| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 77968077 |
| LAW OFFICE ASSIGNED | LAW OFFICE 110 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
In the office action of July 6, 2010, the examining attorney has rejected the Applicant’s mark BROWN COW based on likelihood of confusion. The examining attorney has also rejected the Applicant’s identification of goods for the applicant’s mark BROWN COW.
Refusal –Likelihood of Confusion
U.S. Trademark Registration No. 0256207
In rejecting the Applicant’s mark, the examining attorney has cited U.S. Trademark Registration No. 0256207. The examining attorney has indicated that the Applicant’s current goods include “flavorings, other than essential oils, for beverages”. The examining attorney also has indicated that the Applicant’s goods include “chocolate-based beverages”, and “chocolate beverages with milk”. Further, the examining attorney has indicated that the Applicant’s goods include “nonalcoholic chocolate-flavored drinks and powder for the preparation of such drinks”, “syrup for making beverages”, and “syrup of chocolate for making beverages”. The examining attorney has stated that the goods of U.S. Trademark Registration No. 0256207 is “chocolate syrup intended to be used as the basic flavor for malted milk.” The examining attorney’s position is that the Applicant’s above referenced goods are similar or identical to the registrant’s good recited in U.S. Trademark Registration No. 0256207.
The Applicant seeks to amend the Applicant’s “chocolate beverages with milk” in International Class 30 to “chocolate-based beverages with milk”. The Applicant seeks to amend the Applicant’s “non-alcoholic chocolate-flavored drinks and powder for the preparation of such drinks” in International Class 32 to “non-alcoholic chocolate-flavored soft drinks and powder for the preparation of such drinks”.
The Applicant argues that there is no likelihood of confusion because U.S. Trademark Registration No. 0256207 has not been renewed. In the alternative, the Applicant argues that there is no likelihood of confusion because the marks are sufficiently different. The Applicant’s mark does not have a similar appearance to the composite mark BROWN COW of U.S. Trademark Registration No. 0256207. U.S. Trademark Registration No. 0256207 includes a side view image of a cow. Above the side view image of the cow, the words “BROWN COW” appear inside an arch-shaped border. In contrast, each letter of the Applicant’s stylized mark BROWN COW gradually changes colors. The colors of the Applicant’s letters fade from dark red to orange-red. Then, the colors of the Applicant’s letters change from orange-red to tan.
U.S. Trademark Registration No. 0294715
The examining attorney has indicated that there is a likelihood of confusion between U.S. Trademark Registration No. 0294715 and the Applicant’s mark. U.S. Trademark Registration No. 0294715 is for a mark BROWN COW and Design. The examining attorney has indicated that the goods of U.S. Trademark Registration No. 0294715 include “frozen confections”.
In response to the examining attorney’s rejections based on U.S. Trademark Registration No. 0294715, the Applicant seeks to expressly exclude frozen confections in International Class 30. The Applicant refers the examining attorney to the proposed amendment to the identification of goods below. According to the Applicant’s proposed amendment to the identification of goods in International Class 30, the Applicant seeks to add the language “except frozen confections and yogurt and yogurt beverages”.
There is no likelihood of confusion because the appearance and commercial impression of U.S. Trademark Registration No. 0294715 is dissimilar to the appearance and commercial impression of the Applicant’s mark. U.S. Trademark Registration No. 0294715 is a composite mark. U.S. Trademark Registration No. 0294715 includes the word portion BROWN COW in stylized letters. A cow is looking through the letter “O” in the word BROWN. A second cow is looking through the letter “O” in the word COW. The cows, looking through the letter “O”, evoke an impression that the cows are looking through holes in a fence. The letters “B” and “R” are falling over and evoke an impression of a leaning or tattered fence.
The Applicant’s mark Brown Cow is in stylized format. Each letter of the Applicant’s mark BROWN COW gradually changes colors. The top color is dark red. The dark red color fades to orange-red. Then, the orange-red color fades to tan. The Applicant’s mark BROWN COW does not evoke an impression that the cows are looking through holes in a leaning or tattered fence.
