Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER 

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE: 7/6/2010

 

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(a), 2.65(a); TMEP §§711, 718.03.

 

Refusal – Likelihood of Confusion

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 0256207; 0294715; 2036725; and 3205083.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registrations.

 

The registered marks all have the wording BROWN COW, which is also the wording in the applicant’s mark.  The goods in the cited registrations are: “chocolate syrup intended to be used as the basic flavor for malted milks” (in Reg. No. 0256207); “frozen confections” (in Reg. Nos. 0294715 and 2036725); and “yogurt and yogurt beverages, not including frozen yogurt or frozen confections.” 

 

Applicant’s goods are similar to those in the cited registrations.  Applicant’s goods include “Flavorings, other than essential oils, for beverages; Chocolate-based beverages; Chocolate beverages with milk; Nonalcoholic chocolate-flavored drinks and powder for the preparation of such drinks; Syrup for making beverages; Syrup of chocolate for making beverages.”  These goods are similar or identical to “chocolate syrup intended to be used as the basic flavor for malted milks.”  Therefore, there is a likelihood of confusion with the mark in Reg. No. 0256207.

 

Although applicant’s confectionaries are not frozen confectionaries, and its beverages are not identified as yogurt beverages, the use of the same word mark, BROWN COW, for beverages and confectionaries is also likely to create confusion.  If the marks of the respective parties are identical, the relationship between the goods and/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.  In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); Amcor, Inc. v. Amcor Indus., Inc., 210 USPQ 70, 78 (TTAB 1981); TMEP §1207.01(a).

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

Applicant must respond to the requirements set forth below.

 

Identification and Classification of Goods

 

Applicant must amend the application to classify the “milk-shakes and powders for the preparation of milk-shakes” in International Class 30.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

Applicant must specify the nature of the drinks in “Nonalcoholic chocolate-flavored drinks and powder for the preparation of such drinks.”  Soft drinks are classified in Class 32.  If applicant inserts “soft” prior to “drinks,” the goods would be acceptable in Class 32.  On the other hand, if such drinks are “milk shakes,” and applicant states so, the goods would be in Class 30.

 

Applicant must clarify the wording “chocolate beverages with milk,” “cereal preparations,” and “flaked cereal foods” in the identification of goods.  Applicant may amend to “chocolate-based beverages with milk” (in Class 30); “preparations made from cereals, namely ____ {indicate specific items}” (in Class 30); “flaked breakfast cereals” (in Class 30).

 

See TMEP §1402.01.

 

Applicant must delete the parenthetical “(sweets)” from the identification of goods, since parentheses are generally not permitted.

 

Therefore, applicant may adopt the following identification of goods, if accurate:

 

Class 30

 

Flavorings, other than essential oils, for beverages; Confectioneries, namely, snack foods, namely, chocolate; Confectionery made of sugar; Chocolate; Chocolate-based beverages; Chocolate-based beverages with milk; Chocolate powder; Coffee beverages with milk; Coffee based beverages; Processed cereal-derived food product, to be used as breakfast cereal; Cereal-based snack foods; Pancakes, Grain based snack foods; Preparations made from cereal, namely {indicate specific items}; Processed cereal-based food to be used as a breakfast food, snack food or ingredient for making other foods; Cookies; Biscuits; Toaster pastries; Waffles; Table syrup; Corn Flake Crumbs; Flaked breakfast cereal; Candies; Chocolate candy; Milk-shakes and powder for the preparation of milk-shakes

 

Class 32

 

Non-alcoholic chocolate-flavored soft drinks and powder for the preparation of such drinks; Syrup for making beverages; Syrup of chocolate for making beverages

 

An applicant may amend an identification of goods only to clarify or limit the goods; adding to or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq. 

 

 

 

 

 

/StevenFine/

Trademark Attorney

Law Office 110

(571) 272-9158

 

 

 

TO RESPOND TO THIS LETTER:  Use the Trademark Electronic Application System (TEAS) response form at http://teasroa.gov.uspto.report/roa/.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.

 

 

 

 

 

                                                                

IMPORTANT NOTICE REGARDING YOUR TRADEMARK APPLICATION

 

Your trademark application (Serial No. 77968077) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office action”) on 7/6/2010 to which you must respond (unless the Office letter specifically states that no response is required).  Please follow these steps:

 

1. Read the Office letter by clicking on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77968077&doc_type=OOA&mail_date=20100706 OR go to  http://tmportal.gov.uspto.report/external/portal/tow and enter your serial number to access the Office letter.  If you have difficulty accessing the Office letter, contact TDR@uspto.gov.  

                                         

PLEASE NOTE: The Office letter may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

2. Contact the examining attorney who reviewed your application if you have any questions about the content of the Office letter (contact information appears at the end thereof).

 

3. Respond within 6 months, calculated from 7/6/2010 (or sooner if specified in the Office letter), using the Trademark Electronic Application System (TEAS) Response to Office Action form. If you have difficulty using TEAS, contact TEAS@uspto.gov. 

 

ALERT:

 

Failure to file any required response by the applicable deadline will result in the ABANDONMENT (loss) of your application.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.