UNITED STATES PATENT AND TRADEMARK OFFICE
|
SERIAL NO: 76/498698
APPLICANT: MELODY FARMS, L.L.C.
|
|
|
CORRESPONDENT ADDRESS: RALPH M. BURTON BROOKS & KUSHMAN P.C. 1000 TOWN CENTER, TWENTY-SECOND FLOOR SOUTHFIELD, MICHIGAN 48075
|
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom112@uspto.gov
|
|
MARK: VALET
|
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: MDY 0135 TUS
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.
|
Serial Number 76/498698
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. Section 1052(d), because the applicant’s mark, when used on or in connection with the identified goods, so resembles the mark in U.S. Registration No. 1782845 as to be likely to cause confusion, to cause mistake, or to deceive. TMEP section 1207. 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 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).
In particular, the examining attorney must compare the marks for similarities in sound, appearance, meaning or connotation. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977). Moreover, although the examining attorney must look at the marks in their entireties under Section 2(d), 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 (CCPA 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1988).
Further, the mere addition of a term to a registered mark is not sufficient to overcome a likelihood of confusion under Section 2(d). Coca‑Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA 1975) ("BENGAL" and "BENGAL LANCER"); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (CCPA 1967) ("THE LILLY" and "LILLI ANN"); In re El Torito Restaurants Inc., 9 USPQ2d 2002 (TTAB 1988) ("MACHO" and "MACHO COMBOS"); In re United States Shoe Corp., 229 USPQ 707 (TTAB 1985) ("CAREER IMAGE" and "CREST CAREER IMAGES"); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) ("CONFIRM" and "CONFIRMCELLS"); In re Riddle, 225 USPQ 630 (TTAB 1985) ("ACCUTUNE" and "RICHARD PETTY'S ACCU TUNE"); In re Cosvetic Laboratories, Inc., 202 USPQ 842 (TTAB 1979) ("HEAD START" and "HEAD START COSVETIC").
Also, 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. In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976).
Thus, 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 section 1207.01(b).
Additionally, the goods 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 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).
The applicant has requested registration of the mark VALET, for “ice cream.” The registrant’s mark is PRAESTANTIA VALET “QUALITY PREVAILS” 1945 AND DESIGN, for “fruit flavorings, extracts and bases used as food flavorings for use in the manufacture of yogurt, cottage cheese, ice cream, sherbet, stick confections, commercial cream fillings, non-dairy and soy-based foods such as soy-based imitation yogurt.”
The applicant’s mark is confusingly similar to the registered mark because of the wording VALET.
Moreover, the applicant’s goods are identical to the registrant’s goods, namely, “ice cream.”
Thus, in view of the relatedness of the marks and goods, there is a strong likelihood that consumers would perceive that the goods emanate from a common source.
In view of the above circumstances, the examining attorney must resolve any doubt as to the issue of likelihood of confusion in favor of the registrant and against applicant who has a legal duty to select a mark, which is totally dissimilar to trademarks already being used. Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979).
Thus, the mark is refused registration on the Principal Register under Section 2(d).
Darryl M. Spruill
Trademark Attorney
Law Office 112
(703) 308-9112, Ext. 203
darryl.spruill@uspto.gov
/Darryl M. Spruill/
RESPONSE GUIDELINES
The applicant may respond via regular mail to the address listed above, or via e-mail to Ecom112@uspto.gov. In the body of the response, please clearly state the applicant’s name, mark, serial number, Law Office and Examining Attorney, mailing date of the Office Action, and the applicant’s telephone number.
To respond to this Office action electronically, the applicant must:
The examining attorney will send correspondence only to the e-mail address listed in the application. A request to change an e-mail address may be submitted by signed e-mail to one of the above e-mail addresses.
Note: only one e-mail address may be used for correspondence. TMEP §§304.03 and 304.07.
Send comments on the USPTO e-Commerce Law Office Pilot Program to Comments@uspto.gov.
PLEASE NOTE: Because it delays processing, submission of duplicate papers is discouraged. Unless specifically requested to do so by the Office, parties should not mail follow up copies of documents transmitted by fax. TMEP 702.04(e); Cf. ITC Entertainment Group Ltd. V. Nintendo of America Inc. 45 USPQ2d 2021 (TTAB 1998).
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.