Chapter 1 – Cited Mark Has Matured so LOC Claim Is Not Ripe

Commentary

The Trademark Office typically issues advisory notices to Applicants regarding the presence of prior-pending trademark applications for similar marks and related goods and services. An official likelihood of confusion refusal will not be made of record until a cited mark in a prior-pending application matures to registration because an ex-parte prosecution proceeding is not the proper venue to cite unregistered marks as basis for 2(d) LOC Refusals. The Applicant is allowed to address the provisional refusals only after a cited mark in a prior-pending application has matured to registration. It may be prudent to refrain from submitting a substantive response to a provisional 2(d) LOC Refusal on the record until the cited mark in the prior-pending application matures to registration.

Model Argument

The cited mark in the prior-pending application has not yet matured to registration. Therefore, Applicant is not required to offer a substantive response as to how its mark is distinctive in view of the cited mark. Applicant submits that the examination of its trademark application should be suspended until the final disposition of the cited prior-pending application. However, if the cited mark in the prior-pending application fails to mature to registration, Applicant requests that the provisional likelihood of confusion refusal be withdrawn, and Applicant’s mark proceed to publication.

Procedural History

Applicant’s mark was refused registration under a provisional likelihood of confusion refusal in view of the cited mark in prior-pending application serial no. 86313342. Applicant’s response brief, which stated that Applicant reserved its right to present detailed arguments until the cited prior-pending application matures to registration, contributed to the withdrawal of the provisional LOC Refusal of record.

Excerpt of Applicant’s Response Brief

pplicant reserves the right to present detailed arguments in the event the subject application is eventually refused under Section 2(d) providing that the cited mark matures to registration. (Jarvis, 2015)

Legal Authority

Trademark Manual of Examining Procedure:

• TMEP §716.02(c)
• TMEP §716.03
• TMEP §§1208–1208.02(f)v

TMEP §716.02(c): Conflicting marks in pending applications When there are conflicting marks in pending applications, action on the application with the later effective filing date will be suspended (if the application appears to be otherwise in condition for publication or issue or for a final action) until the mark in the conflicting application with the earlier effective filing date is either registered or abandoned. 37 C.F.R. §2.83(c). See TMEP §§1208–1208.02(f) for more information about conflicting marks in pending applications.