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. 77039182 has been amended as follows:

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

Sir or Madam:

 

In response to the Office Action emailed March 22, 2007, Applicant submits the following amendment and remarks in support of registration of Applicant’s (URDU) INTERNATIONAL (and Design) mark.

 

I.          IDENTIFICATION OF SERVICES

 

The Examining Attorney has indicated that the identification of goods is unacceptable as indefinite.  Accordingly, Applicant has amended the identification of goods, and the application should now recite the following:

 

“Aerated water; mineral water; syrups and other preparations for making beverages, namely, red syrups of herbs and flowers, sardai/thandai syrups, and fruit, flower, and herb extracts.”

 

II.        TRANSLITERATION AND TRANSLATION

 

The Examining Attorney has indicated that the translation of the foreign characters is unacceptable.  Applicant directs the Examining Attorney to Applicant’s U.S. Registration No. 3190831, which contains the same translation statement.

 

The non-Latin characters in the mark transliterate to “LAZIZA,” a coined term which has no identified meaning in English.

 

III.       CLAIM OF PRIOR REGISTRATIONS

 

Applicant has submitted herewith through the USPTO TEAS system a claim of ownership to U.S. Registration Nos. 3190830 and 3190831.

 

IV.       LIKELIHOOD OF CONFUSION

 

Registration of Applicant’s (URDU) INTERNATIONAL (and Design) mark has been preliminary refused based upon U.S. Registration No. 2858232 for the mark LAZIZA, registered in association with “beer, non-alcoholic beer and non-alcoholic malt beverages” in international class 32.

 

In determining whether there is a likelihood of confusion with a previously issued registration, the Examining Attorney must (1) look at the marks themselves for similarities in terms of appearance, sound, connotation, and commercial impression and (2) compare the goods and/or services to determine if they are related or the activities surrounding their marketing are such that confusion is likely.  In re August Stork KG, 218 USPQ 823 (TTAB 1983); In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978); Guardian Products Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978).

 

Applicant's (URDU) INTERNATIONAL (and Design) mark and the cited registration will now be considered based upon sight, sound, and meaning, and by the goods identified in the registrations. 

 

A.        Differences in the Marks Per Se

 

1.         Sight

 

The visual appearance of the marks is very different.  Although the Examining Attorney has discounted the significant design element of Applicant’s mark and the word INTERNATIONAL in Applicant’s mark, the marks must be viewed in their entirety and no element may be ignored or eliminated from the assessment.  In re National Data Corp., 224 USPQ 749, 750 (Fed. Cir. 1985); Dan Robbins & Assoc., Inc. v. Questor Corp., 202 USPQ 100 (C.C.P.A. 1979). 

 

The Examining Attorney’s analysis seems to suggest that a likelihood of confusion is automatically assumed where the Applicant's mark incorporates or includes within it the cited mark.  However, numerous Board and court decisions have found no likelihood of confusion notwithstanding that one registered mark is totally incorporated within another.  See, e.g., Melaro v. Pfizer Inc., 214 USPQ 645 (TTAB 1982) (finding no likelihood of confusion between POLYSILK, SILKSTICK and SILK); Champagne Louis Roederer S.A. v. Delicato Vineyards, 47 USPQ2d 1459 (Fed. Cir. 1998) (finding no likelihood of confusion between CRYSTAL CREEK and CRISTAL); United Drug Co. v. Mercirex Co., 86 USPQ 112 (C.C.P.A. 1950) (finding no likelihood of confusion between MERCIREX and REX).

 

As shown clearly by Applicant’s drawing, Applicant's (URDU) INTERNATIONAL (and Design) mark is highly distinguishable from the cited LAZIZA mark due to, inter alia, the distinct building structure in Applicant’s mark, the leaf in Applicant’s mark, the Urdu language in the mark, and the word INTERNATIONAL in Applicant’s mark.

 

2.         Sound

 

The sound of the respective marks is also different.  Pronunciation of the cited LAZIZA mark requires less time than pronunciation of the verbal portion of Applicant’s mark.  The cited registration is comprised of a three-syllable mark.  The verbal portion of Applicant’s mark is eight syllables.  Addition of the word INTERNATIONAL lengthens and distinguishes the aural nature of the mark.

