UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/584605

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

LIKELIHOOD OF CONFUSION

 

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, so resembles the marks in U.S. Registration Nos. 2864184 and 2491330, and U.S. Registration 2877623 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registrations.

 

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. 

 

The applicant’s mark is comprised of wording in Urdu translated as “LAZIZA.”  The wording in the mark, for purposes of searching, is regarded as LAZIZA INTERNATIONAL (with design feature).  The appearance of the script in the mark has also been searched as a design in conjunction with the other elements comprising the mark. The applicant’s mark encompasses the wording of the registrant’s mark, LAZIZ, U.S. Registration Nos. 2864184 and 2491330,and the dominant portion of the registrant’s marks LAZIZ BRAND.  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 dominant elements in the marks are the words LAZIZA and LAZIZ.  The additional wording BRAND in one of the registrant’s marks is a generic word as applied to branded goods and is accordingly disclaimed.  The word does not serve to distinguish the marks discussed here.  Similarly, the wording INTERNATIONAL in the applicant’s mark merely describes the extent of the market in which the goods are sold, and does not serve as a source identifier for the goods.   The dominant words in the marks are distinguished by the vowel at the end of the word in the applicant’s mark.  The applicant must submit a translation of the foreign wording in the mark, e.g., the wording LAZIZ.  (This requirement is discussed below.) 

 

The examiner notes that the applicant's mark contains a design element.  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 or services. In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976).  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.

 

The registrant’s mark is for use with “processed dates, processed/dried fruit, nuts and processed pistachio. “ and particularly, “spices,” and with “rice, namely, basmati rice.”   The applicant proposes using the mark in connection with “(A) Sweet / Dessert Mixes namely (1)Kheer Mix (Rice Pudding Mix) (2)Firni Khas (Traditional Rice Pudding Mix),(3) Ras Malai Mix (Mix for Milk balls in Milk Syrup),(4)Gulab Jamun Mix (Mix for Milk balls in Sugar Syrup),(5)Kulfa Shahi Mix (Traditional Ice Cream Mix), (6)Kulfi Mix (Traditional Ice Cream Mix),(7) Gajar Halwa Mix (Carrots' Sweet Mix) ,(8)Custard Powder,(9)Jelly Crystals and other sweet mixes, (B) Spice Mixes namely (10)Qorma Masala (Mix for Meat and Yogurt Curry) , (11)Biryani Masala (Mix for Rice with Meat), (12)Tandoori Bar;B;Q Masala (Mix for oven baked / Grilled Meat), (13)Nehari Masala (Mix for Hot, Spicy Lamb/Beef in Sauce),(14)Sabzi / Bhujia Masala (Mix for Vegetarian Dishes), (C ) Plain/General Spices namely (15) Red Chilli Powder, (16) Coriander Powder,(17) Curry Powder and other Plain Spices (D) Basmati Rice and Vermicelli namely(18) Super Kernal Basmati Rice,(19) World's No;1 Basmati Rice and (20)Vermicellies (E) Lentils and Pulses namely (21)Chana Daal (Gram Lentils),(22) Moong Daal (Yellow Gram Lentils Whole),(23) Kabuli Chana (Chick peas) and other lentils and OTHER goods,” and “(A) Pickles in oil namely (1) Mango Pickle (2) Mixed Pickle (3) Chilli Pickle and other Pickles (B) Chutney and Pastes namely (4) Mango Chutney (5) Plum Chutney (6) Mint Chutney and other Chutneys; Cooking Paste namely (7) Curry Paste (8) Qorma Paste ( Paste for Meat and Yoghurt Curry (9) Biryani Paste (Paste for Rice with meat ) and other Pastes and OTHER goods.”  The goods provided by the registrant are some of the same kinds of goods provided by the applicant, particularly spices and basmati rice pulses.  Given the highly similar appearance of the wording in the marks, consumers are likely to believe that the goods emanate from a common source.

 

The registrant’s mark “LAZIZA” is identical in sound, appearance, connotation and commercial impression to the applicant’s mark “LAZIZA,” U.S. Registration No. 2877623.  The registrant’s mark is used with “frozen vegetables.”  The applicant is using its mark with “lentils,” among other things.  Lentils are commonly found among vegetables.  See attached entry from the THE ORIGINAL ROGET'S THESAURUS OF ENGLISH WORDS AND PHRASES (Americanized Version) is licensed from Longman Group UK Limited. Copyright © 1994 by Longman Group UK Limited.   The goods are goods that travel in the same channels of trade and are found in close proximity such that consumers would believe that the goods emanate from the same source.

 

Overall, the similarities among the marks and the goods are so great as to create a likelihood of confusion.  The examining attorney must resolve any doubt regarding a likelihood of confusion in favor of the prior registrant.  In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir., 1988).

INFORMALITIES

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.

 

Translation of Mark

 

The applicant will submit a translation of the non-English wording in the mark.  37 C.F.R. §2.61(b); TMEP §809.  The translation shall read as follows: 

 

The English translation of LAZIZA is [indicate the English translation].

