Applicant’s amendments made with respect to the requirement of amending the identification of goods and/or services have been considered; however several of the identification of goods and/or services remain indefinite. For example, in International Class 42, applicant included the wording “COMPUTER TECHNOLOGY SUPPORT SERVICES, NAMELY, HELP DESK SERVICES, NAMELY, INCLUDING REMOTE HELP DESK SERVICES”. The wording “including” appears to be an erroneous inclusion and therefore a typo.

 

Applicant’s arguments and amendment with respect to refusal(s) have been considered and found unpersuasive for the reasons set forth below. Applicant makes 1 main argument with respect to the refusal:

 

·     The cited marks should be afforded a narrow scope of protection given their coexistence alongside many HELI-formative marks for computer, data, and software services.

 

Applicant has not shown that the registered services at issue are diluted. Applicant’s list of third party registrations include registrations that are not on point for the instant situation. For example, applicant included marks with HELI-formative wording but would result in a different commercial impression, e.g., “HELIYON” and “HELIMODS”, to the applied-for mark.

 

Please note that evidence comprising only a small number of third-party registrations for similar marks with similar goods and/or services is generally entitled to little weight in determining the strength of a mark.  See In re i.am.symbolic, llc, 866 F.3d 1315, 1328-29, 123 USPQ2d 1744, 1751-52 (Fed. Cir. 2017); AMF Inc. v. Am. Leisure Products, Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973). 

 

Moreover, prior decisions and actions of other trademark examining attorneys in applications for other marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial and Appeal Board.  TMEP §1207.01(d)(vi); see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017).  Each case is decided on its own facts, and each mark stands on its own merits.  In re Cordua Rests., Inc., 823 F.3d 594, 600, 118 USPQ2d 1632, 1635 (Fed. Cir. 2016) (citing In re Shinnecock Smoke Shop, 571 F.3d 1171, 1174, 91 USPQ2d 1218, 1221 (Fed. Cir. 2009); In re Nett Designs, Inc., 236 F.3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)).

 

As such, the following refusal(s) and requirement(s) are continued and maintained:

·      REFUSAL – SECTION 2(d) – LIKELIHOOD OF CONFUSION

·      REQUIREMENT – IDENTIFICATION OF GOODS AND/OR SERVICES

 

Further, the trademark examining attorney is suspending action on the application for the reason(s) stated below.  See 37 C.F.R. §2.67; TMEP §§716 et seq. 

 

SUSPENSION OF APPLICATION

 

The effective filing date of the pending application(s) identified below precedes the filing date of applicant’s application.  If the mark in the referenced application(s) registers, applicant’s mark may be refused registration under Section 2(d) because of a likelihood of confusion with that registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, action on this application is suspended until the earlier-filed referenced application(s) is either registered or abandoned.  37 C.F.R. §2.83(c).  A copy of information relevant to this referenced application(s) was sent previously.

 

     -Application Serial No(s). 79270521

 

CONCLUSION

 

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. 

 

 

 

 

 

 

/Xu, Elaine/

Trademark Examining Attorney

Law Office 128

(571) 270-5297

elaine.xu@uspto.gov

 

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on May 18, 2021 for

U.S. Trademark Application Serial No. 90033875

 

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. 

 

/Xu, Elaine/

Trademark Examining Attorney

Law Office 128

(571) 270-5297

elaine.xu@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.”