Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 77003503 has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

I.  Identification of Goods

Applicant hereby amends the listing of goods in Class 30 as follows:

Class 30: Coffee, tea, cocoa, sugar, tapioca, sago, coffee substitutes; flavored ices; sandwiches; honey, treacle; yeast, baking-powder; salt, mustard; pepper, vinegar, sauces, spices; ice

II.  Section 2(d) – Likelihood of Confusion

A.  Registration No. 1,918,205 for COSTA by Empresas Carozzi

Prior Reg. No. 1,918,205 for COSTA covers "crackers, biscuits and cookies" in Class 30. Applicant asserts that its above-referenced amended description of goods in Class 30 does not contain goods that are related to registrant’s cracker, biscuit, or cookie products. As such, there would be no likelihood of confusion between the respective marks. Accordingly, applicant respectfully requests that the Examiner withdraw the citation of this prior registration against applicant’s COSTA application.

B.  Registration No. 1,515,100 for COSTA by Empresas Carozzi

Prior Reg. No. 1,515,100 for COSTA covers "chocolates, biscuits, and chocolate candies" in Class 30. Applicant asserts that its above-referenced amended description of goods in Class 30 does not contain goods that are related to registrant’s chocolate or biscuit products. As such, there would be no likelihood of confusion between the respective marks. Accordingly, applicant respectfully requests that the Examiner withdraw the citation of this prior registration against applicant’s COSTA application.

C.  Registration No. 1,274,496 for COSTA by Pasta Montana and Registration No. 3,236,603 (formerly prior pending Application No. 78/833,932)

Prior Reg. No. 1,274,496 for COSTA covers "macaroni products" in Class 30. Prior Reg. No. 3,236,603 (formerly prior pending Application No. 78/833,932) covers "pasta" in Class 30. Applicant asserts that its above-referenced amended description of goods in Class 30 does not contain goods that are related to registrant’s macaroni/pasta products. As such, there would be no likelihood of confusion between the respective marks. Accordingly, applicant respectfully requests that the Examiner withdraw the citation of these prior registrations against applicant’s COSTA application.

D.  Registration No. 1,357,371 for KOSTA’S by George D. Bikas

1. There are Substantial Differences in Appearance

Applicant’s COSTA mark and Registrant’s KOSTA’S mark are sufficiently different in appearance. It is well established that the basic principle in determining the issue of the likelihood of confusion is that the marks must be compared in their entireties and must be considered in connection with the goods and services for which they are used. In re National Data Corp., 224 U.S.P.Q. 749, 750 (Fed. Cir 1985). Applicant notes that the Federal Circuit’s decision in B.V.D. Licensing. v. Body Action Design, 6 USPQ2d 1719, 1721 (Fed. Cir. 1988) correctly noted that "[Opposer’s] BVD or B.V.D. has arguable similarities to [Applicant’s] B·A·D that are too obvious for discussion." Nevertheless, the Court affirmed the TTAB’s dismissal of the opposition and found that consumers would recognize the subtle differences between the marks at issue in the case, both of which were for use on undergarments, such that confusion was unlikely. Despite any alleged similarities between Applicant’s COSTA mark and the prior registration for KOSTA’S, the differences are greater and much more obvious than those in the B.V.D. case because Applicant has not merely replaced one single letter in Registrant’s KOSTA’S mark. Rather, the respective marks begin with different letters, i.e., Applicant’s mark begins with the letter "C" and Registrant’s mark begins with the letter "K." This difference immediately catches the eye of the potential buyer and it is obvious that marks are different. In addition, Registrant’s mark includes the additional "’S" element, which is entirely absent from Applicant’s COSTA mark. Applicant asserts that such obvious differences between the respective marks obviate any likelihood of confusion between the marks.