 

General Inquiry on Significance

 

The applicant must indicate whether “LAZIZA” has any significance in the relevant trade, any geographical significance, surname significance, or any meaning in a foreign language.  37 C.F.R. §2.61(b).

 

Identification and Classification of Goods

 

The identification of goods is unacceptable as indefinite and the classification must be changed from that identified by the applicant. Chutneys are classified in IC 030, and Lentils in IC 029.  Pastes are classified in IC 029 and 030 depending on the primary ingredient.  Note that curry paste is in IC 030.  The applicant must indicate what the primary ingredient in the paste is and classify it accordingly.  The applicant must delete the numbering system.  The wording “and other pastes and other goods being included in IC 029” and “and other goods being included in IC 030” is indefinite and must be either deleted or replaced with the generic name for the goods.  The applicant has included the foreign names for goods with the English translation in parenthesis.  The applicant may include both as shown below, but may not use parenthesis.  Alternatively, the applicant may delete the foreign wording and use the generic common English words to describe the goods.  The wording “and other sweet mixes” that follows “jelly crystals” is not acceptable because the wording is indefinite.  The applicant must identify the goods by the generic name or delete the wording.  The punctuation in the wording “BarBQ” must be deleted and replaced with “barbecue.”  The use of “slashes” is not acceptable.  The applicant must identify both goods with use of the word “and.”  The wording “plain/general” and “and other plain spices” must be deleted as the wording is indefinite.  The wording “super kernel” and “world’s no.1” appear to be laudatory words and not the generic name for the goods and accordingly must be deleted.  Unless the applicant can show that the terms are generic terms for the goods, the goods should be described as “basmati rice.”  If the applicant’s “pulses” are processed edible seeds, the applicant must reflect this in the identification.  Pulses are classified according to whether or not they are processed and be further identified as to the use of the goods.  See “seeds” in the goods and services manual referenced below.  The wording “and other goods being included in Class 020” is indefinite and must be deleted or the goods listed by generic name.  Again, see the goods and services manual for acceptable language and classification of these goods.  TMEP §1402.01.  The applicant may adopt the following identification, if accurate: 

 

Pickles in oil namely, mango pickle, mixed pickle, chili pickle and other pickles; lentils and pulses being edible seeds, namely, chana daal being gram lentils, moong daal being whole yellow gram lentils, kabuli chana being chick peas, and other lentils, in IC 029.

 

 

029	Anchovy http://atlas/netacgi/ - h22http://atlas/netacgi/ - h24paste	A	02 Apr 91	G	N
24	029	Artichoke http://atlas/netacgi/ - h23http://atlas/netacgi/ - h25paste	A	02 Apr 91	G	N
25	029	Fruit http://atlas/netacgi/ - h24http://atlas/netacgi/ - h26paste	A	02 Apr 91	G	N
26	029	Guava http://atlas/netacgi/ - h25http://atlas/netacgi/ - h27paste	A	02 Apr 91	G	N
27	029	Hummus [chick pea http://atlas/netacgi/ - h26http://atlas/netacgi/ - h28paste]	A	12 Apr 99	G	N
28	029	Liver http://atlas/netacgi/ - h27http://atlas/netacgi/ - h29paste	A	02 Apr 91	G	N
29	029	Meat http://atlas/netacgi/ - h28http://atlas/netacgi/ - h30paste	A	02 Apr 91	G	N
30	029	Olive http://atlas/netacgi/ - h29http://atlas/netacgi/ - h31pastes	A	20 Jul 04	G	N	T
31	029	Soup http://atlas/netacgi/ - h30http://atlas/netacgi/ - h32pastes	A	20 Jul 04	G	N	T
32	029	Steamed or toasted cakes of fish http://atlas/netacgi/ - h31http://atlas/netacgi/ - h33paste [kamaboko]	A	20 Jul 04	G	N	T
33	029	Tomato http://atlas/netacgi/ - h32http://atlas/netacgi/ - h34paste	A	02 Apr 91	G	N
34	029	Tube-shaped toasted cakes of fish http://atlas/netacgi/ - h33http://atlas/netacgi/ - h35paste [chikuwa]	A	20 Jul 04	G	N	T
35	029	Vegetable http://atlas/netacgi/ - h34http://atlas/netacgi/ - h36paste	A	02 Apr 91	G	N
36	030	Alimentary http://atlas/netacgi/ - h35http://atlas/netacgi/ - h37paste	A	02 Apr 91	G	N
37	030	Almond http://atlas/netacgi/ - h36http://atlas/netacgi/ - h38paste	A	02 Apr 91	G	N
38	030	Almond http://atlas/netacgi/ - h37http://atlas/netacgi/ - h39paste	A	20 Jul 04	G	N	T
39	030	Bean http://atlas/netacgi/ - h38http://atlas/netacgi/ - h40paste	A	01 Jun 01	G	N
40	030	Chocolate http://atlas/netacgi/ - h39http://atlas/netacgi/ - h41pastes	A	20 Jul 04	G	N	T
41	030	Curry http://atlas/netacgi/ - h40http://atlas/netacgi/ - h42pastes	A	20 Jul 04	G	N	T
42	030	Farinaceous food http://atlas/netacgi/ - h41http://atlas/netacgi/ - h43pastes for human consumption	A	20 Jul 04	G	N	T
43	030	Fruit http://atlas/netacgi/ - h42http://atlas/netacgi/ - h44paste for flavouring of food