 

3.         Meaning/Commercial Impression

 

"[T]he commercial impression of a trademark is derived from it as a whole, not from elements separated and considered in detail."  Security Center, Ltd. v. First Nat'l Security Centers, 750 F. 2d 1295, 1302 (5th Cir. 1985); Opryland USA, Inc. v. Great Am. Music Show, Inc., 23 USPQ2d 1471, 1473 (Fed. Cir. 1992).  Although the cited mark contains “LAZIZA” and Applicant’s mark contains Urdu language that translates to “LAZIZA,” Applicant’s mark is (URDU) INTERNATIONAL (and Design) and therefore must be reviewed and analyzed as a whole.  See In re Hearst, Corp., 25 USPQ2d 1238, 1239 (Fed. Cir. 1992) ("marks tend to be perceived in their entireties, and all components thereof must be given appropriate weight").  In like manner, the mark of the cited registration must also be viewed in its  entirety.

 

When properly viewed in its totality, the connotation of Applicant's distinctive mark, which includes the word INTERNATIONAL and distinctive design elements, will be based solely upon Applicant's goods.  The (URDU) INTERNATIONAL (and Design) mark is not commonly used to refer to any good or service, and Applicant’s use of the mark will give consumers a distinct and unique commercial impression based upon their knowledge of Applicant's unique products.  Consumers will recall Applicant’s distinctive (URDU) INTERNATIONAL (and Design) mark.  The distinctive design elements of Applicant’s mark and the word INTERNATIONAL distinguishes the commercial impression of Applicant’s mark from the commercial impression of the cited LAZIZA mark.

 

B.        Differences in the Respective Goods

 

Applicant also submits that concurrent use and registration of the marks in question would not be likely to lead to confusion, mistake, or deception of purchasers, due to inter alia the significant differences in the respective goods.  It is well settled that the issue of likelihood of confusion is determined based upon the goods or services of the application and cited registration, and without suggesting or implying that the marks at issue in this case are identical or similar, as discussed above, identical or similar marks may be concurrently registered for separate goods or services.  In re Dayco Products-Eaglemotive Inc., 9 USPQ2d 1910 (TTAB 1998) (IMPERIAL for automobiles and structural parts and IMPERIAL for automotive products); In re Nobody's Perfect Inc., 44 USPQ2d 1054 (TTAB 1997) (NO BODY'S PERFECT and NOBODY'S PERFECT); Viacom Int'l Inc. v. Komm, 46 USPQ2d 1233 (TTAB 1998) (MIGHTY MOUSE and MY-T-MOUSE); and In re Parfums Schiaparelli Inc., 37 USPQ2d 1864 (TTAB 1995) (SCHIAPARELLI and SCHIAPARELLI).

 

Applicant submits that its goods and the goods of the cited registration can only be considered “similar” in the most general sense, i.e., both recite beverage-related products.  The cited registration is narrowly directed to “beer, non-alcoholic beer and non-alcoholic malt beverages.”  In contrast, as shown by Applicant's revised identification of goods, Applicant’s (URDU) INTERNATIONAL (and Design) mark is used in association with aerated water; mineral water; syrups and other preparations for making beverages.  Such goods may be clearly contrasted with the “beer, non-alcoholic beer and non-alcoholic malt beverages” sold by the Registrant. Applicant’s products are water and items for preparing beverages rather than fully processed alcoholic and alcoholic-like and beverage products, which are ready for consumption.

 

