UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/484255
APPLICANT: Nisshin Seifun Group Inc.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: NISSHIN INITIO
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CORRESPONDENT’S REFERENCE/DOCKET NO: 22046.0004
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 76/484255
On January 15, 2004, action on this application was suspended pending the disposition of Application Serial No. 76344432. The referenced pending application has since registered. Therefore, registration is now refused as follows.
The examining attorney refuse 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 marks in U.S. Registration No. 2905483 as to be likely to cause confusion, or 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). 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).
The applicant’s mark NISSHIN INITIO for, inter alia, “noodles; pasta; boiled and dried noodles; pre-cooked frozen foods consisting primarily of pasta” has a similar appearance and sound impression as the registered marks NISSIN Registration No. 2905483. The registered mark is used for “[i]nstant noodle soups consisting primarily of dried noodles and soup mixes sold in a disposable container.” The dominant elements of the applicant’s mark and the registered marks are similar (NISSHIN and NISSIN), thus creating a similar overall commercial impression. Furthermore, the dominant parts of the marks are aurally similar.
Moreover, the goods provided by the applicant are related to the goods provided by the registrants. Both parties offer noodles. Consumers would likely believe that the applicant’s goods and the registrants’ goods emanate from the same source. Consequently, the applicant’s mark is not entitled to registration.
The refusals to register under Section 2(d) based on U.S. Registration Nos. 0878316 and 1394232 are maintained and CONTINUED.
APPLICANT’S RESPONSE
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.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Karla Perkins/
Trademark Examining Attorney
Law Office 102
571-272-9260
571-273-9102 (fax)
HOW TO RESPOND TO THIS OFFICE ACTION:
STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.
VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.
GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.
Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:
(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or
(2) $375 per international class if filed on paper
These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.
The new fee requirements will apply to any fees filed on or after January 31, 2005.
NOTICE: TRADEMARK OPERATION RELOCATION
The Trademark Operation has relocated to Alexandria, Virginia. Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
Applicants, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.