Priority Action

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

PRIORITY ACTION

NONFINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action.

 

 

Issue date:  December 07, 2020

 

 

USPTO database searched; no conflicting marks found.  The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.

 

Applicant must address issues shown below.  On 12/7/2020, the examining attorney and Frank Massabki discussed the issues below.  Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.

 

The applicant will set out the unity of control of itself and the following parties in order to clarify a potential prior pending set of applications is not problematic. 

 

JHO INTELLECTUAL PROPERTY HOLDINGS LLC

ENTOURAGE IP HOLDINGS LLC

 

Applicant indicates that it has a legal relationship with the potentially-conflicting prior pending application.  However, a legal relationship between the parties is insufficient to overcome a likelihood of confusion unless the parties constitute a “single source.”  That is, the legal relationship between the parties must exhibit a “ unity of control” over the nature and quality of the goods and/or services in connection with which the trademarks and/or service marks are used, and a “unity of control” over the use of the trademarks and/or service marks.  See In re Wella A.G., 5 USPQ2d 1359, 1361 (TTAB 1987); see also TMEP §1201.07.

 

 

 

Unity  of control is presumed in instances where, absent contradictory evidence, one party owns (1) all of another entity, or (2) substantially all of another entity and asserts control over the activities of that other entity.  See TMEP §1201.07(b)(i)-(ii).  Such ownership is established, for example, when one party owns all or substantially all of the stock of another or when one party is a wholly owned subsidiary of another.  See In re Wella A.G., 5 USPQ2d at 1361; TMEP §1201.07(b)(i)-(ii).  It is additionally presumed when, absent contradictory evidence, applicant is shown in USPTO records as a joint owner of the cited registration, or the owner of the registration is listed as a joint owner of the application, and applicant submits a written statement asserting control over the use of the mark by virtue of joint ownership.  TMEP §1201.07(b)(ii). 

 

 

 

However, in most other situations, additional evidence is required to show  unity  of control.  For example, if the parties are sister corporations or if the parties share certain stockholders, directors or officers in common, additional evidence must be provided to show how the parties constitute a single source.  See In re Pharmacia, Inc., 2 USPQ2d 1883, 1884 (TTAB 1987); TMEP §1201.07(b)(iii). 

 

 

 

Therefore, applicant must provide a written statement explaining the nature of the legal relationship between the parties.  In addition, if neither party owns all or substantially all of the other party, and USPTO records do not show their joint ownership of the application or cited registration, applicant must provide a detailed written explanation and documentary evidence showing the parties’ “ unity  of control” over the nature and quality of the goods and/or services in connection with which the trademarks and/or service marks are used, and the parties’ “ unity  of control” over the use of the trademarks and/or service marks.  See TMEP §1201.07(b)(i)-(iii).  This statement and, if necessary, explanation must be verified with an affidavit or signed declaration under 37 C.F.R. §2.20.  TMEP §1201.07(b)(ii)-(iii); see 37 C.F.R. §2.193(e)(1).  However, if one party owns all of the other entity, and there is no contradictory evidence of record, the written statement need not be verified.  TMEP §1201.07(b)(i).

 

How to respond.  Click to file a response to this nonfinal Office action.

 

 

/Linda Mickleburgh/

Linda Mickleburgh

Examining Attorney Law Office 106

571-272-9198

linda.mickleburgh@uspto.gov

 

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on December 07, 2020 for

U.S. Trademark Application Serial No. 90210093

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Linda Mickleburgh/

Linda Mickleburgh

Examining Attorney Law Office 106

571-272-9198

linda.mickleburgh@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).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from December 07, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

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.”