Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 77713492 has been amended as follows:

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

(2)(e)(4) SURNAME REFUSAL

This refusal should be withdrawn in view of the accompanying 2(f)-in-part statement. The applicant, Rakesh "Rocky" Patel, has been selling under a variety of marks (e.g., those shown in US Regs. 3023623 and 3630611) [ATTACHMENTS 1-2] which incorporate PATEL for over five years, and his name - and the surname PATEL - has acquired exceedingly strong secondary meaning. See the accompanying magazine / website articles [ATTACHMENTS 3-5] discussing how Rocky Patel cigars are currently one of the best-known and most respected cigars. Further see the attached Google search results (first 50 hits) for "patel cigars" [ATTACHMENT 6]; note how all results refer to Rocky Patel. Since these results are compiled from the universe of available websites, these further illustrate the strong association between the name PATEL and Applicant Rocky Patel's cigars. Since cigar consumers readily recognize and associate the mark with Applicant, the refusal should be withdrawn.

(2)(d) LIKELIHOOD OF CONFUSION REFUSAL

Applicant's mark, for which registration is sought for "cigars" in class 34, has been refused registration in view of

Kindly withdraw the refusal. There is no likelihood of confusion for at least the following reasons.

FIRSTLY, as alleged by the Office, PATEL BROTHERS is primarily merely a surname, and thus lacks inherent distinctiveness. Nevertheless, Registrant's marks -- and Applicant's mark, as argued above -- are registrable in relation to their noted goods/services owing to their acquired distinctiveness. In this respect, it must be recalled that in accordance with TMEP 1212:

(Emphasis added.) The point here is that while Registrant may have become known among consumers for "retail and wholesale grocery store services," such that consumers would associate such services with Registrant if such services were provided in association with PATEL BROTHERS, Registrant has no such renown for goods such as cigars. Consumers would therefore have no reason to associate the mark, as applied to cigars, with Registrant. Rather, as discussed above, Applicant has established his own renown in the field of cigars, and consumers would associate the mark (as applied to cigars) only with Applicant. To illustrate, see the accompanying Google search results (first 50 hits) for "patel brothers cigars" [ATTACHMENT 7]; again, note how all results refer to Applicant, and none refer to Registrant. Since these results are compiled from the universe of available websites -- including those dealing with Registrant's services, and including sales sites, review sites, blogs, bulletin boards, etc. -- and a search of "patel brothers" in connection with "cigars" nonetheless yields only hits mentioning Applicant, and not Registrant, this further evidences that the mark, as applied to cigars, is associated by the public (and particularly the cigar-buying public) solely with Applicant, and not Registrant. Registrant simply has no distinctiveness in respect of cigars.

The attached evidence also includes references evidencing that "Patel" is one of the most common Indian surnames [ATTACHMENTS 8, 9], with the attached Wikipedia article particularly noting that "Patel" is one of the most common surnames particularly in the Indian Gujarat and Chhattisgarh states. This evidence is relevant to show that without developed secondary meaning in relation to particular goods / services, consumers are not likely to associate a PATEL mark with these particular goods / services: there are simply "too many" Patels to assume that different PATEL goods and services come from the same source. Thus, in this case, if it was not for Registrant's demonstrated secondary meaning in PATEL as applied to cigars, it is questionable whether consumers would associate the mark with any particular source, including Registrant.

SECONDLY, as expressly admitted in the Office Action:

(Emphasis added.) Here, while consumers would plainly associate Registrant's mark with Registrant's sales services, they would not regard Registrant as the source of all of the goods sold within their grocery stores. This is in accord with common sense and everyday experience: when one goes to a grocery store, they do not regard the store operator as being the actual manufacturer / provider of all of the goods therein. In particular, consumers are not accustomed to seeing store names also used as store brands for tobacco products, and they would not expect store names to be used as store brands for tobacco products.

THIRDLY, the Office Action cites third-party registrations of marks which are allegedly "used in connection with the same or similar goods and/or services as those of applicant and registrant in this case," and alleges that these "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." However, all of the cited registrations only show their registrants using their marks in connection with sales services -- not even a single one of the cited registrations also shows use of the mark as a brand for the cigars themselves (i.e., there is no evidence whatsoever of use of a grocery store mark as a "store brand" for cigars). As noted above, consumers are not accustomed to seeing store names also used as store brands for tobacco products, and they would not expect store names to be used as store brands for tobacco products.

