From: Ademi, Xheneta
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`Sent: 9/18/2020 5:49:48 PM
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`To: TTAB EFiling
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`CC:
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`Subject: U.S. Trademark Application Serial No. 87495623 - QUINN'S - N/A - REMAND REQUEST TO TTAB
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`Attachment Information:
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`Count: 1
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`Files: 87495623.doc
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`United States Patent and Trademark Office (USPTO)
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`U.S. Application Serial No. 87495623
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`Mark: QUINN'S
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`Correspondence Address:
` TEDD LEVINE
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` LAW OFFICES OF TEDD S LEVINE LLC
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` 31 KRISTIN LN
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` HAUPPAUGE, NY 11788
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`Applicant: Mano & Mano Pty Ltd
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`Reference/Docket No. N/A
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`Correspondence Email Address:
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` lawofficesofteddslevine@gmail.com
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`MOTION TO REMAND
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`MOTION TO REQUEST SUSPENSION OF THE APPEAL AND
`REMAND OF THE APPLICATION FOR FURTHER EXAMINATION
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`Before the Trademark Trial and Appeal Board on Appeal
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`The trademark examining attorney requests that the Trademark Trial and Appeal Board suspend
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`the appeal proceeding and remand the application to the trademark examining attorney under 37 C.F.R.
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`§2.142(f)(6) to address an issue not involved in the appeal.
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`Applicant has proposed to register the mark “QUINN'S” (stylized) (Application Serial No.
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`87495623). The examining attorney refused registration pursuant to Section 2(d) of the Trademark Act
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`for a likelihood of confusion with the mark in U.S. Registration No. 5676297 and pursuant to Section
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`2(e)(4) of the Trademark Act for the mark being primarily merely a surname.
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`In its February 28, 2018 response, Applicant makes conflicting statements regarding both its
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`wish to amend the application to the Supplemental Register and to claim that the mark has acquired
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`distinctiveness based on use of the mark since mid-2016. Following a request for clarification, the
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`potential amendment to the Supplemental Register has been dropped. The questions of whether
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`Applicant explicitly intends to claim acquired distinctiveness pursuant to Section 2(f) of the Trademark
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`Act and whether such a claim would be acceptable, however, have not been resolved. Accordingly, the
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`examining attorney respectfully requests that the TTAB suspend the present appeal and remand the
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`application to enable the examining attorney to review and consider the Section 2(f) claim of acquired
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`distinctiveness. See TBMP §1209.02; TMEP §§1504.05 and 1212.07.
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`Further, the undersigned examining attorney notes the existence of an ongoing legal proceeding
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`involving the applied-for mark. This legal proceeding is in the nature of Cancellation No. 92074479 and it
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`involves the cited registered mark, namely, U.S. Registration No. 5676297, which conflicts with
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`Applicant’s mark under Trademark Act Section 2(d). 15 U.S.C. §1052; see 37 C.F.R. §2.83; TMEP
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`§§716.02(a), (c)-(d), 1208 et seq. Because the outcome of Cancellation No. 92074479 could directly
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`affect whether Applicant’s mark can register, the undersigned examining attorney intends to suspend
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`action on this application until this proceeding concludes, upon resolution of the questions concerning
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`the Section 2(f) claim. See 37 C.F.R. §2.67; TBMP §1213; TMEP §§716.02(a), (c)-(d).
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`This request for remand is submitted in lieu of the appeal brief. An additional request is made to
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`reset the time for filing the Examiner’s Brief for 60 days, or as appropriate, should the request to
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`remand be denied.
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`Respectfully submitted,
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`/Xheneta Ademi/
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`Xheneta Ademi
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`John Lincoski, Managing Attorney
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`Law Office 130/Innovation Lab
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`571-272-7151
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`xheneta.ademi@uspto.gov
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