To: | Beachbody, LLC (cmiller@cozen.com) |
Subject: | U.S. Trademark Application Serial No. 90064801 - FIRST THING - BBDY1264US/1 |
Sent: | September 03, 2020 03:45:19 PM |
Sent As: | ecom125@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90064801
Mark: FIRST THING
|
|
Correspondence Address: |
|
Applicant: Beachbody, LLC
|
|
Reference/Docket No. BBDY1264US/1
Correspondence Email Address: |
|
SUSPENSION NOTICE
No Response Required
Issue date: September 03, 2020
The application is suspended for the reasons specified below. See 37 C.F.R. §2.67; TMEP §§716 et seq.
The pending application below 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. 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 below either registers or abandons. 37 C.F.R. §2.83(c). Information relevant to the application below is provided in this letter.
- U.S. Application Serial No. 79274520
Application suspended until submission of foreign registration or proof that foreign registration was renewed. Applicant is required to provide a copy of a foreign registration from applicant’s country of origin; the foreign registration must be valid when the U.S. registration issues. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii)-(iii); TMEP §§1004, 1004.01(a). Action on the application is suspended until the USPTO receives a copy of such foreign registration or proof that the foreign registration was renewed. TMEP §§716.02(b), 1003.04. Applicant must also provide an English translation if the foreign registration or renewal document is not in English. 37 C.F.R. §2.34(a)(3)(ii)-(iii).
If the foreign application abandons or the foreign registration is not renewed, applicant should promptly notify the trademark examining attorney. See TMEP §§1003.08, 1004.01(a). In such case, applicant may amend the application to rely on another filing basis, if appropriate, and will retain the priority filing date, if applicable. TMEP §§1003.08, 1004.01(a).
ADVISORY: WRITTEN STATEMENT OF BONA FIDE AND EFFECTIVE INDUSTRIAL OR COMMERCIAL ESTABLISHMENT
In the present case, the U.S. application shows that applicant has a domicile in the United States, but the foreign application was filed in the United Kingdom.
The examining attorney notes that applicant’s voluntary, written statement of record asserting bona fide and effective industrial or commercial establishment in the United Kingdom omits the following bolded language: “Applicant has had a bona fide and effective industrial or commercial establishment in the United Kingdom as of the date of issuance of the foreign registration.” TMEP §1002.04.
If applicant will not be able to assert that the country in which the foreign registration has issued is applicant’s country of origin as of the date of issuance of the foreign registration, registration under Section 44(e) will be refused. See 15 U.S.C. §1126(c); TMEP §1002.01-.02. In that case, 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. However, applicant may still retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, if applicant’s U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date and applicant has a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.03(h).
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.
/Amanda Galbo/
Amanda Galbo
Trademark Examining Attorney
Law Office 125
(571) 272-5391
amanda.galbo@uspto.gov