UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/537883
APPLICANT: Breakfast in Bed, Inc.
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CORRESPONDENT ADDRESS: ROBERT P. SANTIAGO WOODBURY & SANTIAGO, P.A, 9130S. DADELAND BLVD. TWO DATRAN CCNTER- PH1A MIAMI FL 33156 |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
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MARK: BREAKFAST IN BED
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
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 76/537883
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 services, so resembles the mark in U.S. Registration No. 1140773 as to be likely to cause confusion, 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 (C.C.P.A. 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). TMEP §§1207.01 et seq.
Already registered is the mark BREAKFAST IN BED, typed, for catering services. The applicant’s mark is BREAKFAST IN BED and design for prepare foodstuffs and beverages for consumption and provide delivery of same.
The dominant portion of the marks is BREAKFAST IN BED. The applicant’s addition of the design does not change the overall commercial impression of the mark. The literal portions are the dominant and most significant features of marks because consumers will call for the goods or services in the marketplace by that portion. In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); In re Drug Research Reports, Inc., 200 USPQ 554 (TTAB 1978). For this reason, the examining attorney must give greater weight to the literal portions of the marks in determining whether there is a likelihood of confusion. TMEP §1207.01(c)(ii). The marks are confusingly similar.
“Prepare foodstuffs and beverages for consumption and provide delivery of the same” could include “catering services.” Catering services include the applicant’s services. Catering is defined as to prepare food; to buy, procure or prepare provisions. See the attached dictionary definition. The goods are closely related and could be the same. As such there is a great likelihood of confusion as to the source of the services.
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 chooses to respond to the refusal to register, the applicant must also respond to the following issues.
The specimen shows use of the federal registration symbol with the mark; however, Office records do not show that the mark is registered. The applicant may not use the federal registration symbol until a mark is registered in this Office. After registration of the mark, the applicant may use the symbol only with the specific goods or services recited in the registration. TMEP §§906 and 906.02.
The registration symbol, ®, is not part of the mark, and the applicant should delete this from the drawing. TMEP §§807.04 and 807.15.
The drawing displays the mark as BREAKFAST IN BED with a man in a top hat holding a tray. However, this differs from the display of the mark on the specimen, where it appears as BREAKFAST IN BED with a man in a top hat holding a tray with a half circle design. The applicant cannot amend the drawing to conform to the display on the specimen because the character of the mark would be materially altered. 37 C.F.R. §2.72(a); TMEP §§807.14, 807.14(a) and 807.14(a)(i).
Therefore, the applicant must submit a substitute specimen that shows use of the mark as it appears on the drawing. 37 C.F.R. §2.51; TMEP §807.14. 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) and 2.72(a); TMEP §904.09.
The statement supporting use of the substitute specimen must read as follows:
The substitute specimen was in use in commerce at least as early as the filing date of the application.
The applicant must sign this statement either in affidavit form or with a declaration under 37 C.F.R. §2.20; TMEP §904.09.
The applicant asserts use of the mark in commerce for prepare foodstuffs and beverages for consumption and provide delivery of same and applicant asserts that it has a bona fide intent to use the mark in commerce for the same services. An applicant may not assert both use of the mark in commerce, under Trademark Act Section 1(a), 15 U.S.C. §1051(a), and intent to use the mark in commerce, under Trademark Act Section 1(b), 15 U.S.C. §1051(b), for the same goods or services. 37 C.F.R. §2.34(b)(1); TMEP §806.02(b). The applicant must delete one basis or divide the services between the two bases, as appropriate.
Requirements for Section 1(b)
To base the application on a bona fide intention to use the mark in commerce, the applicant must submit the following statement:
The applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application since the filing date of the application.
This statement must be verified, i.e., supported either by an affidavit or by a declaration under 37 C.F.R. §§2.20 and 2.33. Trademark Act Section 1(b), 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2)(i); TMEP §806.01(b).
Requirements for Section 1(a)
To base the application on the applicant’s use of the mark in commerce the applicant must submit the following:
(1) A statement that the mark is in use in commerce, as defined by 15 U.S.C. §1127, and was in use in such commerce on or in connection with the goods or services listed in the application on the application filing date;
(2) The date of the applicant’s first use of the mark anywhere on or in connection with the goods or services;
(3) The date of the applicant’s first use of the mark in commerce as a trademark or service mark; and
(4) One specimen for each class, showing how the applicant actually uses the mark in commerce. If the specimen is not filed with the initial application, applicant must submit a statement that the specimen was in use in commerce at least as early as the application filing date.
These items must be verified by the applicant, i.e., supported either by an affidavit or by a declaration under 37 C.F.R. §§2.20 and 2.33. Trademark Act Section 1(a), 15 U.S.C. §1051(a); 37 C.F.R. §§2.34(a)(1) and 2.59(a); TMEP §806.01(a).
The recitation of services is unacceptable as indefinite because it is too broad and includes services in more than one international class. The applicant may adopt the following recitation, if accurate: “Food delivery,” in class 39 and/or “Food preparation,” in class 43 and/or “Catering,” in class 43. TMEP §1402.11.
Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, the applicant may not amend to include any services that are not within the scope of the services recited in the present identification.
If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.
(1) The applicant must list the goods/services by international class with the classes listed in ascending numerical order. TMEP §1403.01.
(2) The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid. 37 C.F.R. §§2.6(a)(1) and 2.86(a); TMEP §§810.01 and 1403.01. Effective January 1, 2003, the fee for filing a trademark application is $335 for each class. This applies to classes added to pending applications as well as to new applications filed on or after that date.
If the applicant prosecutes this application as a combined, or multiple‑class, application based on use in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), the applicant must comply with each of the following:
(1) The applicant must specifically identify the services in each class and list the services by international class with the classes listed in ascending numerical order. TMEP §1403.01.
(2) The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid. 37 C.F.R. §§2.6(a)(1) and 2.86(b); TMEP §§810.01 and 1403.01. Effective January 1, 2003, the fee for filing a trademark application is $335 for each class. This applies to classes added to pending applications as well as to new applications filed on or after that date.
(3) The applicant must submit:
(a) dates of first use and first use in commerce and one specimen for each class that includes goods or services based on use in commerce under Trademark Act Section 1(a). The dates of use must be at least as early as the filing date of this application, 37 C.F.R. §§2.34(a)(1) and 2.86(a), and the specimen(s) must have been in use in commerce at least as early as the filing date of the application, and/or
(b) a statement of a bona fide intention to use the mark in commerce on or in connection with all the goods or services specified in each class that includes goods or services based on a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), where such statement was not included for the goods or services in the original application.
(4) The applicant must submit an affidavit or a declaration under 37 C.F.R. §2.20 signed by the applicant to verify (3) above. 37 C.F.R. §§2.59(a) and 2.71(c).
/Chrisie Brightmire King/
Examining Attorney
Law Office 103
(703) 534-4197
chrisie.king@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 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.