Courts and the USPTO have repeatedly found no likelihood of confusion even with respect to identical marks used in a common industry, including the beverage industry, where the relevant goods and/or services are clearly different.  See e.g. American Brewing Co. v. Delatour Bev. Corp., 34 USPQ 83, 85 (Comm'r Pat. 1937) (finding no likelihood of confusion between Statute of Liberty marks directed to beer and ginger ale, respectively); Burger Brewing Co. v. Maloney-Davidson Co., 32 USPQ 136, 138 (6th Cir. 1936) (finding no likelihood of confusion between identical marks directed to beer and syrups for beverages, respectively); Gordon's Dry Gin Co. v. Gordon, 208 USPQ 759, (D. Ariz. 1979) (finding no likelihood of confusion between nearly identical marks directed to liquor and non-alcoholic drinks, respectively); In re Fesco, 219 USPQ 437 (TTAB 1983)(FESCO and design for distributorship services in the field of farm equipment and machinery versus FESCO for a variety of fertilizer processing machinery and equipment); Chase Brass and Copper Co. v. Special Springs, Inc., 199 USPQ 243 (TTAB 1978) (BLUE DOT for springs for engine distributors versus BLUE DOT for brass rods-both products used in new automobile manufacture); and Autac, Inc. v. Walco Systems, Inc., 195 USPQ 11 (TTAB 1977)(AUTAC for thermocouple automatic temperature regulators for brushless wire preheaters versus AUTAC for retractile electric cords-both products used in the wire manufacturing industry)).

 

Applicant’s goods and the “beer, non-alcoholic beer and non-alcoholic malt beverages” of the cited registration are not only distinguishable, Applicant’s goods will not compete with the goods of the cited registration and will be sold in different stores and different sections of “big box” stores.  “Competing” goods are intended to satisfy the same need, are offered to the same group of customers, and are comparable with respect to quality, price, and purpose.  Consumers will not assume that Applicant’s products for beverage preparation are offered by the same source that offers “beer, non-alcoholic beer and non-alcoholic malt beverages.”  Furthermore, Applicant’s water and beverage preparation products are sufficiently different that they will be sold in different sections of retail stores—if the products can be sold in the same stores in light of restrictions on alcohol sales.  Applicant respectfully submits that the marketing environment for the respective goods is quite different due to the different and distinct nature of the respective goods.  TMEP § 1207.01(a)(i) (“[I]f the goods or services in question are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion is not likely.”) (citing  Local Trademarks, Inc. v. Handy Boys Inc., 16 USPQ2d 1156 (TTAB 1990)).

 

III.       CONCLUSION

 

In light of the differences between Applicant's (URDU) INTERNATIONAL (and Design) mark the cited LAZIZA mark, as well as the differences between Applicant's goods and the goods of the cited registration, Applicant asserts that there is no likelihood of confusion between Applicant’s mark and U.S. Registration No. 2858232.

 

Applicant respectfully requests withdrawal of the refusal to register.  If any further questions remain, or if the Examining Attorney believes that a further amendment to the identification of goods is necessary, Applicant respectfully requests that the Examining Attorney contact the undersigned via telephone or email. 

 

Respectfully submitted,

           

Convenience Food Industries (Pvt) Ltd.

 

David E. Weslow

Elisabeth A. Langworthy

SUTHERLAND ASBILL & BRENNAN LLP

1275 Pennsylvania Avenue, N.W.

Washington, D.C. 20004-2415

Telephone:  202.383.0100

Facsimile:  202.637.3593

Email:  eteas@sablaw.com

 

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 032 for Aerated water, mineral water, syrups, and other preparation for making beverages, squashes, non-alcoholic drinks like non-alcoholic beer
Original Filing Basis:
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 [ Pakistan registration number 129862 registered 04/25/1995 with a renewal date of __________ and an expiration date of 04/25/2017 ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.

Proposed: Class 032 for Aerated water; mineral water; syrups and other preparations for making beverages, namely, red syrups of herbs and flowers, sardai/thandai syrups, and fruit, flower, and herb extracts
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 [ Pakistan registration number 129862 registered 04/25/1995 with a renewal date of __________ and an expiration date of 04/25/2017 ], and translation thereof, if appropriate, before the application may proceed to registration. 15 U.S.C. Section 1126(e), as amended.

ADDITIONAL STATEMENTS
Claim of Prior Registration(s)
"Applicant claims ownership of U.S. Registration Number(s) 3190830, 3190831."

SIGNATURE(S)
Response Signature
Signature: /David E. Weslow/     Date: 09/21/2007
Signatory's Name: David E. Weslow
Signatory's Position: Attorney for Applicant

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 77039182
Internet Transmission Date: Fri Sep 21 11:38:46 EDT 2007
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-200709211138461
19276-77039182-4007568971d799b5ca4434045
6524ad2a33-N/A-N/A-20070921113624153835