To:
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`Subject:
`
`Sent:
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`Sent As:
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`Attachments:
`
`Vixster LLC (mcerrati@belzerlaw.com)
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`U.S. Trademark Application Serial No. 90102264 - SANDBAR LIFE - N/A
`
`June 14, 2021 12:10:29 PM
`
`ecom113@uspto.gov
`
`United States Patent and Trademark Office (USPTO)
`Office Action (Official Letter) About Applicant’s Trademark Application
`
`U.S. Application
`Serial No. 90102264
`
`Mark:   SANDBAR
`LIFE
`
`Correspondence
`
`Address:   
`
`     
`         
`   
`
`     Michael C. Cerrati
`     BELZER PC
`  
`          2905 BULL
`STREET
`         SAVANNAH, GA
`31405
`  
`Applicant:   Vixster
`LLC
`
`    
`
`Reference/Docket No.
`N/A
`
`Correspondence
`
`Email Address:    
`
`   
`mcerrati@belzerlaw.com
`
`SUSPENSION NOTICE
`No Response Required
`
`Issue date:   June 14, 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 December 10, 2020, the
`following issues were outstanding with this application:
`
`(1)      Section 2(d) Refusal – Likelihood of Confusion
`(2)      Prior-filed Pending Applications Advisory
`(3)     
`Inquiry Concerning Change of Entity State of Organization
`
`On June 10, 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 Section 2(d) Refusal are not persuasive, and the refusal is maintained and continued.
`
`(2)   Applicant’s arguments against the pending application are not persuasive, and the instant application will be suspended pending
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`registration or abandonment of the prior-filed application.
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`(3)   The statement concerning the change of entity state of organization is acceptable and made of record, and the requirement is satisfied. 
`TMEP §§713.02, 714.04.
`
`Preliminary Response to Applicant’s Arguments
`
`Applicant argues that, when compared in their entirety, the impression of the marks is different. Although wording in the marks differs, the marks
`overall both convey the idea of a sandbar or beach. The additional term “BEACHWEAR” in the registered mark is generic and has been
`disclaimed. And the additional term “LIFE” in the applied-for mark is, as applicant notes, increasingly popular; this “increasing popularity”
`weakens the term “LIFE” such that purchasers are less likely to rely on it to determine the source of the goods. Thus, while the entirety of the
`marks have differences in sound and appearance, the identical term “SANDBAR” is likely to be the most significant to consumers in
`determining the source of the goods and creating the overall commercial impression of the marks.
`
`Applicant references case in which the marks were identical for related goods but were not found to be confusingly similar. However, these cases
`are inapposite. Here, the source-indicating term SANDBAR does not create different impressions with respect to applicant’s and registrant’s
`goods—the term suggests clothing to be worn for a relaxed, laid-back lifestyle. Applicant’s assertion that purchasers will rely on the term
`“LIFE” to distinguish source because they are seeking “distinctive lifestyle products” disregards that applicant’s goods are clothing. Purchasers
`with a general recollection of the marks are likely to believe, mistakenly, that SANDBAR-formative marks for clothing emanate from the same
`source. Thus, the Section 2(d) refusal is maintained and continued.
`
`Concerning the prior-filed application, applicant argues that there is no likelihood of confusion because the goods are different. 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. Accordingly,
`the application is suspended pending further prosecution of the prior-filed application.
`
`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). 88882095
`
`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
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`To:
`
`Subject:
`
`Sent:
`
`Sent As:
`
`Attachments:
`
`Vixster LLC (mcerrati@belzerlaw.com)
`
`U.S. Trademark Application Serial No. 90102264 - SANDBAR LIFE - N/A
`
`June 14, 2021 12:10:30 PM
`
`ecom113@uspto.gov
`
`United States Patent and Trademark Office (USPTO)
`
`USPTO OFFICIAL NOTICE
`
`Office Action (Official Letter) has issued
`on June 14, 2021 for
`U.S. Trademark Application Serial No. 90102264
`
`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,
`application.
`
`if needed,
`
`to ensure you receive important USPTO notices about your
`
`·       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.”
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