UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/469975
APPLICANT: Topco Holdings, Inc.
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CORRESPONDENT ADDRESS: CAROL A. GENIS, ESQ. BELL, BOYD & LLOYD LLC P.O. BOX 1135 CHICAGO, ILLINOIS 60690-1135
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3513 ecom113@uspto.gov
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MARK: CUPS TO GO
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CORRESPONDENT’S REFERENCE/DOCKET NO: 0114481-002
CORRESPONDENT EMAIL ADDRESS:
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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 76/469975
The assigned examining attorney has reviewed the referenced application and determined the following.
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 marks in U.S. Registration Nos. 2391660, 2302768 and 2391655 as to be likely to cause confusion, or to cause mistake, or to deceive. TMEP §§1207.01 et seq. See the enclosed registrations.
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 proposed mark is closely related to the prior registered marks in each of the five factors listed above in the DuPont case. The sound, commercial meaning, and impression of the marks are closely related. In particular the dominant term of the applicant’s mark, TO GO is identical to the dominant term of the registrant’s marks. 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). The commercial impression of all of the marks is created by the dominant term. The addition of the highly descriptive terms MUG and CUPS to the marks does not significantly alter the overall commercial impression or meaning. The addition of the term JUNIOR to Registration No. 2391655 does not significantly alter the overall meaning of the mark. It merely connotes a smaller version of the goods.
In addition the goods of the parties are closely related. The goods/services of the parties need not be identical or directly competitive to find a likelihood of confusion. They need only be related in some manner, or the conditions surrounding their marketing be such, that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods/services come from a common source. In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978). TMEP §1207.01(a)(i). The applicant offers hot and cold beverage containers and lids; the registrant offers beverage containers. The goods are overlapping. Consumers, therefore, are likely to believe that the goods/services of the parties originate from the same source.
Registration of the proposed mark must therefore be refused. The applicant may, however, offer evidence in support of registration.
If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informality:
The identification of goods is unacceptable because it may be properly classified in more than one International Class. Plastic lids are properly classified in International Class 20. The applicant may adopt the following identification, if accurate:
Plastic hot and cold beverage containers and lids sold as a unit (in International Class 21). TMEP §1402.
Applicant’s Response
No set form is required for response to this Office action. The applicant must respond to each point raised. Additional information is available on-line at the Patent and Trademark Office site on the global computer network. The site is located at WWW.USPTO.GOV.
/wgb/
William Breckenfeld
Trademark Attorney
Law Office 113
703-308-9113 x158 Phone
703-746-8113 Fax
ecom113@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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.