To: | Patent Profiler, LLC (patentfamily@optonline.net) |
Subject: | U.S. Trademark Application Serial No. 90212811 - PATENT PROFILER - PP-002 |
Sent: | June 10, 2021 08:38:08 AM |
Sent As: | ecom103@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90212811
Mark: PATENT PROFILER
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Correspondence Address: |
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Applicant: Patent Profiler, LLC
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Reference/Docket No. PP-002
Correspondence Email Address: |
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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: June 10, 2021
This Office action is in response to applicant’s communication filed on January 18, 2021.
In a previous Office action dated December 8, 2020, the trademark examining attorney refused registration of the applied-for mark based on Trademark Act Section 2(d) for a likelihood of confusion with a registered mark. In addition, the trademark examining attorney refused applicant’s specimen of use because it was not an acceptable webpage specimen as it lacked the required URL and date printed/accessed. Finally, applicant was required to disclaim descriptive wording in the mark.
Based on applicant’s response, the trademark examining attorney notes that the requirement to disclaim descriptive wording in the mark has been satisfied.
The following refusal has also been obviated: refusal of applicant’s specimen of use because it was not an acceptable webpage specimen as it lacked the required URL and date printed/accessed.
The Trademark Act Section 2(d) registration refusal based on a likelihood of confusion with a registered mark is continued and maintained. Applicant’s contentions will be fully address in a future action. Nevertheless it is noted that applicant contends that the parties’ services are different and, therefore, consumer confusion is not likely. When making a likelihood of confusion determination, the parties’ goods and/or services need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i). They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
Further, applicant’s communication raises new issues that are addressed below.
SUMMARY OF ISSUES that applicant must address:
SECTION 44(d) BASIS INVALID
Applicant may withdraw the priority claim by instructing the trademark examining attorney to delete it from the application record. TMEP §1002.05.
U.S. APPLICANT ASSERTS SECTION 44 BASIS
If applicant intends to rely on Section 44(e) as a basis for registration, applicant must submit the following:
(1) A true copy, photocopy, certification or certified copy of the foreign trademark registration upon which applicant is relying for U.S. registration, along with an English translation if the foreign registration certificate is not written in English. See 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1002.05, 1004 et seq. If applicant submits a copy of the foreign registration, it must be a copy of a document that has been issued to the applicant by or certified by the intellectual property office in the applicant’s country of origin. TMEP §1004.01; and
(2) A written statement that applicant has a bona fide and effective industrial or commercial establishment in the foreign country in which its mark is registered. See 15 U.S.C. §1126(c); TMEP §§1002.01, 1002.04-.05.
If applicant cannot satisfy the above requirements for a Section 44(e) basis, applicant can amend the application to substitute a Section 1(a) or Section 1(b) basis, if applicant can satisfy all of the requirements for the new basis. See 15 U.S.C. §§1051(a)-(b), 1126(e); 37 C.F.R. §2.35(b), TMEP §806.03.
CLAIM OF OWNERSHIP OF ABANDONED APPLICATION
ADVISORY – RESPONSE ASSISTANCE
Please call or email the assigned trademark examining attorney with questions about this Office action. Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
/Christopher M. Law/
Trademark Examining Attorney
Law Office 103
(571) 272-2913
christopher.law@uspto.gov
RESPONSE GUIDANCE