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  76/469551

 

            The assigned examining attorney has reviewed the referenced application and determined the following.

 

 

I.  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. 1,198,165 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registration.

 

A.        Legal Standard:

 

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/services.  The overriding concern is to prevent buyer confusion as to the source of the goods/services.  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). 

 

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).

 

B.         The Registered Mark Is Highly Similar In Appearance To The Applicant’s Mark:

 

As a general rule, the examining attorney must look at the marks in their entireties under Section 2(d). Nevertheless, one feature of a mark may be recognized as more significant in creating a commercial impression.  Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion.  In re National Data Corp., 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1988).  TMEP §1207.01(b)(viii). 

 

In this case, the applicant has applied to register the mark “ATHENS” for use on hot dog sandwiches in International Class 30.  The registered mark is “ATHENS FOODS and Design” for use on frozen pastry and bakery goods in International Class 30.  The marks are highly similar since they both share the similar dominant wording “ATHENS”.  Moreover, although the registered mark has the design element, as a general rule, 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). 

 

C.        The Applicant’s Goods Are Closely Related To The Registrant’s Goods:

 

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).

 

In this case, the applicant’s and registrant’s goods are closely related since sandwich items are usually purchased at bakeries along with pastries and bakery goods.

 

            Since the applicant’s goods are closely related to the registrant’s goods and since the marks are highly similar in appearance, it is likely that persons familiar with the registrant’s goods, upon encountering the applicant’s goods, would assume that the applicant’s goods originate from, or are in some way associated with the source of the registrant’s goods.  The examining attorney must resolve any doubt regarding a likelihood of confusion in favor of the prior registrants.  In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir., 1988).

 

The applicant is also advised of the following refusal.

 

 

II.  FAILURE TO FUNCTION AS A TRADEMARK:

 

The examining attorney refuses registration because the proposed mark does not function as a trademark.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127.  The proposed mark neither identifies and distinguishes the goods 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.  In this case, the proposed mark is not used for any of the proposed hot dog sandwiches.  It is simply shown as a restaurant sign.

 

To determine whether a term is being used as a trademark, the examining attorney must consider the specimen of record, together with any other evidence submitted with the application.  In re Bose Corp., 546 F.2d 893, 192 USPQ 213 (C.C.P.A. 1976); In re Restonic Corp., 189 USPQ 248 (TTAB 1975).  Not all words, designs, symbols or slogans used in the sale or advertising of goods or services function as trademarks, regardless of the applicant’s intent.  A term does not function as a trademark unless it is used in a manner, which clearly projects to purchasers a single source of the goods or services.  In re Morganroth, 208 USPQ 284 (TTAB 1980).  TMEP §§1202 et seq.

 

            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.

 

 

SIGNIFICANCE OF WORDING:

 

The applicant must indicate whether the wording “ ATHENS” has any significance in the relevant trade or industry or as applied to the goods/services.  37 C.F.R. §2.61(b).  That is, the applicant must state for the record whether its hot dog sandwiches are prepared as an Athenian style sandwich.

 

 

SPECIMEN IS UNACCEPTABLE:

 

The specimen is unacceptable as evidence of actual trademark use because it is simply advertising or signage for a restaurant.  Invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases and other printed advertising material generally are not acceptable specimens.  In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979); TMEP §§904.05 and 904.07.  See In re Ultraflight Inc., 221 USPQ 903 (TTAB 1984).  The applicant must submit a specimen showing the mark as it is used in commerce.  37 C.F.R. §2.56.  Examples of acceptable specimens are tags, labels, instruction manuals, containers, and photographs that show the mark on the goods or packaging.  TMEP §§904.04 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 at least as early as the filing date of the application.  37 C.F.R. §2.59(a); TMEP §904.09.

 

            Advertising material is generally not acceptable as specimens for goods.  See TMEP § 904.05.  Any material whose function is merely to tell the prospective purchaser about the goods, or to promote the sale of the goods, is unacceptable to support trademark use.  Similarly, information or instruction sheets are generally not acceptable for showing trademark use.  In re ITT Rayonier Inc., 208 USPQ 86 (TTAB 1980); In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979).  But see In re Ultraflight Inc., 221 USPQ 903 (TTAB 1984).

 

 

PRIOR PENDING APPLICATIONS:

 

The examining attorney encloses information regarding pending Application Serial Nos. 76/458123 and 76/458154.  The filing dates of the referenced applications precede the applicant’s filing date.  There may be a likelihood of confusion between the marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  If the referenced applications mature into registrations, the examining attorney may refuse registration in this case under Section 2(d).  37 C.F.R. §2.83; TMEP §1208.01.

 

 

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

 

 

 

                                                                   ______________________________

Robert L. Lorenzo

Trademark Attorney

Law Office 111

(703) 308-9111 x 117

Robert.Lorenzo@uspto.gov

 

 

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.