UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
APPLICATION SERIAL NO. 76709048
MARK: MBM
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Cedar Barista USA, LLC
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Refusal-Likelihood of Confusion
In this case, the following factors are the most relevant: similarity of the marks, similarity of the goods, and similarity of trade channels of the goods. See In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); TMEP §§1207.01 et seq.
The registered mark is BM MECHAALANY and design. The proposed mark is MBM and design. The marks of the parties are similar in commercial impression as result of the letters “BM,” which are part of the marks.
When comparing marks that consist of a series of two or more letters, confusion may be likely even if the letters are not identical or in the same order. It is more difficult to remember a series of arbitrarily arranged letters than to remember words or figures; that is, confusion is more likely between arbitrarily arranged letters than between other types of marks. See, e.g., Weiss Assoc. v. HRL Assoc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (finding confusion between TMS and TMM); Dere v. Inst. for Scientific Info., Inc., 420 F.2d 1068, 164 USPQ 347 (C.C.P.A. 1970) (finding confusion between ISI and I.A.I.); cf. In re Infinity Broad. Corp. of Dallas, 60 USPQ2d 1214 (TTAB 2001) (finding confusion between registrant’s KING FM and KING-TV and applicant’s KYNG).
This principle was set forth in Crystal Corp. v. Manhattan Chem. Mfg. Co., 75 F.2d 506, 506, 25 USPQ 5, 6 (C.C.P.A. 1935), wherein the Court of Customs and Patent Appeals applied the following reasoning in holding Z.B.T. likely to be confused with T.Z.L.B. for talcum powder: “We think it is well known that it is more difficult to remember a series of arbitrarily arranged letters than it is to remember figures, syllables, words or phrases. The difficulty of remembering such lettered marks makes confusion between such marks, when similar, more likely.”
Even lettered marks having only two letters in common, used on identical or closely related goods, have been held likely to cause confusion. See, e.g., Feed Serv. Corp. v. FS Servs., Inc., 432 F.2d 478, 167 USPQ 407 (C.C.P.A. 1970) (finding confusion between FSC and FS); Cluett, Peabody & Co. v. J.H. Bonck Co., 390 F.2d 754, 156 USPQ 401 (C.C.P.A. 1968) (finding confusion between TTM and T.M.T.); Edison Bros. Stores, Inc. v. Brutting E.B. Sport-Int’l GmbH, 230 USPQ 530 (TTAB 1986) (finding confusion between EB and EBS); see also TMEP §1207.01(b)(ii)-(iii).
In this case, the parties identify the following goods as identical products: “jams.” Thus, these are identical, and it is presumed that they move in all normal channels of trade and are available to all potential customers. See Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1356, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re La Peregrina Ltd., 86 USPQ2d 1645, 1646 (TTAB 2008); TMEP §1207.01(a)(iii).
Accordingly, the goods are considered related for purposes of the likelihood of confusion analysis.
Registrant also identifies the following food products: “Compotes; Edible fats; Edible oil; Eggs; Fish; Game; Jellies; Meat; Meat extract; Milk; Milk products excluding ice cream, ice milk and frozen yogurt; Poultry; Vegetables, namely, preserved, dried, and processed vegetables; preserved, dried, and processed fruits.”
Applicant also identifies: “Food products, namely, pickled Items: cucumber, turnips, hot peppers, wild cucumbers, eggplant pickles (Mackdouce), Olive oil, Olives (black and green), Jams (Apricot, Strawberries, Figs), Rose Water and Orange Blossom Water, Pomegranate Molasses.”
Prior Pending Application
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Informalities
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration. Applicant must respond to the requirement(s) set forth below.
Multi-Class Application
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fee(s) already paid, or (2) submit the fees for the additional class(es).
Identification of Goods
Therefore, applicant must remove the parentheses from the identification of goods and incorporate the parenthetical information into the description.
Applicant may adopt the following identification, if accurate:
TMEP §1402.01.
Requirements of a Combined Application Under Section 1(b)
(1) LIST GOODS AND/OR SERVICES BY INTERNATIONAL CLASS: Applicant must list the goods and/or services by international class.
(2) PROVIDE FEES FOR ALL INTERNATIONAL CLASSES: Applicant must submit an application filing fee for each international class of goods and/or services not covered by the fee(s) already paid (confirm current fee information at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
The filing fees for adding classes to an application are as follows:
(1) $325 per class, when the fees are submitted with an electronic response filed online at http://www.gov.uspto.report/teas/index.html, via the Trademark Electronic Application System (TEAS); or
(2) $375 per class, when the fees are submitted with a paper response.
37 C.F.R. §2.6(a)(1)(i)-(a)(1)(ii); TMEP §§810, 1403.02(c).
Color Claim and Color Location Description Needed
If black, white and/or gray are not being claimed as a color feature of the mark, applicant must state that the colors black, white and/or gray represent background, outlining, shading and/or transparent areas and are not part of the mark. TMEP §807.07(d). Generic color names must be used in the color claim and mark description, e.g., magenta, yellow, turquoise. TMEP §807.07(a)(i)-(a)(ii).
Therefore, applicant must provide a color claim and a mark description specifying where all the colors appear in the mark. The following color claim and mark description are suggested, if accurate:
Color claim: “The colors blue, yellow and green <specify> are claimed as a feature of the mark.”; and
Mark description: “The mark consists of the following: a landscape composed of a field composed of blue and white horizontal lines and featuring three green rows vertically crossing over as well as the letters MBM in yellow above against a light blue sky and all of the elements of the mark surrounded by a circle border <specify literal or design element on which the color appears, and continue to similarly list each element and the associated colors for each element in the mark, e.g., a red and blue bird on a green mountain>.”
Entity and State of Incorporation
If applicant’s entity type is an individual, applicant must indicate his or her national citizenship for the record. 37 C.F.R. §2.32(a)(3)(i); TMEP §803.04.
If applicant’s entity type is a corporation, association, partnership, joint venture, or the foreign equivalent, applicant must set forth the U.S. state or foreign country under whose laws applicant is organized or incorporated. 37 C.F.R. §2.32(a)(3)(ii); TMEP §§803.03(b)-(c), 803.04. In addition, if applicant is a U.S. partnership or joint venture, applicant must list the names, legal entities and national citizenship or the U.S. state or foreign country of organization or incorporation of all the general partners or joint venturers. 37 C.F.R. §2.32(a)(3)(ii)-(iv); TMEP §§803.03(b), 803.04. For an association, applicant must also specify whether the association is incorporated or unincorporated. TMEP §803.03(c).
Claim of Ownership of Prior Pending Application Will Not be Printed
Conclusion
/Linda M. Estrada/
Trademark Attorney, Law Office 104
(571) 272-9298
(571) 273-9104 Fax
Linda.Estrada@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.