UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 77/713492
MARK: PATEL BROS.
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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: Patel, Rakesh
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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: 6/30/2009
TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE: Applicants who filed their application online using the reduced-fee TEAS Plus application must submit certain documents electronically. In addition, such applicants must accept correspondence from the Office via e-mail throughout the examination process and maintain a valid e-mail address. 37 C.F.R. §§2.23(a), (b); TMEP §§819, 819.02(a), (b). Failure to do so will incur an additional fee of $50 per class of goods and/or services. 37 C.F.R. §2.6(a)(1)(iv); TMEP §819.04.
Therefore, applicant must submit the following documents using the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html: (1) responses to Office actions; (2) preliminary amendments; (3) changes of correspondence address; (4) changes of owner’s address; (5) appointments and revocations of power of attorney; (6) appointments and revocations of domestic representative; (7) amendments to allege use; (8) statements of use; (9) requests for extension of time to file a statement of use; and (10) requests to delete a Trademark Act Section 1(b) basis. If applicant files any of these documents on paper instead of via TEAS, then applicant must also submit the $50 per class fee. 37 C.F.R. §§2.6(a)(1)(iv), 2.23(a)(1); TMEP §§819.02(b), 819.04. Telephone responses that result in the issuance of an examiner’s amendment will not incur this additional fee.
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, 2.65(a); TMEP §§711, 718.03.
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.
Comparison of the Marks
The applicant’s mark, “PATEL BROS.”, is virtually identical to the registrant’s mark, “PATEL BROTHERS” (Reg. No. 1874341) and is confusingly similar in sound, appearance and meaning to the registrant’s mark, “PATEL BROTHERS CASH & CARRY” (Reg. No. 2955255), and will lead to consumer confusion.
The above marks are virtually identical in sound, connotation and meaning, because they contain the virtually identical wording “PATEL BROS.” and “PATEL BROTHERS”.
Comparison of the Goods and Services
When determining whether there is a likelihood of confusion, all circumstances surrounding the sale of the goods and/or services are considered. Industrial Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386 (C.C.P.A. 1973). These circumstances include the marketing channels, the identity of the prospective purchasers and the degree of similarity between the marks and between the goods and/or services. In comparing the marks, similarity in any one of the elements of sound, appearance or meaning is sufficient to find a likelihood of confusion. In comparing the goods and/or services, it is necessary to show that they are related in some manner. In re Mack, 197 USPQ 755, 757 (TTAB 1977); TMEP §§1207.01 et seq.
If the marks of the respective parties are identical, the relationship between the goods or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert. denied 506 U.S. 1034 (1992); In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981); TMEP §1207.01(a).
The applicant’s goods are “cigars.”
The registrant’s services are “retail and wholesale grocery store services.”
Attached are copies of printouts from the USPTO X-Search database, which show third-party registrations of marks used in connection with the same or similar goods and/or services as those of applicant and registrant in this case. These printouts have probative value to the extent that they serve to suggest that the goods and/or services listed therein, namely “cigars” and “grocery store services”, are of a kind that may emanate from a single source. See In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-1218 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 at n.6 (TTAB 1988).
The applicant’s goods are closely related to the registrant’s services because applicant’s goods are likely to be sold through registrant’s services, and therefore, will travel through the same channels of trade to the same classes of purchasers. Accordingly, because confusion as to source is likely, registration is refused under Trademark Act Section 2(d) based on a likelihood of confusion.
Finally, the Examining Attorney is not bound by past decisions of the Trademark Examining Operation. In re Shapely, Inc., 231 USPQ 72, 75 (TTAB 1986). The Examining Attorney must resolve any doubt regarding a likelihood of confusion in favor of the prior registrant and against the applicant who has a legal duty to select a mark that is totally dissimilar to trademarks already being used. Burroughs Wellcome Co. v. Warner-Lambert Co., 203 USPQ 191 (TTAB 1979); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir., 1988). TMEP §§1207.01(d)(i).
Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
SECTION 2(e)(4) REFUSAL – PRIMARILY MERELY A SURNAME
Registration is refused because the proposed mark is primarily merely a surname. Trademark Act Section 2(e)(4), 15 U.S.C. §1052(e)(4); TMEP §§1211 et seq. The primary significance of the mark to the purchasing public determines whether a term is primarily merely a surname. In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652, 653 (Fed. Cir. 1985); In re Kahan & Weisz Jewelry Mfg. Corp., 508 F.2d 831, 184 USPQ 421 (C.C.P.A. 1975).
The following five factors are used to determine whether a mark is primarily merely a surname:
·the rareness of the surname;
· whether anyone connected with the applicant has the mark as his or her surname;
· whether the term has any recognized meaning other than as a surname;
· whether the mark has the structure and pronunciation of a surname; and
· whether the mark is sufficiently stylized to remove its primary significance from that of a surname.
TMEP §1211.02(b). See In re Benthin Management GmbH, 37 USPQ2d 1332, 1333-1334 (TTAB 1995); In re Sava Research Corp., 32 USPQ2d 1380 (TTAB 1994) and cases cited therein.
Please see the attached evidence from whitepages.com and 411.com establishing the surname significance of the surname “PATEL”. This evidence shows the proposed mark appearing over 300 times as a surname in a nationwide telephone directory of names.
Further, the examining attorney submits excerpts from the U.S. Trademark Office Register evidencing the finding of primarily merely surname significance for PATEL in previous registrations, as well as the generic treatment of the term BROTHERS and BROS. In this case, the terms BROTHERS and BROS. serve only to establish the type of entity of applicant. The use of this term, in combination with the surname, serves simply to establish that the applicant organization consists of brothers. In this context, BROS. has the same effect as the terms Inc. or Corp. following a surname. (Please see attached).
If applicant chooses to respond to the refusals to register, then applicant must also respond to the following requirement.
PRIOR REGISTRATIONS
If applicant is the owner of U.S. Registration Nos. 3023623 and 3630611, then applicant must submit a claim of ownership. 37 C.F.R. §2.36; TMEP §812. The following standard format is suggested:
Applicant is the owner of U.S. Registration Nos. 3023623 and 3630611.
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.
To expedite prosecution of this application, applicant is encouraged to file its response to this Office action through the Trademark Electronic Application System (TEAS), available at http://www.gov.uspto.report/teas/index.html.
/Kelly McCoy/
Trademark Examining Attorney
Law Office 107
Phone - (571) 272-8976
Fax - (571) 273-8976
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.