To:
`
`Subject:
`
`Sent:
`Sent As:
`
`Sherry L. Rollo(ipdocket@hahnlaw.com)
`U.S. Trademark Application Serial No. 90741830 - RENAISSANCE -
`212135.00070
`September 30, 2022 07:41:48 AM EDT
`tmng.notices@uspto.gov
`
`Attachments
`
`United States Patent and Trademark Office (USPTO)
`Office Action (Official Letter) About Applicant’s Trademark Application
`
`
`
`U.S. Application Serial No.  90741830
`
`Mark:   RENAISSANCE
`
`Correspondence Address:  
`Sherry L. Rollo
`HAHN LOESER & PARKS, LLP
`200 WEST MADISON
`SUITE 2700
`CHICAGO IL 60606 UNITED STATES
`
`Applicant:   Renaissance Lakewood, LLC
`
`Reference/Docket No.  212135.00070
`
`Correspondence Email Address:   ipdocket@hahnlaw.com
`
`
`
`
`
`
`SUSPENSION NOTICE
`No Response Required
`
`Issue date:   September 30, 2022
`
`Pursuant to TMEP §716.01, applicant is advised of the following status of the application.  
`
`In an Office Action issued on February 13, 2022, the following issues were outstanding with this
`application:
`
`
`•
`•
`
`Section 2(d) – Likelihood of Confusion Refusal
`Potential Section 2(d) Refusal – Five Pending Applications
`
`

`

`•
`
`Amended Color Claim and Mark Description Required
`
`
`On August 15, 2022, applicant responded to the Office Action.  In the Response, applicant:
`
`
`•
`•
`
`Provided arguments against the Section 2(d) Refusal; and
`Amended the color claim and mark description.
`
`
`The trademark examining attorney has thoroughly reviewed applicant’s response and has
`determined the following:
`
`
`1.
`
`2.
`
`3.
`
`Applicant's arguments against the Section 2(d) Refusal are not persuasive and the Section  2(d) –
`Likelihood of Confusion Refusal is maintained and CONTINUED; 
`Application Serial Nos.  90505069, 8809277 and 88809251 have abandoned and no longer
`present a potential bar to registration.  Application Serial Nos. 90661309 and 88595822   are still
`pending, and action on the instant application is suspended pending final disposition of the
`applications; and
`Applicant has satisfied the Color Claim and Mark Description Requirement. 
`
`
`Preliminary Response to Applicant's Arguments
`
`Applicant argues that there is no likelihood of confusion because the marks differ in appearance, sound
`and commercial impression. Additionally, applicant argues that the respective services of the parties are
`not related.  Although the registered marks contain additional terms, applicant's mark and the registered
`marks are confusingly similar because they all contain the term RENAISSANCE and applicant's mark
`does not add anything to distinguish itself from the registered marks. Thus, because applicant's mark is
`fully encompassed within the registered marks, consumers are likely to believe, mistakenly that
`applicant's mark is a shortened version of the registered marks and be confused as to the source of the
`services. Moreover, the additional terms in the registered marks are descriptive, and therefore of less
`source
`identifying significance. Thus,
`the dominant word
`in all
`the marks
`is
`the
`term
`RENAISSANCE. Because the dominant wording in the marks is identical, the marks create a similar
`overall commercial impression, regardless of the inclusion of the additional terms. Lastly, determining
`likelihood of confusion is based on the description of the services stated in the application and
`registration at issue, not on extrinsic evidence of actual use. In this case the registrations use broad
`wording to describe research in the field of medicine and research and development of new technology
`in the field of chemistry, physics and biology, all which either encompass or are complementary to
`applicant's manufacturing and development of pharmaceutical products.  Accordingly, applicant’s
`arguments are unpersuasive to overcome the refusal and the Section 2(d) Refusal is maintained and
`continued.
`
`APPLICATION IS SUSPENDED
`
`The application is suspended for the reasons specified below.   See 37 C.F.R. §2.67; TMEP §§716 et
`seq.  
`
`The pending applications below has an earlier filing date or effective filing date than applicant's
`application.  If the mark in the applications below registers, the USPTO may refuse registration of
`applicant's mark under Section 2(d) because of a likelihood of confusion with the registered marks.  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 applications below either registers or abandons.  37 C.F.R. §2.83(c).  Information
`
`

`

`relevant to the applications below was sent previously.  
`
`
`- U.S. Application Serial Nos.  90661309, 88595822
`
`
`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.  
`
`
`
`/Danielle Anderson/
`Danielle Anderson
`Trademark Examining Attorney
`Law Office 113
`(571) 272-6143
`danielle.anderson@uspto.gov
`
`
`
`
`           
`

`

`United States Patent and Trademark Office (USPTO)
`
`USPTO OFFICIAL NOTICE
`
`Office Action (Official Letter) has issued
`on September 30, 2022 for
`U.S. Trademark Application Serial No.  90741830
`
`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.   This email is NOT the Office action.
`
`(2) Respond to the Office action, if a response is required. Respond by 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 trademark-related scams . Protect yourself from people and companies that
`may try to take financial advantage of you. Private companies may call you and pretend
`to be the USPTO or may send you communications that resemble official USPTO
`documents to trick you. We will never request your credit card number or social security
`number over the phone. And all official USPTO correspondence will only be emailed
`from the domain “@uspto.gov.” Verify the correspondence originated from us by using
`your Serial Number in our database, TSDR, to confirm that it appears under the
`
`

`

`“Documents” tab, or contact the Trademark Assistance Center. 
`
`•
`
`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 is not your attorney and cannot give you legal advice, but
`rather works for and represents the USPTO in trademark matters.
`
` 
`