Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/094060

 

On 11-08-01, action on this application was suspended pending the disposition of Application Serial Nos. 75-585757 and 75-585758.  The referenced applications have matured into  registrations.  Therefore, registration is refused as follows.  Please note that these refusals are in addition to the refusals issued in the first Office action.

 

Likelihood of Confusion

 

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the applicant's mark, when used on or in connection with the identified goods, so resembles the marks in U.S. Registration Nos. 2593367 and 2593368 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP section 1207.  See the enclosed registrations.

 

The examining attorney must analyze each case in two steps to determine whether there is a likelihood of confusion.  First, the examining attorney must look at the marks themselves for similarities in appearance, sound, connotation and commercial impression.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).  Second, the examining attorney must compare the goods or services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely.  In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978); Guardian Products Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978).

 

            Similarity of the Marks

 

The applicant has applied to register the term “MAMASITA”, while the registered marks are for “MAMACITA’S MEXICAN RESTAURANT and MAMACITA’S MEXICAN RESTAURANT  and design”.  The dominant term in each mark is the word “MAMACITA or the phonetic equivalent, MAMASITA”, which makes the marks highly similar in meaning and commercial impression. It is well settled that marks may be confusingly similar in appearance notwithstanding the addition, deletion or substitution of letters or words.  See, e.g. Weiss Associates Inc. v. HRL Associates, Inc.,  14 USPQ2d 1840 (Fed. Cir. 1990);  In re United States Shoe Corp., 229 USPQ 707 (TTAB 1985) (CAREER IMAGE for clothing held confusingly similar to CREST CAREER IMAGES for uniforms); In re Apparel Ventures, Inc., 229 USPQ 225 (USPQ 1986) (SPARKS BY SASSAFRASS for clothing held confusingly similar to SPARKS for footwear).

 

The examining attorney must look at the marks in their entireties under Section 2(d). Nevertheless, one feature of a mark may be recognized as more significant in creating a commercial impression.  Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion.  In re National Data Corp., 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (CCPA 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1988). 

 

            Comparison of the Goods and Services

 

The applicant has identified food products, and the registrant has identified restaurant services.  While the goods and services themselves may be different, they are considered related because they both involve food, and because many restaurants market food items under the name of the restaurant.  The goods and services of the parties need not be identical or directly competitive to find a likelihood of confusion.  They need only be related in some manner, or the conditions surrounding their marketing be such, that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the services come from a common source.  In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).

 

As such, registration must be refused pursuant to Section 2(d) of the Trademark Act because the mark is confusingly similar to the registered marks.

 

 

 

Susan Leslie DuBois

Examining Attorney

Law Office 111

703-308-9111 ext.413

EMAIL: ecom111@uspto.gov

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.