Offc Action Outgoing

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. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  76/653988

 

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

 

Statutory Refusal- Confusingly Similar Mark

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because applicant’s mark, when used on or in connection with the identified goods, so resembles the mark in U.S. Registration No. 1585919 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 at least 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).

 

1.  Comparison of the Trademarks

Applicant seeks to register GOLDEN NUGGETS (standard characters), while the registrant owns and uses the mark GOLDEN NUGGETS (typed).

 

The marks are identical.

 

If the marks of the respective parties are identical or highly similar, the examining attorney must consider the commercial relationship between the goods or services of the respective parties carefully to determine whether there is a likelihood of confusion.  In re Concordia International Forwarding Corp., 222 USPQ 355 (TTAB 1983).

 

2.   Relatedness of the Goods

The greater the degree of similarity in the marks, the lesser degree of similarity that is required of the products or services on which they are being used in order to support a holding of likelihood of confusion.  If the marks are the same or almost so, it is only necessary that there be a viable relationship between the goods or services in order to support a holding of likelihood confusion.  In re Concordia International Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983).

 

Here, applicant seeks to register its mark for “deep-fried dough balls,” while the registrant uses its mark on “frozen potato product, namely formed potatoes for the oven or for frying.”  The goods of the registrant may also be fried and consumers are likely to think that the Registrant now makes a dough version as well.  In sum, given the related nature of the goods and the fact that the marks are identical, there is no doubt that consumers encountering both trademarks will assume that the goods come from the same source.

 

Opportunity to Respond

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 to register, the applicant must also respond to the following requirement.

 

Requirement

 

Disclaimer

Applicant must disclaim “NUGGETS” apart from the mark as shown because the word is merely descriptive of a feature of the goods.  As can be seen from the specimen submitted, applicant’s goods are small rounded pieces of food.  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a). 

 

NUGGETS:

3 : a small usually rounded piece of food <chicken nuggets> See

 

A properly worded disclaimer should read as follows:

 

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

 

 

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

 

 

 

 

/Tricia Sonneborn/

Trademark Examining Attorney

Law Office 110

phone (571) 272-9225

fax (571) 273-9110

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• 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.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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.