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  76/342911

 

On July 5, 2002, action on this application was suspended pending the disposition of Application Serial No. 76238560.  The referenced application has matured into a registration.  Therefore, registration is refused as follows.

 

In addition, the requirements for an amended identification/classification of goods and services along with a copy of the foreign registration are continued. 

 

Refusal Due to Likelihood of Confusion

 

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 goods/services, so resembles the mark in U.S. Registration No. 2668160 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registration.

 

In determining whether there is a likelihood of confusion, the examining attorney must consider all circumstances surrounding the sale of the goods/services.  Industrial Nucleonic Corp. v. Hinde Engineering Co., 475 F.2d 1197, 177 USPQ 386 (C.C.P.A. 1973).  These circumstances include the marketing channels, the identity of the prospective purchasers and the degree of similarity between the marks and between the goods/services.  In comparing the marks, similarity in any one of the elements of sound, appearance or meaning is sufficient to find a likelihood of confusion.  If the goods/services of the parties differ, it is necessary to show that they are related in some manner.  In re Mack, 197 USPQ 755 (TTAB 1977).  TMEP §§1207.01 et seq. 

 

The applicant’s goods include unprocessed cereals and grains which are identical to the registrant’s goods.  In addition, the applicant’s goods include processed nuts, fruits and berries, and cereal products which are related to the registrant’s goods, namely, unprocessed nuts, fresh fruits and vegetables, and unprocessed cereals.  If the goods or services of the respective parties are closely related, the degree of similarity between marks required to support a finding of likelihood of confusion is not as great as would apply with diverse goods or services.  ECI Division of E Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443 (TTAB 1980).  TMEP §1207.01(b). 

 

The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side‑by‑side comparison.  The issue is whether the marks create the same overall impression. Visual Information Institute, Inc. v. Vicon Industries Inc., 209 USPQ 179 (TTAB 1980).  The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.  Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP §1207.01(b).

 

The applicant’s mark is ARGOS.  The registrant’s mark is AGROS and design.  When a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods or services. In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976).  TMEP §1207.01(c)(ii).  Therefore, the marks are similar in commercial impression because both marks use the same exact word, namely, AGROS.

 

Couple the similarity in commercial impression along with the identical and related nature of the goods and a consumer encountering both marks may wrongly assume that the goods are derived from a common commercial source.

 

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.

 

Informalities

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.

 

Identification/Classification of Goods

 

The applicant has classified the goods MILK SHAKES incorrectly.  The applicant must amend the application to classify the goods in International Class 30.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).  In addition, the wording fruit ice should be fruit flavored ices in order to make the identification of the goods more precise.  The examining attorney apologizes for these errors.  The applicant must amend the identification to specify the commercial name of the goods.  If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP §1402.01.

 

The applicant may adopt the following identification of goods, if accurate: 

 

MEAT; FISH; POULTRY; GAME; MEAT EXTRACTS; SMOKED MEAT; COLD BOILED PORK; SALTED FOODS, NAMELY, SALTED MEAT AND FISH; CHARCUTERIE; SAUSAGES; PROCESSED VEGETABLES; PROCESSED MUSHROOMS; PROCESSED NUTS; FRUITS AND BERRIES PRESERVED DRIED AND COOKED; STEWED FRUITS; FRUIT SALADS; FRUIT JELLIES; JAMS; MARMALADES; EGGS; MILK; EDIBLE OILS AND FATS; BUTTER; PREPACKAGED DINNERS CONSISTING PRIMARILY OF MEAT, MILK, POULTRY OR VEGETABLES, INTERNATIONAL CLASS 29;

 

MILK PRODUCTS, NAMELY, ICE CREAM, ICE MILK AND MILK SHAKES; COFFEE; ARTIFICIAL COFFEE; VEGETAL PREPARATION FOR USE AS COFFEE; TEA; COCOA; SUGAR; RICE; TAPIOCA; SAGO; FLOUR AND CEREAL PREPARATIONS; FLOUR-MILLING PRODUCTS, NAMELY, FLOUR BASED CHIPS; BREAD; PASTRY; CAKES; CONFECTIONERY, NAMELY, CANDY AND CONFECTIONERY CHIPS FOR BAKING; FLAVORED ICES; FRUIT FLAVORED ICES; HONEY; TABLE SYRUP; MAPLE SYRUP; TREACLE; YEAST; BAKING POWDER; SALT; MUSTARD; VINEGAR; SAUCES EXCEPT SALAD DRESSINGS; SPICES; PROCESSED GROATS FOR FOOD; PASTA; MACARONI; SPAGHETTI; RAVIOLI; PIZZAS; ICE; PROCESSED CEREALS, NAMELY, CEREAL CHIPS; CORN FLAKES; OAT FLAKES; PROCESSED WHEAT, RYE, BARLEY, GRAIN AND CEREAL, INTERNATIONAL CLASS 30;

