Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

FINAL 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  76/392879

 

This letter responds to the applicant’s communication filed on February 28, 2003.  The claim of ownership over the prior registrations is acceptable. 

 

FINAL REFUSAL UNDER SECTION 2(d)

 

Registration was refused under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration No. 1065521 as to be likely, when used on the identified goods/services, to cause confusion, or to cause mistake, or to deceive.

 

The examining attorney has considered the applicant’s arguments carefully but has found them unpersuasive.  For the reasons below, the refusal under Section 2(d) is maintained and made FINAL.

 

The applicant has applied for registration of the mark MOTHER’S, for goods currently described as “snack foods, namely, snack crackers, rice crackers, rice crackers, grain crackers, wheat crackers, wheat crackers, seasoned snack mixes consisting primarily of crackers, grain based chips, rice chips, cereal-based chips, wheat chips, corn chips, flour-based chips, taco-type chips, and pretzels

 

Registration No. 1065521 is the mark MOTHER’S, for cookies. 

 

The applicant’s mark is identical to the registrant’s mark.  Furthermore, the applicant’s goods are closely related to the goods of the registrant.  The applicant’s goods include a wide range of baked goods, including crackers, chips and pretzels.  The registrant’s cookies are also baked goods. 

 

The goods are marketed through the same channels of commerce, and are marketed to the same class of consumers.  Although the applicant argues differently, cookies and crackers often appear in close proximity to one anther on grocery store shelves.  

                                                                                           

The examining attorney agrees with the applicant that the goods here are not identical.  However, the fact that the goods of the parties differ is not controlling in determining likelihood of confusion.  The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source of those goods.  See In re Rexel Inc., 223 USPQ 830, 831, (TTAB 1984), and cases cited therein; TMEP §§1207.01 et seq.

 

Furthermore, consumers often expect to find goods such as cookies and crackers from the same source.  In support of this position, the examining attorney attaches copies of 31 registrations taken from the Principal Register.  All of the attached registrations include both cookies and crackers in the identification of goods. 

 

These registrations demonstrate that it is common in the baking industry for a company to market both crackers and cookies under the same trademark.  These registrations represent only a small sample of registrations on the Principal Register that include both of these goods. 

 

The applicant’s mark is identical to the registrant’s mark.  The goods of the two parties are highly similar.  Consumers are likely to assume that the goods emanate from the same source.  As such, the refusal to register under Section 2(d) is maintained and made FINAL.

 

FINAL IDENTIFICATION OF GOODS REQUIREMENT

 

The examining attorney required the applicant to submit a more definite identification of goods  because the identification, as filed was indefinite.  TMEP Section 1402.01.  The applicant has amended the identification of goods in a manner that is generally acceptable.  However, the amended identification is also unacceptable as indefinite.  Therefore, the requirement for a more definite identification of goods is maintained and made FINAL. 

 

Specifically, the identification of goods lists the goods identified as “wheat crackers” twice.  The applicant should either delete the second occurrence of these goods from the identification, or more specifically identify the goods. 

 

The requirement for an acceptable identification of goods is made FINAL.

 

RESPONDING TO THIS OFFICE ACTION

 

Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and Appeal Board.  37 C.F.R. §2.64(a).  If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned.  37 C.F.R. §2.65(a).

 

 

 

 

Mitchell Front   /mf/

Trademark Attorney, Law Office 111

(703) 308-9111 ext. 122

 

 

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.