Phoenix Intangibles Holding Co.

Trademark Trial and Appeal Board

Dec 10, 2002

No. 76169888 (T.T.A.B. Dec. 10, 2002)

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Phoenix Intangibles Holding Company
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Serial No. 76/169,888
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David V. Radack for Phoenix Intangibles Holding Company.
Wanda Kay Price, Trademark Examining Attorney, Law Office
111 (Kevin Peska, Acting Managing Attorney).
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Before Simms, Cissel and Hanak, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge.
Phoenix Intangibles Holding Company (applicant) seeks
to register in typed drawing form CHOCOS for cookies. The
intent-to-use application was filed on November 22, 2000.
Citing Section 2(d) of the Trademark Act, the
Examining Attorney refused registration on the basis that
applicant’s mark, as applied to cookies, is likely to cause
confusion with the mark CHOKOS, previously registered in
typed drawing form for “processed cereal to be used as
breakfast food.” Registration No. 1,939,810.
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the Examining
Ser. No. 76/169,888
2
Attorney filed briefs. Applicant did not request a
hearing.
The appeal is now moot. On September 7, 2002 the cited
registration was cancelled because registrant failed to
comply with the provisions of Section 8 of the Trademark
Act. However, even though the appeal is moot, this Board
feels it appropriate to comment upon the actions of the
Examining Attorney.
Applicant filed its appeal brief on July 12, 2002. At
the top of page 2 of its brief, applicant included the
following paragraph:
It is noted that the cited mark was registered on
December 5, 1995. As such, a Section 8
Affidavit/Declaration was due to be filed by June 5,
2001, and even with a grace period, no later than
December 5, 2001. According to Status Information on
the United States Patent and Trademark Office
(“USPTO”) Website, it appears that no Section 8
Affidavit/Declaration has been filed. It seems as if
this registration should have been cancelled by now.
Even though Appellant believes there is no likelihood
of confusion between the two marks, Appellant requests
that the status of the cited registration be monitored
and in case the registration is cancelled under
Section 8, Appellant requests that this Application be
immediately remanded to the Trademark Examining
Attorney to withdraw the Section 2(d) refusal, allow
the Application and pass the mark to publication.
On September 18, 2002 the Examining Attorney filed her
seven page appeal brief arguing the merits of the matter.
This was eleven days after the cited registration was
cancelled for failure to comply with the provisions of
Ser. No. 76/169,888
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Section 8. Nowhere in her brief does the Examining
Attorney in any way acknowledge applicant’s request “that
the status of the cited registration be monitored … in case
the registration is cancelled under Section 8.”
The inattention of the Examining Attorney has not only
wasted her time and this Board’s, but has also needlessly
delayed the publication of applicant’s mark for purposes of
opposition.
Decision: The appeal is moot and this matter is
remanded to the Examining Attorney.