 

UNPROCESSED WHEAT, RYE, BARLEY, GRAINS AND CEREAL; UNPROCESSED GRAINS EXCEPT GRAINS FOR ANIMAL CONSUMPTION, INTERNATIONAL CLASS 31;

 

COMPUTERIZED FILE MANAGEMENT; ADVERTISING AGENCIES, NAMELY PROMOTING THE SERVICES OF THE AGRICULTURAL FOODS INDUSTRY THROUGH THE DISTRIBUTION OF PRINTED AND AUDIO PROMOTIONAL MATERIALS AND BY RENDERING SALES PROMOTION ADVICE; DISSEMINATION OF ADVERTISING FOR OTHERS VIA THE INTERNET IN THE FIELD OF PRODUCTION AND SALES OF AGRICULTURAL AND FOOD STUFF; BUSINESS RESEARCH AND INVESTIGATIONS; EFFICIENCY EXPERTS; CONDUCTING MARKETING STUDIES; BUSINESS CONSULTATION IN THE FIELD OF PRODUCTION AND SALES OF AGRICULTURAL AND FOOD STUFFS; IMPORT-EXPORT AGENCIES IN THE FIELD OF PRODUCTION AND SALES OF AGRICULTURAL AND FOOD STUFFS; ORGANIZATION OF EXHIBITIONS FOR COMMERCIAL OR ADVERTISING PURPOSES IN THE FIELD OF PRODUCTION AND SALES OF AGRICULTURAL AND FOOD STUFFS; COMMERCIAL INFORMATION IN THE FIELD OF PRODUCTION AND SALES OF AGRICULTURAL AND FOOD STUFFS; PACKAGING AGRICULTURAL AND FOOD STUFFS TO THE ORDER AND SPECIFICATION OF OTHERS; MERCHANDISE PACKAGING IN THE NATURE OF AGRICULTURAL AND FOOD STUFFS; RETAIL AND WHOLESALE STORE SERVICES IN THE FIELD OF AGRICULTURAL AND FOODS STUFFS, INTERNATIONAL CLASS 35;

 

DELIVERY OF AGRICULTURAL AND FOOD STUFFS BY TRUCK AND AIR; SHIPPING OF AGRICULTURAL AND FOOD STUFFS; PACKAGING AGRICULTURAL AND FOOD STUFFS FOR TRANSPORTATION; STORAGE OF AGRICULTURAL AND FOOD STUFFS, INTERNATIONAL CLASS 39;

 

PROFESSIONAL CONSULTATION IN THE FIELD OF PRODUCTION OF AGRICULTURAL AND FOOD STUFFS; RESTAURANTS, CAFES; BAR SERVICES; ANIMAL BREADING AND GROOMING; INTELLECTUAL PROPERTY CONSULTATION, NAMELY, PATENT EXPLOITATION; SCIENTIFIC RESEARCH, NAMELY, TECHNICAL PROJECT STUDIES IN THE FIELD OF PRODUCTION OF AGRICULTURAL AND FOOD STUFFS; PLANT NURSERIES; VETERINARY SERVICES, NAMELY, VETERINARY ASSISTANCE, INTERNATIONAL CLASS 42.

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods and services recited in the present identification.

 

If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.

 

(1)  The applicant must list the goods/services by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(2)  The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(a); TMEP §§810.01 and 1403.01.  Effective January 10, 2000, the fee for filing a trademark application is $325 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  

 

Foreign Registrations

 

If the applicant is asserting §44(e) as a basis for registration (based on the foreign registration that will issue from the application that the applicant relied on for priority), the applicant must submit a true copy, a photocopy, a certification, or a certified copy of a foreign registration from the applicant’s country of origin.  The applicant’s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  See TMEP §§1002.01, 1003.03 and 1004.

 

If the foreign certificate of registration is not written in English, the applicant must provide an English translation.  The translator should sign the translation.  See TMEP §§1004.01 and 1004.01(b).

 

 

 

 

 

 

___________________________________________

Brendan D. McCauley

Examining Attorney

Law Office 114

703-308-9114 X165

 

 

 

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.

 

Fee increase effective January 1, 2003

Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class.  The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00. 

 

Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003.