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 76/637644

 

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

 

Search Results

 

Information regarding pending Application Serial Nos. 78/399390, 76/631719, 76/628758, 76/548912, and 76/443363 is enclosed.  The filing dates of the referenced applications precede applicant’s filing date.  There may be a likelihood of confusion under Trademark Act Section 2(d) between applicant’s mark and the referenced marks.  If one or more of the referenced applications registers, registration may be refused in this case under Section 2(d).  37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon entry of a response to this Office action, action on this case may be suspended pending final disposition of the earlier-filed applications.

 

If applicant believes that there is no potential conflict between this application and the earlier-filed applications, then applicant may present arguments relevant to the issue in a response to this Office action.  The election not to submit arguments at this time in no way limits applicant’s right to address this issue at a later point.

Action on this application will be suspended pending the disposition of the above-referenced applications, upon receipt of the applicant's response resolving the following refusals and informalities.

 

Section 2(d) - Likelihood of Confusion Refusal

 

Registration of the proposed mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2731077 and 2679542.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq.  See the enclosed registrations.

 

In the analysis for likelihood of confusion, the marks are compared for similarities in sound, appearance, meaning or connotation.  In re E .I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).  Similarity in any one of these elements may be sufficient to find a likelihood of confusion.  In re White Swan Ltd., 8 USPQ2d 1534, 1536 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); In re Mack, 197 USPQ 755 (TTAB 1977); TMEP §1207.01(b). Applicant seeks to register the word AROMA.  Applicant’s mark is identical to the mark shown in U.S. Reg. No. 2679542 (AROMA) and is virtually identical to the mark shown in U.S. Reg. No. 2731077 (AROMA [stylized]).   Given the identical or virtually identical appearance of the marks, there is a likelihood of confusion. 

 

When the marks are identical or highly similar, the next step in determining whether there is a likelihood of confusion is reviewing the goods and/or services of the parties as described in their respective applications and registrations.  Please note that the goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion.  Instead, they need only be related in some manner, or the conditions surrounding their marketing are such that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods and/or services come from a common source.  On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Prods. Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re Int’l Tel. & Tel. Corp., 197 USPQ 910 (TTAB 1978); TMEP §1207.01(a)(i).

 

Applicant’s services are defined as “retail store [and related] services … in the field of home and kitchenware appliances.”  Registrant’s goods are defined as various electric cooking utensils and devices such as pasta makers, bread makers, waffle makers, rice cookers and the like.  Applicant could very well sell registrant’s products in connection with his retail and related services.  These circumstances could give rise to the mistaken belief that the goods and/or services come from a common source. 

 

Moreover, when the marks of the respective parties are identical, the relationship between the goods or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks.  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 Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981); TMEP §1207.01(a).

 

For these reasons, registration is refused under Section 2(d) of the Trademark Act.  Any doubt regarding a likelihood of confusion is resolved in favor of the prior registrant.  Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988); TMEP §§1207.01(d)(i).

 

Assignment Issue related to Section 2(d) Refusal:

 

The Examining Attorney notes that applicant in the present application may be the same person (or entity) as the named registrant.  There are two possible options to overcome the Section 2(d) refusal: 

 

If applicant in this application, namely, Chung-Yuan Chang, is the same person as Peter Chung-Yuan Chang, applicant must state this in the response to this office and claim ownership of the prior registrations. 

 

If the marks in the cited registrations have been assigned to applicant, then applicant must prove ownership of those marks.  TMEP §812.01.  Applicant may record the assignment with the Assignment Services Division of the Office.  Trademark Act Section 10, 15 U.S.C. §1060; 37 C.F.R. §3.25; TMEP §§503 et seq.  Applicant should then notify the trademark examining attorney when the assignment has been recorded.

 

In the alternative, applicant may submit evidence of the assignment of the marks to the applicant, such as: (1) documents evidencing the chain of title; or (2) an explanation of the chain of title (specifying each party in the chain, the nature of each conveyance, and the relevant dates), supported by an affidavit or signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §3.73; TMEP §502.02(a).

 

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 applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the following requirement(s).

 

Dates of Use of the Mark

 

The application sets forth two sets of dates of first use, one for the mark applied for and one for the use of the mark in another form.  The date of first use anywhere for the mark in another form specified in the application is April 25, 1994.  That date is after November 25, 1986, which was set forth as the date of first use in commerce.  It is not possible for the date of first use anywhere to be later than the date of first use in commerce, because use in commerce by definition includes use anywhere.  TMEP §903.04.

 

The Examining Attorney believes that applicant may have misunderstood the form and attempted to place the date of the original registration, which was April 25, 1995. 

 

Requirements:

 

Applicant must amend the dates of use for the use of the mark in another form to specify a date of first use anywhere that is not later than the date of first use in commerce.  Applicant must verify this corrected date of first use anywhere with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.71(c); TMEP §903.05.

 

If the date of first use of the mark in another form is November 25, 1986, then the dates of first use of the mark in this application may be later than that date.  Applicant must clarify whether the dates of first use (anywhere and in commerce) are the same as shown in the application.  If applicant needs to amend the dates of first use anywhere and in commerce for the mark shown in this application, then the applicant must verify this corrected date of first use anywhere with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.71(c); TMEP §903.05.

 

The following is a sample declaration for applicant’s convenience: 

 

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any resulting registration, declares that the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

_____________________________

(Signature)

_____________________________

(Print or Type Name and Position)

_____________________________

(Date)

 

Claim of Ownership

 

If applicant is the owner of U.S. Registration Nos. 2731077 and 2679542, then applicant must submit a claim of ownership.  37 C.F.R. §2.36; TMEP §812.  The following standard format is suggested:

 

Applicant is the owner of U.S. Registration Nos. 2731077 and 2679542.

 

Please note that applicant’s claim of ownership of U.S. Registration No. 1890984 will not be printed on any registration that may issue from this application because Office records show that the claimed registration is cancelled.  Only claims of ownership of live registrations are printed.  37 C.F.R. §2.36; TMEP §812.

 

Identification of Goods

 

The wording “electrical cooking appliances for use in …” in the identification of goods needs clarification because the type of appliance must be specified.  Applicant may change this wording to the following, if accurate.  TMEP §1402.01.

 

Electrical cooking appliances for use in cooking, steaming, stewing, warming and stir frying, namely, [specify common commercial name for appliances, e.g., food steamers, rice steamers, vegetable steamers, woks, deep fat fryers, food warmers, pressure cookers, slow cookers, bread cookers, and the like] (International Class 11). 

 

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

Section 2(f) and Section 2(f) in Part

 

Applicant may delete the claim of acquired distinctiveness based on Section 2(f) of the Trademark Act (and Section 2(f), which was checked on the application form).  The Examining Attorney finds that the mark is inherently distinctive of applicant’s goods and services and that the Section 2(f) claim is not necessary. 

 

If the applicant has any questions concerning this Office action, please telephone the assigned examining attorney.

 

/ELIZABETH J. WINTER/

Trademark Attorney-Advisor

USPTO, Law Office 113

(571) 272-9240

FAX Questions (571) 273-9240

FAX Responses (571) 273-9113

 

 

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