U.S. Trademark Registration No. 2036725
The examining attorney’s position is that there is a likelihood of confusion between U.S. Trademark Registration No. 2036725 and the Applicant’s mark. U.S. Trademark Registration No. 2036725 is for the word mark BROWN COW on and in connection with “frozen confections” in International Class 30. The Applicant’s stylized mark BROWN COW is for “confectioneries, namely, snack foods, namely, chocolate”. The Applicant’s goods also include “confectionery made of sugar” and “chocolate”.
In response to the examining attorney’s rejection, the Applicant seeks to expressly exclude frozen confections in International Class 30. The proposed amendment to the identification of goods in International Class 30 has the language “except frozen confections and yogurt and yogurt beverages”. In light of the proposed express exclusion of the “frozen confections”, the Applicant believes there is no likelihood of confusion.
U.S. Trademark Registration No. 3205083
In refusing to register the Applicant’s mark BROWN COW, the examining attorney has cited U.S. Trademark Registration No. 3205083. The goods listed in U.S. Trademark Registration No. 3205083 are as follow: “Yogurt and yogurt beverages, not including frozen yogurt or frozen confections” in International Class 29. The examining attorney has pointed out that the Applicant has not specified the Applicant’s beverages as yogurt beverages. However, the examining attorney has indicated that there is a likelihood of confusion between the Applicant’s mark and U.S. Trademark Registration No. 3205083.
In response to the examining attorney’s rejection, the Applicant seeks to expressly exclude “yogurt and yogurt beverages” in the Applicant’s proposed amendment to the Applicant’s identification of goods in International Class 30. The proposed amendment to the identification of goods in International Class 30 has the language “except frozen confections and yogurt and yogurt beverages”. Thus, the goods in U.S. Trademark Registration No. 3205083 are sufficiently different from the Applicant’s goods to avoid likelihood of confusion.
There is no general rule that the word portion of a composite mark must be the dominant portion of the composite mark. U.S. Trademark Registration No. 3205083 is a composite mark. U.S. Trademark Registration No. 3205083 includes the word portion BROWN COW. The design portion of U.S. Trademark Registration No. 3205083 displays a cow head peaking over a picket fence. The design portion of U.S. Trademark Registration No. 3205083 is the dominant portion of the mark BROWN COW and Design.
The Applicant’s mark Brown Cow is in stylized format. As discussed above, each letter of the Applicant’s mark BROWN COW gradually changes colors. The colors change from dark red to orange-red and from orange-red to tan. The composite mark BROWN COW and Design of U.S. Trademark Registration No. 3205083 is sufficiently dissimilar in appearance and commercial impression to Applicant’s stylized mark BROWN COW. Therefore, no likelihood of confusion exists between U.S. Trademark Registration No. 3205083 and the Applicant’s mark.
Identification and Classification of Goods
The Applicant proposes that the examining attorney amend the goods in Classes 30 and 32 as follow:
International 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 corn flakes; 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, except frozen confections and yogurt and yogurt beverages.
International 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.
The examining attorney has indicated that the Applicant must amend the application to classify “milk-shakes and powders for the preparation of milk-shakes” in International Class 30. In response, the Applicant seeks to classify “milk-shakes and powders for the preparation of milk-shakes” in International Class 30. The Applicant refers the examining attorney to the Applicant’s proposed amendment of goods in International Class 30 above.
The examining attorney has indicated that the Applicant must specify the nature of the drinks referred to as “Non-alcoholic chocolate-flavored drinks and powder for the preparation of such drinks” in International Class 32. The examining attorney has indicated that the Applicant may place the term “soft” in front of the term “drink” if the nature of the goods are soft drinks. The examining attorney has indicated that soft drinks are classified in International Class 32 and milk shakes are classified in International Class 30. In response, the Applicant seeks to amend “Non-alcoholic chocolate-flavored drinks and powder for the preparation of such drinks” in International Class 32 to “Non-alcoholic chocolate-flavored soft drinks and powder for the preparation of such drinks.”
The examining attorney has indicated that the Applicant must clarify the wording “chocolate beverages with milk”, “cereal preparations”, and “flaked cereal foods” in the identification of goods. The examining attorney has suggested that the Applicant change “chocolate beverages with milk” to “chocolate-based beverages with milk”. The examining attorney has suggested that the Applicant change “flaked cereal foods” to “flaked breakfast cereal” in International Class 30.
