UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/629744

 

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. Section 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. 1440911 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 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).

 

In this case, Applicant seeks to register the mark SOMBRERO for use in connection with restaurant services.  The registrant of the mark SOMBRERO ROSA uses their mark in connection with restaurant services. 

 

The dominant portion of the registrant’s mark is identical to the Applicant’s mark.  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 (CCPA 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1988).  The Trademark Trial and Appeal Board has held that the first word, prefix, or syllable in a mark is typically the dominant portion.  Presto Products v. Nice-Pak Products, Inc. 9 USPQ2d 1895 9TTAB 1988). 

 

Moreover, the services (restaurant services) are identical.  If the goods or services of the respective parties are closely related, the degree of similarity between marks required to support a finding of likelihood of confusion is not as great as would apply with diverse goods or services.  Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert. denied 506 U.S. 1034 (1992); In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987); ECI Division of E-Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443 (TTAB 1980); TMEP §1207.01(b).

 

As a result, the examining attorney concludes that the services are sufficiently related that they may be encountered by the same prospective purchasers in the same channels of trade under circumstances such that there is a likelihood of confusion, mistake, or deception as to their source due to the similarity of the marks.

 

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.

 

Applicant should note the following additional ground for refusal. 

 

Failure To Function As A Service 

 

The examining attorney refuses registration because the proposed mark does not function as a service mark.  Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051, 1052, 1053 and 1127.  It neither identifies and distinguishes the services of the applicant from those of others nor indicates their source.  In re Moody’s Investors Service Inc., 13 USPQ2d 2043 (TTAB 1989); In re Signal Companies, Inc., 228 USPQ 956 (TTAB 1986); In re Hughes Aircraft Co., 222 USPQ 263 (TTAB 1984); TMEP §§1301.02 et seq.

 

The specimen of record, along with any other relevant evidence submitted with the application, is reviewed and analyzed in order to determine whether a term is being properly used as a service mark.  In re Volvo Cars of North America, 46 USPQ2d 1455 (TTAB 1998); In re Morganroth, 208 USPQ 284 (TTAB 1980).  Not all words, designs, symbols or slogans used in the sale or advertising of goods or services function as marks, even though they may have been adopted with the intent to do so.  A designation cannot be registered unless ordinary purchasers would be likely to regard it as an indicator of origin for the services identified in the application.  In re Moody’s Investors Service Inc., 13 USPQ2d 2043 (TTAB 1989); TMEP §§1301.02 et seq.

 

A term that serves only to identify a menu item does not function as a service mark for restaurant services.  In re El Torito Restaurant Inc., 9 USPQ2d 2002 (TTAB 1988); TMEP §1301.02(a).

 

The term SOMBRERO appears on the specimen below the term APPETIZERS (see below).

 

 

In this case, the term SOMBRERO is nothing more than a menu item.  As such, it does not function as a service mark for “restaurant services.”  Registration is refused.

 

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.

 

Recitation of Services 

 

The wording in the recitation of services is unacceptable as indefinite.  The applicant may amend this wording to “restaurant services featuring menu items consisting primarily of tortilla, beans, sour cream, guacamole, cheese and other items in International Class 043,” if accurate.  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.

 

Translation 

 

Applicant must submit an English translation of all foreign wording in the mark.  37 C.F.R. §2.61(b); TMEP §809.  In the present case, the wording “SOMBRERO” needs translating for the record.  The following translation statement is suggested:  “The English translation of the word SOMBRERO in the mark is hat.”

 

Response Guidelines

 

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.

 

 

 

/Toni Y. Hickey/

Trademark Examining Attorney

Law Office 115

(571) 272-9475 phone

(571) 273-9115 fax

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

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.