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:  December 22, 2021

 

 

The referenced application and the November 22, 2021 Response to Letter of Suspension have been reviewed by the assigned trademark examining attorney. 

 

Pursuant to TMEP §§705.01, 707.03, and 713.02, applicant is advised of the following status of the application.  In a Suspension Notice dated November 3, 2021, the application was suspended until prior-filed application Serial No. 90782135 either registers or abandons.

 

Applicant responded to the suspension by proposing an identification amendment that excludes the goods in the prior pending application, specifically, “Flavor enhancers used in food and beverage products; Bakery goods and dessert items, namely, cakes, cookies, pastries, and frozen confections for retail and wholesale distribution and consumption on or off the premises excluding candies and popcorn”.

 

This argument is not persuasive. The attached Internet evidence, consisting of screenshots from Laduree, Chocolate by E, and Barbara’s Cookie Gifts & Flavors establishes that the same entity commonly relevant goods and markets the goods under the same mark.  Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009). Applicant’s excluding of the goods from the identification does not render the goods unrelated since consumers would nonetheless reasonably expect them to emanate from the same source. Therefore, the application remain suspended until prior-filed application Serial No. 90782135 either registers or abandons.

 

 

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 is provided in this letter.

 

            - U.S. Application Serial No. 90782135

 

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. 

 

 

/Elena Kravtsoff/

Elena Kravtsoff

Trademark Examining Attorney

Law Office 113, USPTO

(571) 272-3233

 elena.kravtsoff@uspto.gov

 

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on December 22, 2021 for

U.S. Trademark Application Serial No. 97008500

 

A USPTO examining attorney has reviewed your trademark application and issued an Office action.  You may be required to respond to this Office action.  Follow the steps below.

 

(1)  Read the Office action HERE.  This email is NOT the Office action.

 

(2)  Respond to the Office action, if a response is required.  Respond by the deadline using the Trademark Electronic Application System (TEAS).  Your response must be received by the USPTO on or before 11:59 p.m. Eastern Time of the last day of the response period.  Otherwise, your application will be abandoned.  See the Office action itself regarding how to respond.

 

(3)  Direct general questions about using USPTO electronic forms, the USPTO website, the application process, the status of your application, and whether there are outstanding deadlines to the Trademark Assistance Center (TAC).

 

After reading the Office action, address any question(s) regarding the specific content to the USPTO examining attorney identified in the Office action.

 

 

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 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 may mail or email you trademark-related offers and notices – most of which require fees.  The USPTO will only email official USPTO correspondence from the domain “@uspto.gov.”

 

·         Hiring a U.S.-licensed attorney.  If you do not have an attorney and are not required to have one under the trademark rules, we encourage you to hire a U.S.-licensed attorney specializing in trademark law to help guide you through the registration process.  The USPTO examining attorney identified above is not your attorney and cannot give you legal advice, but rather works for and represents the USPTO in trademark matters.