FOURTHLY, note that the issue of relatedness here -- whether grocery sales services are related to goods (namely cigars) which are sometimes sold in groceries -- is in some respects analogous to the situation reviewed in TMEP 1207.01(a)(ii)(A), namely, whether restaurant services are related to goods (namely food / beverages) which are sometimes sold in restaurants. As noted in that section, for food/beverage products to be found sufficiently related to restaurant services to generate a likelihood of confusion, "something more" must be produced as evidence, e.g., evidence that restaurants provide the relevant goods under the mark for the restaurant. See also, e.g., In re La Estancia Argentina Corp., 79 USPQ2d 1531, 1534 (TTAB 2005), which also presents a situation somewhat analogous to the one here:

Here, in relation to grocery store services versus cigars, there is no true evidence of relatedness. In particular, as noted above, there is no evidence that grocery stores currently do, or ever have, provided tobacco products under the "store brand."

In summary, there is no likelihood of confusion because PATEL BROTHERS is a weak mark which is not associated by consumers with any particular source unless secondary meaning is present (and here, Registrant has no secondary meaning in respect of Applicant's goods); because consumers would not regard Registrant's and Applicant's goods as coming from the same source, particularly since consumers are not accustomed to seeing grocery store brands on tobacco products; and because there is no probative evidence of relatedness (as required by TMEP 1207.01(a)(vi), TMEP 1207.01(a)(ii)(A), and In re La Estancia Argentina Corp., 79 USPQ2d 1531, 1534 (TTAB 2005). Kindly withdraw the refusal and allow the mark to proceed to registration.

EVIDENCE
Evidence in the nature of Evidence in the nature of Evidence of Applicant's acquired distinctiveness (secondary meaning) in the field of cigars, and of Registrant's lack of distinctiveness in this field has been attached.
Original PDF file:
evi_66170830-073716931_._USPTO_Response_Evidence_1_USReg_3023623_ROCKY_PATEL.pdf
Converted PDF file(s) (1 page)
Evidence-1
Original PDF file:
evi_66170830-073716931_._USPTO_Response_Evidence_2_USReg_3630611_RPREN.pdf
Converted PDF file(s) (1 page)
Evidence-1
Original PDF file:
evi_66170830-073716931_._USPTO_Response_Evidence_3_www.cigaraficionado.pdf
Converted PDF file(s) (6 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Original PDF file:
evi_66170830-073716931_._USPTO_Response_Evidence_4_www.texcigars.pdf
Converted PDF file(s) (1 page)
Evidence-1
Original PDF file:
evi_66170830-073716931_._USPTO_Response_Evidence_5_www.thetop10cigars.com.pdf
Converted PDF file(s) (1 page)
Evidence-1
Original PDF file:
evi_66170830-073716931_._USPTO_Response_Evidence_6_google_Patel_Cigars.pdf
Converted PDF file(s) (5 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Original PDF file:
evi_66170830-073716931_._USPTO_Response_Evidence_7_google_Patel_Brothers_Cigars.pdf
Converted PDF file(s) (5 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Original PDF file:
evi_66170830-073716931_._USPTO_Response_Evidence_8_names.whitepages.pdf
Converted PDF file(s) (6 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Original PDF file:
evi_66170830-073716931_._USPTO_Response_Evidence_9_en.wikipedia.pdf
Converted PDF file(s) (11 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11

ADDITIONAL STATEMENTS
Claim of Prior Registration(s)
The applicant claims ownership of U.S. Registration Number(s) 3023623 and 3630611.

Section 2(f), in part, based on Use
PATEL has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use in commerce for at least the five years immediately before the date of this statement.

SIGNATURE(S)
Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant has had 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. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii); and/or the applicant has had a bona fide intention to exercise legitimate control over the use of the mark in commerce by its members. 37 C.F. R. Sec. 2.44. If the applicant is seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods and/or services listed in the application as of the application filing date or as of the date of any submitted allegation of use. 37 C.F.R. Secs. 2.34(a)(1)(i); and/or the applicant has exercised legitimate control over the use of the mark in commerce by its members. 37 C.F.R. Sec. 244. The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. Section1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. Section1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true.

Signature: /craigfieschko/      Date: 12/15/2009
Signatory's Name: Craig A. Fieschko
Signatory's Position: Attorney for Applicant (Wisconsin bar member)

Response Signature
Signature: /craigfieschko/     Date: 12/15/2009
Signatory's Name: Craig A. Fieschko
Signatory's Position: Attorney for Applicant (Wisconsin bar member)

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: 77713492
Internet Transmission Date: Tue Dec 15 07:44:13 EST 2009
TEAS Stamp: USPTO/ROA-XX.XXX.X.XX-200912150744131856
72-77713492-4608c71b0b71b4c8262d62d10dba
bd5b2dd-N/A-N/A-20091215073716931064