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:  June 30, 2021

 

STATUS OF APPLICATION

 

Pursuant to TMEP §716.01, applicant is advised of the following status of the application.  In an Office action issued on January 4, 2021, the following issues were outstanding with this application:

 

(1)      Prior-filed Pending Applications and Claim of Ownership Advisory

(2)      Classification of Services Requirement

(3)      Clarification of Number of Classes for which Registration Is Sought Requirement

 

On June 1, 2021, applicant responded to the Office action. In light of applicant’s amendments detailed below, the examining attorney has determined the following:

 

(1)   Applicant’s arguments against the potential cite of application serial no. 79247402 are unpersuasive, and the instant application is suspended pending registration or abandonment of the prior-filed application.

 

(2)   Applicant’s claim of ownership of application serial no. 88024092 is acceptable and made of record, and the potential cite is obviated.

 

(3)   The following requirements have been satisfied: 

 

·       Classification of Services Requirement

·       Clarification of Number of Classes for which Registration Is Sought

 

TMEP §§713.02, 714.04.

 

ACTION IS SUSPENDED

 

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(s). 79247402

 

Preliminary Response to Applicant’s Arguments

 

Applicant argues that the prior-filed application serial no. 79247402 (NEXL) should not be cited as against the instant application because (1) the NEXL mark was approved for publication over the applicant’s prior mark (the NEXEL standard character mark), and (2) “The Applicant’s Mark is identical to the Applicant’s Prior Mark except for the addition of Class 042.” However, the software identified in Class 42 is closely related to the software identified in the NEXL mark—for example, applicant provides “on-line nondownloadable software for personal and business contact management, and for communicating with customers, potential customers and business partners” in Class 42, and the NEXL mark identifies “online non-downloadable software for the purposes of communication in relation to legal and business matters.” Because both applicant and the owner of the NEXL mark provide software for business communication, the services in the instant application are more closely related to those in the NEXL application than the applicant’s prior application. Accordingly, the pending advisory against U.S. Application Serial No. 79247402 is maintained.

 

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. 

 

/Marynelle W. Wilson/

Marynelle W. Wilson

Examining Attorney

Law Office 113

Phone: 571-272-7978

Email: marynelle.wilson@uspto.gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on June 30, 2021 for

U.S. Trademark Application Serial No. 90254764

 

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. 

 

/Marynelle W. Wilson/

Marynelle W. Wilson

Examining Attorney

Law Office 113

Phone: 571-272-7978

Email: marynelle.wilson@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.”