The absence of any likelihood of confusion in this case is further supported by past decisions of the Federal Circuit, the Court of Customs and Patent Appeals (CCPA), and the Board, in which no confusion was found between marks that are arguably much closer in terms of sight, sound, appearance, and overall meaning than the marks at issue here. See Champagne Louis Roederer S.A. v. Delicato Vineyards, 47 USPQ2d 1459 (Fed. Cir. 1998) (CRYSTAL CREEK; CRISTAL); Coretex Corp. v. W.C. Gore & Associates, Inc., 28 USPQ2d 1152 (Fed. Cir. 1993) (CORETEX; GORE TEX); Ralston Purina Co. v. On Cor Frozen Foods, Inc., 223 USPQ 979 (Fed. Cir. 1984) (ENCOR; ON-COR); National Distillers & Chemical Corp. V. William Grant & Sons, Inc., 184 USPQ 34 (CCPA 1974) (DUVET; DUET); In re General Electric Co., 134 USPQ 190 (CCPA 1962) (VULCAN; VULKENE); In re Digirad Corp., 45 USPQ2d 1841 (TTAB 1998) (DIGIRAD; DIGIRAY); In re Reach Electronics, Inc., 175 U.S.P.Q. 734 (TTAB 1972) (REAC; REACH); Plough, Inc. v. Kreis Laboratories, 314 F.2d 635, 136 U.S.P.Q. 560 (9th Cir. 1963) (COPA TAN; COCA TAN); See also Upjohn Co. v. Schwartz, 114 USPQ 53 (2nd Cir. 1957) (‘[T]he two words [SYROCOL; CHERACOL] do not look alike or sound enough alike [to be confusingly similar].")

Confronted with the marks in their entireties, consumers are left with distinct images. Applicant’s COSTA mark and the cited registration differ in appearance. As a result, Applicant’s Mark creates a distinct commercial impression separate and apart from the cited registration, such that confusion is unlikely.

2. There are Substantial Differences in Connotation

The respective marks are also sufficiently different in connotation. Applicant’s COSTA mark is a declarative mark that simply declares the product name "COSTA." In contrast, Registrant’s KOSTA’S mark has an entirely different connotation because the "’S" element of the mark places it in the possessive tense. This difference in connotation creates entirely distinct commercial impressions in relation to the respective marks. Specifically, the possessive nature of registrant’s KOSTA’S mark creates the immediate impression that registrant’s products are owned by a person or entity known as "KOSTA." However, such a commercial impression does not immediately exist in relation to applicant’s mark because the mark is COSTA, rather than "COSTA’S." Consumers would undoubtedly notice this difference in connotation. Therefore, there would be no likelihood of confusion between the respective marks. As such, Applicant respectfully requests that the Examiner’s refusal to register Applicant’s COSTA mark under Section 2(d) be withdrawn.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 030 for Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes; flour and preparations made from cereals; bread, biscuits, cakes, pastry and confectionery; ices; prepared meals, sandwiches; honey, treacle; yeast, baking-powder; salt, mustard; pepper, vinegar, sauces, spices; ice
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [ United Kingdom registration number 2113264A registered 05/22/1998 with a renewal date of __________ and an expiration date of 10/17/2006 ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.

Proposed: Class 030 for Coffee, tea, cocoa, sugar, tapioca, sago, coffee substitutes; flavored ices; sandwiches; honey, treacle; yeast, baking-powder; salt, mustard; pepper, vinegar, sauces, spices; ice
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and will submit a copy of [ United Kingdom registration number 2113264A registered 05/22/1998 with a renewal date of __________ and an expiration date of 10/17/2006 ], and translation thereof, if appropriate, before the application may proceed to registration. 15 U.S.C. Section 1126(e), as amended.

ADDITIONAL STATEMENTS
Translation
"The foreign wording in the mark translates into English as coast."

Applicant is in the process of obtaining a copy of the foreign registration in order to satisfy the requirement under Section 44(e) and will submit a copy of the foreign registration as soon as possible.

SIGNATURE(S)
Response Signature
Signature: /OGRP-CNR-TJM-JMM/     Date: 08/08/2007
Signatory's Name: Terrence J. McAllister
Signatory's Position: Attorney for Applicant

The signatory has confirmed that he/she is either (1) an attorney who is a member in good standing of the bar of the highest court of a U.S. state; or (2) a Canadian attorney/agent who has been granted reciprocal recognition under 37 C.F.R. §10.14(c) by the USPTO's Office of Enrollment and Discipline. He/she further confirms that (1) the applicant has not previously been represented in this matter by an authorized attorney; and (2) he/she is the applicant's attorney or an associate of that attorney.

        
Serial Number: 77003503
Internet Transmission Date: Wed Aug 08 11:59:37 EDT 2007
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2007080811593799
8779-77003503-3807774a697ac2b3b7997cbed1
41c0cbe-N/A-N/A-20070808100303730470