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:  September 15, 2021

 

 

The application is suspended for the reason 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 was sent previously.

 

            - U.S. Application Serial No(s). 88425628

 

Refusal(s) and/or requirement(s) resolved and maintained and continued.  The following requirement is satisfied: 

 

            • Refusal – Section 2(d) Likelihood of Confusion as to Reg Nos. 4618288 and 4624262

• Identification of Goods Amendment Required

 

See TMEP §713.02.

 

The following refusal is maintained and continued: 

 

• Refusal – Section 2(d) Likelihood of Confusion as to Reg Nos. 5029633; 6149656; 4815149

 

See id. 

 

Applicant has applied to register the mark UNWIND for “Nutritional supplements; Dietary and nutritional supplements; Nutritional supplements, namely, nutritional supplements in the form of tablets, capsules, powders, beverage additives, foods, and food additives; Powdered nutritional supplement drink mix and concentrate; Powdered nutritional supplement drink mix; Liquid nutritional supplements” in International Class 005.

 

Refusal to register the applied-for mark is maintained and continued because of a likelihood of confusion with the marks in U.S. Registration Nos. 5029633 UNWIND for “Essential oils for medicinal use” in International Class 003; 6149656 UNWIND (20:00 GMT) TUMI for “Fragrances, perfumes, perfumed body lotions, perfumed face lotions, aftershave balms, fragranced bath gels, fragranced shower gels” in International Class 003; 4815149 ULTIMATE UNWIND for “Body wash; shower gels; bath oils, milks and non-medicated body soaks; exfoliants for skin; body and face creams and lotions; moisturizing face creams and lotions; hand creams and lotions; shaving creams and after shave preparations; lip balms” in International Class 003 . Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the previously attached registrations.

 

In applicant’s response dated September 8, 2021, applicant argues that the respective marks are different because each of the cited marks includes a different additional term.  Applicant’s argument is not persuasive because although applicant’s mark does not contain the entirety of the registered marks, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrants’ marks.  See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)).  Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion.  See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii).  In this case, applicant’s mark does not create a distinct commercial impression from the registered marks because it contains some of the wording in the registered marks and does not add any wording that would distinguish it from the marks.  Furthermore, U.S. Reg. No. 5029633 is identical to applicant’s applied-for mark. 

 

Additionally, applicant argues that the term UNWIND is dilute on the Trademark Register.  Although applicant has attached third-party registrations showing that the term UNWIND has been registered on the Trademark Register, a closer look at the registrations shows that the coexisting UNWIND marks either have additional wording or are for completely unrelated goods as to the goods in this case.  Moreover, prior decisions and actions of other trademark examining attorneys in applications for other marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial and Appeal Board.  TMEP §1207.01(d)(vi); see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017).  Each case is decided on its own facts, and each mark stands on its own merits.  In re Cordua Rests., Inc., 823 F.3d 594, 600, 118 USPQ2d 1632, 1635 (Fed. Cir. 2016) (citing In re Shinnecock Smoke Shop, 571 F.3d 1171, 1174, 91 USPQ2d 1218, 1221 (Fed. Cir. 2009); In re Nett Designs, Inc., 236 F.3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)).

 

Furthermore, applicant argues that the respective goods are different because applicant’s goods can be consumed while registrants’ goods are not ingestible goods.  Applicant’s argument is not persuasive because the fact that the goods of the parties differ is not controlling in determining likelihood of confusion.  The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source or sponsorship of those goods.  In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003); In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); TMEP §1207.01.  In the present case, the evidence of record establishes that the goods are of a kind that may emanate from a single source. 

 

Accordingly, refusal to register the applied-for mark is maintained and continued pursuant to Section 2(d) of the Trademark Act.  This refusal will be made final once this application is removed from suspension, unless a new issue arises.  See TMEP §716.01.

 

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. 

 

 

/Sahar Nasserghodsi/

Sahar Nasserghodsi

Examining Attorney

Law Office 115

(571)272-9192

Sahar.Nasserghodsi@uspto.gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on September 15, 2021 for

U.S. Trademark Application Serial No. 90295985

 

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. 

 

/Sahar Nasserghodsi/

Sahar Nasserghodsi

Examining Attorney

Law Office 115

(571)272-9192

Sahar.Nasserghodsi@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.”