To: | Smokehouse (nkoenig@gorge.net) |
Subject: | TRADEMARK APPLICATION NO. 77382626 - SMOKEHOUSE - SMK - 006 |
Sent: | 1/8/2009 1:11:31 PM |
Sent As: | ECOM116@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 77/382626
MARK: SMOKEHOUSE
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: Smokehouse
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
ISSUE/MAILING DATE: 1/8/2009
THIS IS A FINAL ACTION.
This Office action is in response to applicant’s communication filed on October 23, 2008. The applicant (1) argued against the refusal to register the mark under Section 2(d) of the Trademark Act, and (2) against the requirement to submit a substitute specimen that agrees with the mark on the drawing, for Class 4 goods.
The refusal to register the mark under Section 2(d) and the requirement to submit a substitute specimen for Class 4 goods, that agrees with the mark on the drawing is continued and made FINAL.
Likelihood of Confusion
Registration was refused under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration No. 2571184 as to be likely, when used in connection with the identified goods, to cause confusion, or to cause mistake, or to deceive.
In this case, the following factors are the most relevant: similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or services. See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.
The applicant applied to register the mark SMOKEHOUSE inside a badge with a flame design for wood chips for smoking and grilling and for barbecues and grills; charcoal grills; electric grills; electric indoor grills; electric outdoor grills; folding portable charcoal, propane and gas fired barbecues, stoves, and grills; grill accessories, namely, warming trays; barbecue smokers. The registered mark is SMOKEHOUSE for charcoal briquettes, lump charcoal, wood chips and wood chunks for smoking, grilling and flavoring of foods.
The applicant argued that (1) the inclusion of the design overcomes the similarity with the cited mark, and (2) the term SMOKEHOUSE is widely used in connection with barbeques and grills.
Here, the applicant’s mark is confusingly similar to the registered mark because the literal portion of applicant’s mark, SMOKEHOUSE, is identical to the registered mark in sound, spelling and commercial impression. The addition of the design element does not obviate the similarity of the marks in this case. See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii).
However, in this case, applicant’s and registrant’s goods are closely related. First, applicant’s mark and the registered mark are used in connection with wood chips for smokers and grills. Second, applicant’s barbecues and grill and registrant’s wood chips are products which are sold and or marketed in the same channels of trade. The attached material downloaded from the internet clearly shows that applicant’s and registrant’s products are of a kind that may emanate from a single source.
Accordingly, the refusal to register the mark under Section 2(d) is FINAL.
Mark Differs on Drawing and Specimen – Class 4 Only
The mark on the specimen disagrees with the mark on the drawing. In this case, the specimen displays the mark as SMOKEHOUSE inside a badge, while the drawing shows the mark as SMOKEHOSUE inside a badge with stylized flames above it.
Therefore, applicant must submit the following:
(1) A substitute specimen showing use in commerce of the mark on the drawing. See TMEP §807.12(a).; and
(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33: “The substitute specimen was in use in commerce at least as early as the filing date of the application.” See 37 C.F.R. §2.59(a); TMEP §904.05. If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c); TMEP §904.05.
If applicant cannot satisfy the above requirements, applicant may amend the application from a use in commerce basis under Trademark Act Section 1(a) to an intent to use basis under Section 1(b), for which no specimen is required. See TMEP §806.03(c). However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.
To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33: “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the filing date of the application.” 37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §2.35(b)(1).
Options
(1) Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or
(2) Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.
37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.
In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues. 37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).
/Alice Benmaman/
Trademark Attorney
Law Office 116
(571) 272-9126
RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail. For technical assistance with the form, please e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.
If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.
STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.