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:  January 11, 2021

 

This letter confirms applicant’s responses filed December 18, 2020.  Upon further review, the potential refusal under Trademark Act Section 2(d) based on U.S. Application Serial No. 88546075 has been withdrawn.  In addition, the requirements to properly amend the mark description of record and the recitation of services in Class 36 have been satisfied. 

Finally, applicant’s substitute drawing and voluntary claim of ownership of U.S. Registration Nos. 4453543, 4744898, 4528772 and others have been noted and made of record.

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. 88661982

 

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. 

 

Outstanding Limited Potential Refusal – Likelihood of Confusion: Class 36

 

Applicant argues that the stated potential refusal under Trademark Act Section 2(d) based on a likelihood of confusion with the mark RIPPLE CAPITAL PARTNERS in pending Application Serial No. 88661982 should be withdrawn because “[its] prior registrations for RIPPLE and RIPPLE-variants marks for services in Class 36 precede the filing date of [the cited] application.”  Thus, applicant implies that it has priority over the owner of the prior-filed application.

 

However, applicant’s implied claim of priority of use is not relevant to this ex parte proceeding.  See In re Calgon Corp., 435 F.2d 596, 168 USPQ 278 (C.C.P.A. 1971). During ex parte prosecution, the trademark examining attorney has no authority to review or to decide on matters that constitute a collateral attack on the cited application.  TMEP §1207.01(d)(iv).

 

Furthermore, as acknowledged by applicant, the [prior-filed] application is itself subject a 2(d) citation based on filings owned by Ripple.”  This fact, combined with the broad and indefinite recitation of services associated with the cited application, supports the stated potential refusal.

 

Based on the foregoing remarks, the limited potential refusal under Trademark Act Section 2(d), as to Class 36, based on a likelihood of confusion with the mark RIPPLE CAPITAL PARTNERS in U.S. Application Serial No. 88661982 is maintained and continued.

Miscellaneous

If applicant’s attorney has questions about this application or needs further assistance, please telephone the assigned trademark examining attorney directly at the number below.

Advisory Regarding E-mail Communications

If applicant’s attorney has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

/David Yontef/

Trademark Examining Attorney

Law Office 118

(571) 272-8274

david.yontef@uspto.gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on January 11, 2021 for

U.S. Trademark Application Serial No. 90107288

 

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. 

 

/David Yontef/

Trademark Examining Attorney

Law Office 118

(571) 272-8274

david.yontef@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.”