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 12, 2021

Applicant submitted a foreign registration certificate and requested that the application be removed from suspension.  However, applicant was also advised of the pending application below, which has an earlier filing date or effective filing date than applicant’s application.  If the mark in the application 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). Information relevant to the application was sent previously.

            - U.S. Application Serial No(s). 88938692

Applicant has elected not to address the potential likelihood of confusion with the prior-filed application.  Consequently, action on this application is SUSPENDED until the prior-filed application below either registers or abandons.  37 C.F.R. §2.83(c); TMEP §§716 et seq. 

NEW ISSUE: COUNTRY OF ORIGIN

Additionally, applicant’s response raises a new issue that must be addressed on removal of the application from suspension.  Specifically, registration will be refused under Trademark Act Section 44(e) because the foreign registration is not from applicant’s country of origin.  See 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §1002.01.  Specifically, applicant has submitted a foreign registration from the European Union to support applicant’s Section 44(e) basis; however, the application shows that applicant is domiciled, incorporated, or organized in California. 

To obtain registration under Section 44(e), an applicant must be the owner of a valid registration from the applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §1002.01.  Under Section 44(c), “country of origin” is defined as the country in which an applicant (1) is domiciled, (2) has a bona fide and effective industrial or commercial establishment, or (3) is a national.  15 U.S.C. §1126(c); TMEP §1002.04.

Because applicant is domiciled, incorporated, or organized in a country different from the country that issued the foreign registration, applicant must establish that, as of the date of issuance of the foreign registration, the country that issued the foreign registration is also applicant’s country of origin.  See 15 U.S.C. §1126(c); TMEP §1002.04. 

Thus, to overcome this refusal, applicant may provide the following written statement for the record:  “Applicant has had a bona fide and effective industrial or commercial establishment in the European Union as of the date of issuance of the foreign registration.”  TMEP §1002.04.  If applicant cannot assert that such country is a country of origin, applicant may delete the Section 44(e) basis and rely solely on Section 1(b)>as a basis.  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b); TMEP §806.04.

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. 

·         /John LaMont/

·         Examining Attorney

·         Law Office 123

·         (571) 270-0404

·         john.lamont@uspto.gov

United States Patent and Trademark Office (USPTO)

USPTO OFFICIAL NOTICE

Office Action (Official Letter) has issued

on March 12, 2021 for

U.S. Trademark Application Serial No. 90059428

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. 

/John LaMont/

Examining Attorney

Law Office 123

(571) 270-0404

john.lamont@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.”