UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

Serial Number   76/353462                        SONORA

 

This letter responds to the applicant’s communication filed on December 1, 2003.

 

Domestic Representative Information Is Deleted

 

The information regarding appointment of a domestic representative is deleted from the record. 

 

Dual Bases Maintained

 

The Office notes the applicant’s intent to rely on dual filing bases - §§1(b) and 44(d). 

REQUIREMENT CONTINUED:  Additional Class(es) May Be Added to Application

 

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.  

 

REFUSAL CONTINUED – Likelihood of Confusion With Registered Mark

 

Registration was refused under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration No. 1,716,136 (SONORA VALLEY) as to be likely, when used on the identified goods, to cause confusion, or to cause mistake, or to deceive.

 

For the reasons below, the refusal under Section 2(d) is maintained and CONTINUED.

 

Section 2(d) of the Trademark Act bars registration where a mark so resembles a registered mark, that it is likely, when applied to the goods/services, to cause confusion, or to cause mistake or to deceive. TMEP §1207.01.  The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), listed the principal factors to consider in determining whether there is a likelihood of confusion.  Among these factors are the similarity of the marks as to appearance, sound, meaning and commercial impression and the similarity of the goods.  The overriding concern is to prevent buyer confusion as to the source of the goods.  Miss Universe, Inc. v. Miss Teen U.S.A., Inc., 209 USPQ 698 (N.D. Ga. 1980).  Therefore, any doubt as to the existence of a likelihood of confusion must be resolved in favor of the registrant.  Lone Star Mfg. Co. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368 (C.C.P.A. 1974). 

 

In this case, the literal portions of the respective marks are highly similar.  In fact, it appears that the applicant has appropriated a major element from the registrant’s mark – the term SONORA.  It stands to reason that purchasers who are familiar with the registrant’s mark would assume that the proposed mark simply reflects a new Mexican food product made available by the same source, or a new shortened name for the applicant’s products.  As such, consumers who see these marks on the same or related goods could conclude that the same source is marketing the parties’ goods. 

 

Furthermore, the examining attorney notes that the parties are marketing identical goods – guacamole and sauces.  The parties’ 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. 

 

For the foregoing reasons, the refusal to register the proposed mark under §2(d) of the Trademark Act is maintained and CONTINUED.  Should the cited registration expire before a final disposition is made in this case, the examining attorney will withdraw this refusal. 

 

 

NOTICE OF SUSPENSION

 

 

Action on this application is suspended pending the disposition of:

 

- Application Serial No(s). 76/265049 (SONORA MILLS) and 76/265072 (SONORA    MILLS)

 

Since applicant's effective filing date is subsequent to the effective filing date of the above-identified application(s), the latter, if and when it registers, may be cited against this application.  See 37 C.F.R. §2.83.  A copy of information relevant to this pending application(s) was sent previously.  The applicant may request that the application be removed from suspension by presenting arguments related to the potential conflict between the relevant applications or other arguments related to the ground for suspension.  The applicant's election to present or not to present arguments at this time will not affect the applicant's right to present arguments later.

 

 

 

 

 

 

/daniellemattessich/

Danielle I. Mattessich

Trademark Attorney, Law Office 105

(703) 308-9105 Ext. 261

Fax:  (703) 746-8105