UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/353462
APPLICANT: SONORA FOODS LTD.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
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MARK: SONORA
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CORRESPONDENT’S REFERENCE/DOCKET NO: 2001-7307
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/353462 SONORA
On January 28, 2004, action on this application was suspended pending the disposition of Application Serial No(s). 76/265049 (SONORA MILLS) and 76/265072 (SONORA MILLS). The referenced pending application 76/265072 (SONORA MILLS) abandoned on July 7, 2004. The referenced pending application 76/265049 (SONORA MILLS), however, has since registered. Therefore, registration is now refused as indicated below.
Refusal to Register Proposed Mark Under § 2(d) is WITHDRAWN
Registration was refused under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d). U.S. Registration No. 1,716,136 (SONORA VALLEY) was cancelled on June 21, 2003. Thus, the examining attorney has withdrawn the refusal issued under §2(d) of the Trademark Act with respect to this registration.
Please note the following outstanding issues with respect to this application.
The Office notes the applicant’s intent to rely on dual filing bases - §§1(b) and 44(d).
The application identifies goods that may be classified in several international classes. Therefore, the applicant must either: (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es). 37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01.
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 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 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.
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, so resembles the mark in U.S. Registration No. 2,617,612 (SONORA MILLS) 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 (CCPA 1973). Similarity in any one of these elements is sufficient to find a likelihood of confusion. 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).
In this case, the applicant applied to register the mark SONORA for Mexican and tex-mex specialty foods, namely, canned tomatillos, processed jalapeno peppers; processed chipotle peppers; processed pears, namely, nopales; and guacamole; Mexican and tex-mex specialty foods, namely, tortillas, corn tortillas, tortilla chips, salsas, burritos, enchiladas, fajitas, chimichangas, tomatillo based sauces, nacho cheese sauce, cheddar cheese sauce, dried chili peppers for use as a seasoning, and taco seasoning
The registered mark is SONORA MILLS for tortilla chips.
With regard to the first step in the likelihood of confusion analysis, the respective marks are highly similar in appearance, sound and meaning. In fact, it appears that the applicant has appropriated a major element from the registrant’s mark – the term SONORA. Marks may be confusingly similar in appearance where there are similar terms or phrases or similar parts of terms or phrases appearing in both applicant’s and registrant’s mark. See e.g., Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986), aff’d 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH and COMMUNICASH); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB and “21” CLUB (stylized)); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re Collegian Sportswear Inc., 224 USPQ 174 (TTAB 1984) (COLLEGIAN OF CALIFORNIA and COLLEGIENNE); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (MILTRON and MILLTRONICS); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (LUTEXAL and LUTEX); TMEP §1207.01(b)(i). In this case, it stands to reason that purchasers who are familiar with the registrant’s mark would assume that the proposed mark simply reflects a new tortilla product marketed by the same source. Thus, the respective marks have the same commercial impression. Consumers who see these marks on the same or related goods could conclude that the same source is marketing the parties’ goods.
With regard to the second step in the analysis, the examining attorney finds that the parties are marketing identical goods – tortilla chips. The applicant’s other goods are also highly related Mexican food products. Thus, these goods are in the same trade channels and are made available to all potential customers.
The examining attorney must resolve any doubt as to the issue of likelihood of confusion in favor of the registrant and against the applicant who has a legal duty to select a mark which is totally dissimilar to trademarks already being used. Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979).
Consumers are likely to confuse the source of the applicant’s goods with the source of the registrant’s goods upon encountering them in the marketplace. Accordingly, the examining attorney concludes that the similarities between the marks and the goods of the parties are so great as to create a likelihood of confusion among consumers.
For the foregoing reasons, registration of the proposed mark is refused.
Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
Response Guidelines
If the applicant submits a response electronically, an electronic signature is required. An applicant, registrant or attorney may sign an electronic communication by entering a “symbol” that he or she has adopted as a signature between two slashes. In addition, the Office will accept an electronic communication containing the “/s/” (“/(signature)/”) notation in lieu of a signature. A scanned image of a document signed in ink is also acceptable, as long as the image is attached in .jpg format. TMEP Section 304.08.
To ensure that its response is considered timely, applicant may wish to add the following completed “certificate of mailing” to the end of its response. Applicant should keep a photocopy of its response with the signed certificate, in case the response is lost or misplaced. See TMEP §§305.02 et seq.
CERTIFICATE OF MAILING
I hereby certify that this correspondence is being deposited with the United States Postal Service with sufficient postage as first class mail in an envelope addressed to: Commissioner for Trademarks, 2900 Crystal Drive, Arlington, Virginia 22202-3514, on the date below.
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(Typed or Printed Name of Person Signing Certificate)
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(Signature)
________________________________________________
(Date)
The certificate of mailing procedure does not apply to the initial filing of trademark applications. 37 C.F.R. §2.197(a)(2).
The Trademark Applications and Registrations Retrieval (TARR) database on the USPTO website at http://tarr.uspto.gov provides detailed, up to the minute information about the status and prosecution history of trademark applications and registrations. Please note that an application serial number or registration number is needed to be able to access this database. TARR is available 24 hours a day, 7 days a week.
The USPTO Trademark Operations will be moving to the new Alexandria, Virginia campus in October and November 2004. During that time, you are strongly encouraged to communicate with the USPTO through the Trademark Electronic Application System (TEAS) which can be found at www.uspto.gov .
Effective October 4, 2004, all Trademark-related paper mail must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
My Law Office will move on November 1, 2004. To reach me by phone after that date call (571) 272-9324.
To submit a fax response to this Office action after that date, send your response to the Law Office fax number, namely (571) 273-9106.
/dani/
Danielle I. Mattessich
Trademark Attorney
Law Office 106
Tel: (703) 308-9106 Ext. 261
Fax: (703) 746-8106
How to respond to this Office Action:
You may respond using the Office's Trademark Electronic Application System (TEAS) (visit http://www.gov.uspto.report/teas/index.html and follow the instructions therein), but you must wait until at least 72 hours after receipt of the e-mailed office action. PLEASE NOTE: For those with applications filed pursuant to Section 66(a) of the Trademark Act, all responses to Office actions that include amendments to the identifications of goods and/or services must be filed on paper, using regular mail (or hand delivery) to submit such response. TEAS cannot be used under these circumstances. If the response does not include an amendment to the goods and/or services, then TEAS can be used to respond to the Office action.
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.