UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

Serial Number   76/533173      

 

NOTICE OF SUSPENSION

 

This letter responds to the applicant’s communication filed on August 11, 2004.   The examining attorney acknowledges  the applicant’s arguments..   For reasons that follow, the section 2(d) and 2(e)(1) refusals are each MAINTAINED.  The prior pending application is also maintained as a potential citation.

 

The applicant first argues that the examining attorney’s 2(d) refusal should be withdrawn.   The examining attorney has considered the applicant’s arguments carefully but found them unpersuasive.  The cited mark, Reg. No. 2773577 for CAFÉ ASIA are for identical services.  The only difference between the two marks is the addition of the generic term CAFÉ.  The examiner is mindful that there are other registered marks which contain the term ASIA for the same and similar services, however, these marks, unlike the applicant’s mark, have other non-generic matter to distinguish them from each other and the applicant’s mark.  Moreover, the services as identified, must be considered identical.  The registrant’s registration is in full force and effect throughout the United States and is in no way limited geographically. 

 

The applicant secondly argues that the examining attorney’s prior pending citation should be withdrawn.   The examining attorney has considered the applicant’s arguments carefully but found them unpersuasive.   The  prior pending mark , serial no. 78-133731 for CAFÉ ASIA, is owned by the owner of the cited mark for restaurant services.  The goods, food products, will be found in the same channels of trade as restaurant services such that consumer confusion is likely to result.   Restaurants typically market frozen and prepared foods for retail sales both on and off the restaurant premises.  

 

The applicant first finally that the examining attorney’s 2(e)(1) refusal should be withdrawn.   The examining attorney has considered the applicant’s arguments carefully but found them unpersuasive.  ASIA clearly defines a geographic area and a type of cuisine found therein.   It is submitted that the register clearly reflects this.  The first five registrations cited by the applicant (Applicant’s Exhibit 8) as evidence of the suggestiveness of ASIA actually demonstrate the descriptiveness of the mark: SIMPLY ASIA, CAFÉ ASIA, FAR EAST FUSION CREATIVE ASIAN CUISINE, ASIAN WAY, ASIAN SOURCES each have the  term ASIA (or ASIAN) either disclaimed or registered under section 2(f) based on acquired distinctiveness.

 

Action on this application is suspended pending the disposition of:

 

-         Application Serial No(s). 78-133731

 

Since applicant's effective filing date is subsequent to the effective filing date of the above-identified application(s), the latter, if and when it registers, may be cited against this application.  See 37 C.F.R. §2.83.  A copy of information relevant to this pending application(s) was sent previously.  The applicant may request that the application be removed from suspension by presenting arguments related to the potential conflict between the relevant applications or other arguments related to the ground for suspension.  The applicant's election to present or not to present arguments at this time will not affect the applicant's right to present arguments later.

 

 

 

 

 

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.uspto.gov/teas/index.html.

 

 

/John S. Yard/

Trademark Examining Attorney

Law Office 115

(571) 272-9486