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  76/237674

 

The assigned examining attorney has reviewed the statement of use filed on July 24, 2003 and has determined the following.[1]

 

Refusal under Section 2(d) – Likelihood of Confusion

 

THIS REFUSAL APPLIES TO CLASS 42 SERVICES ONLY (Hotel, restaurant and bar services)

 

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or in connection with the identified services, so resembles the mark in U.S. Registration No. 2556259 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registration.

 

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 (C.C.P.A. 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).  TMEP §§1207.01 et seq. 

 

In the present case, the applicant has applied to register KING KONG for “hotel, restaurant and bar services.”  Registration No. 2556259 is KING KONG CAFÉ for “restaurants.”  The marks are nearly identical.  The only difference is that the registrant has added the generic wording “CAFÉ” to the mark.

 

If the marks of the respective parties are identical or nearly identical, the relationship between the goods or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks.  Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981).  TMEP §1207.01(a).  Here, the services are identical, in part.  Both the applicant and the registrant provide restaurant services.

 

The marks are nearly identical.  The services are identical, in part.  The similarities between the marks and the services are so great as to create a likelihood of confusion among consumers.

 

Refusal under Sections 1, 2, 3 and 45 – Mark Fails to Function

 

THIS REFUSAL APPLIES TO CLASS 41 ONLY

 

The Examining Attorney refuses registration because the proposed mark does not function as a trademark.  Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051, 1052, 1053 and 1127.  The proposed mark neither identifies and distinguishes the services of the applicant from those of others nor indicates their source.  In Re Remington Products Inc., 3 USPQ2d 1714 (TTAB 1987).  TMEP §§1202 et seq.  Please note that the proposed mark does not function as a service mark because the specimens submitted with the statement of use are unacceptable as evidence of actual service mark use for the services recited in the Notice of Allowance; therefore, the proposed mark cannot identify and distinguish the applicant's services from those of others nor indicate their source. 

 

The specimen is unacceptable as evidence of actual service mark use because it does not show use of the mark in the sale or advertising of applicant’s services in International Class 41- entertainment services, namely, entertainment in the nature of amusement parks and rides.  A specimen is unacceptable if it does not show use of the service mark in relation to the identified service.  Intermed Communications, Inc. v. Chaney, 197 USPQ 501 (TTAB 1977).  The specimen must show use of the mark “in the sale or advertising of services.”  Trademark Act Section 45, 15 U.S.C. §1127; In re Universal Oil Products Co., 476 F.2d 653, 177 USPQ 456 (C.C.P.A. 1973); TMEP §§1301.04 et seq.  There is no reference to services recited in the application. 

 

The applicant must demonstrate how the mark is used with the services by submitting an acceptable specimen.  In re Restonic Corp., 189 USPQ 248 (TTAB 1975); 37 C.F.R. §2.56; TMEP §§1301.04 et seq. Examples of acceptable specimens are signs, photographs, brochures or advertisements that show the mark used in the sale or advertising of the services.  TMEP §§1301.04 et seq.

 

The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimen was in use in commerce prior to the expiration of the time allowed to the applicant for filing a statement of use.  37 C.F.R. §2.59(b); TMEP §§904.09 and 1109.09(b).

 

The statement supporting use of the substitute specimen must read as follows: 

 

The substitute specimen was in use in commerce prior to the expiration of the time allowed to the applicant for filing a statement of use. 

 

The applicant must sign this statement either in affidavit form or with a declaration under 37 C.F.R. §2.20; TMEP §§904.09 and 1109.09(b). 

 

If an amendment of the dates-of-use clause is necessary in order to state the correct dates of first use, the applicant must verify the amendment with an affidavit or a declaration in accordance with 37 C.F.R. §2.20.  37 C.F.R. §2.71(c); TMEP §§903.05 and 1109.09(a).

 

Pending an adequate response to the above, the examining attorney refuses registration under Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051, 1052, 1053 and 1127, because the record does not show use of the proposed mark as a service mark.

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

Advisory – Classification of Services (International Class 42)

 

 

Please note that the applicant’s services in International Class 42 are properly classified in International Class 43 under the 8^th Edition of the Nice Agreement.

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

/Julie A. Watson/

Trademark Examining Attorney

Law Office 113

(703) 308-9113 ex. 210

(703) 746-8113 - fax

 

 

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 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