 

 

Chutney and pastes namely, mango chutney, plum chutney, mint chutney and other chutneys; cooking pastes, namely curry paste, biryani paste, namely a spice paste for use with rice with meat, qorma paste featuring [indicate primary ingredient which will determine the class, e.g., ginger and garlic] for use with meat and yoghurt curries; sweet dessert mixes namely, kheer mix namely rice pudding mix, firni khas being traditional rice pudding mix, ras malai mix being mix for milk balls in milk syrup, gulab jamun mix being mix for milk balls in sugar syrup, kulfa shahi mix being traditional ice cream mix, kulfi mix being traditional ice cream mix, gajar halwa mix being carrots' sweet mix, custard powder, jelly crystals;  spice mixes namely qorma masala being a spice mix for use with meat and yogurt curry, biryani masala being a spice mix for use with rice with meat, tandoori barbeque masala being a spice mix for oven baked and grilled meat, nehari masala being a spice mix for use in making a hot spicy sauce for lamb or beef, sabzi masala and bhujia masala  being spice mixes for vegetarian dishes, spices namely red chili powder, coriander powder, and curry powder; basmati rice and vermicelli, in IC 030.

 

 

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 goods that are not within the scope of goods set forth in the present identification.

 

For additional information regarding acceptable identifications, the Trademark Manual of Acceptable Identifications and Classifications for Goods and Services is accessible on the world wide web at http://tess2.gov.uspto.report/netahtml/tidm.html.

 

 

Substitute Drawing Required

 

The applicant shows its mark with lining to indicate color. The Office no longer accepts black and white drawings with color lining and/or a color claim.  37 C.F.R. §2.52(b)(1).  Applicant must submit (1) a new drawing that shows the mark in color. 

 

Color Claim Statement

 

The applicant must also submit a the following statement:

 

The colors red, green, and gold are claimed as a feature of the mark

 

Description of Color Placement

 

The applicant must also enter a description of where the colors appear in the mark.  The examiner recommends the following:

 

The color green appears in the main building structure of the hut with a red roof, and with a gold leaves on the hut.  The lettering is shown in reverse text with no claim to color in the wording.

 

 

Disclaimer

 

The applicant must disclaim the descriptive wording “INTERNATIONAL” apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).  The wording is merely descriptive of a feature of the goods, e.g., that they are provided internationally.

 

A properly worded disclaimer should read as follows:

 

No claim is made to the exclusive right to use INTERNATIONAL apart from the mark as shown.

 

International  adjective

 

1.    Of, relating to, or involving two or more nations: an international commission; international affairs.

2.       Extending across or transcending national boundaries: international fame.[1]

 

Date the Application was Signed

 

There is no legible date that the application was signed.  (There is a stamp; however, if the stamp contains a date, the date is not legible.)  The applicant must provide the date that the application was signed that is before or the same date as the filing date of March 31, 2004.

 

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.

 

No set form is required for response to this Office action.  The applicant must respond to each point raised.  The applicant should simply set forth the required changes or statements and request that the Office enter them.  The applicant must sign the response.  In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

APPLICANT OR ATTORNEY CAN RESPOND TO REFUSAL:

 

Applicant may respond directly to this refusal Office action, or applicant’s attorney may respond on applicant’s behalf. 

 

NOTE:  Attorneys hired to represent an applicant in a trademark matter before the Office must be eligible under 37 C.F.R. §10.14:

 

(1)     Attorneys residing in the United States who are in good standing with the bar of any United States court or the highest court of any state, may practice before the Office in trademark matters.

(2)     A foreign attorney not residing in the United States who is in good standing before the patent or trademark office of the country in which he or she resides, may practice before the Office in trademark matters only in cases where the patent and trademark office of that foreign country allows substantially reciprocal privileges to those permitted to practice before the Office.  Currently, Canadian attorneys are the only foreign attorneys recognized as meeting this criterion.  A foreign attorney who meets the requirements of 37 C.F.R. §10.14(c) can only represent parties located in the country in which the foreign attorney resides and practices.  TMEP §602.

 

The Office cannot aid in the selection of an attorney.  37 C.F.R. §2.11.

 

 

 

NOTICE:  TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER 2004

 

The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004.  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, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.

 

To reach the undersigned attorney by telephone after November 1, 2004, please call (571) 272 - 9327.  Thank you.

 

 

/Linda A. Powell/

Trademark Examining Attorney

Law Office 106

(703) 308-9106 ext. 259

(703) 746-8106 fax

 

 

How to respond to this Office Action:

 

You may respond formally using the Office's Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://eteas.gov.uspto.report/V2.0/oa242/WIZARD.htm and follow the instructions therein, but you must wait until at least 72 hours after receipt if the office action issued via e-mail).  PLEASE NOTE: Responses to Office Actions on applications filed under the Madrid Protocol (Section 66(a)) CANNOT currently be filed via TEAS.

 

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.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.