The Applicant refers the examining attorney to the proposed amended goods in International Class 30 above. The Applicant seeks to change “chocolate beverages with milk” to “chocolate-based beverages with milk” in International Class 30. The Applicant also seeks to amend “cereal preparations” to “preparations made from cereal, namely corn flakes”. As suggested by the examining attorney, the Applicant seeks to change “flaked cereal foods” to “flaked breakfast cereal” in International Class 30.
The examining attorney has indicated that the Applicant must delete the parenthetical “(sweet)” because parentheses are not generally permitted. In response, the Applicant seeks to delete the parenthetical “(sweet)” to the right of the term “Candies” in International Class 30. The Applicant refers the examining attorney to the proposed amendment to the identification of Applicant’s goods in this section, Identification and Classification of Goods.
|
|
| GOODS AND/OR SERVICES SECTION (030)(current) | |
| INTERNATIONAL CLASS | 030 |
| DESCRIPTION | |
| Flavorings, other than essential oils, for beverages; Confectioneries, namely, snack foods, namely, chocolate; Confectionery made of sugar; Chocolate; Chocolate-based beverages; Chocolate 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; Cereal preparations; 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 Cereal Foods; Candies (sweets); Chocolate candy | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (030)(proposed) | |
| INTERNATIONAL CLASS | 030 |
| TRACKED TEXT DESCRIPTION | |
| Flavorings, other than essential oils, for beverages; Confectioneries, namely, snack foods,
namely, chocolate; Confectionery made of sugar; Chocolate; Chocolate-based beverages; |
|
| FINAL DESCRIPTION | |
| 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 corn flakes; 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, except frozen confections and yogurt and yogurt beverages | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (032)(current) | |
| INTERNATIONAL CLASS | 032 |
| DESCRIPTION | |
| Nonalcoholic chocolate-flavored drinks and powder for the preparation of such drinks; Syrup for making beverages; Syrup of chocolate for making beverages; Milk-shakes and powder for the preparation of milk-shakes | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (032)(proposed) | |
| INTERNATIONAL CLASS | 032 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Non-alcoholic chocolate-flavored soft drinks and powder for the preparation of such drinks; Syrup for making beverages; Syrup of chocolate for making beverages | |
| FILING BASIS | Section 1(b) |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Arlen L. Olsen/ |
| SIGNATORY'S NAME | Arlen L. Olsen |
| SIGNATORY'S POSITION | Attorney of record, NY bar member |
| DATE SIGNED | 10/18/2010 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Oct 18 13:48:26 EDT 2010 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XX-2 0101018134826852294-77968 077-470baef937f2d7298ba76 585149f4a4223-N/A-N/A-201 01018133558665797 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
In the office action of July 6, 2010, the examining attorney has rejected the Applicant’s mark BROWN COW based on likelihood of confusion. The examining attorney has also rejected the Applicant’s identification of goods for the applicant’s mark BROWN COW.
Refusal –Likelihood of Confusion
U.S. Trademark Registration No. 0256207
In rejecting the Applicant’s mark, the examining attorney has cited U.S. Trademark Registration No. 0256207. The examining attorney has indicated that the Applicant’s current goods include “flavorings, other than essential oils, for beverages”. The examining attorney also has indicated that the Applicant’s goods include “chocolate-based beverages”, and “chocolate beverages with milk”. Further, the examining attorney has indicated that the Applicant’s goods include “nonalcoholic chocolate-flavored drinks and powder for the preparation of such drinks”, “syrup for making beverages”, and “syrup of chocolate for making beverages”. The examining attorney has stated that the goods of U.S. Trademark Registration No. 0256207 is “chocolate syrup intended to be used as the basic flavor for malted milk.” The examining attorney’s position is that the Applicant’s above referenced goods are similar or identical to the registrant’s good recited in U.S. Trademark Registration No. 0256207.
The Applicant seeks to amend the Applicant’s “chocolate beverages with milk” in International Class 30 to “chocolate-based beverages with milk”. The Applicant seeks to amend the Applicant’s “non-alcoholic chocolate-flavored drinks and powder for the preparation of such drinks” in International Class 32 to “non-alcoholic chocolate-flavored soft drinks and powder for the preparation of such drinks”.
The Applicant argues that there is no likelihood of confusion because U.S. Trademark Registration No. 0256207 has not been renewed. In the alternative, the Applicant argues that there is no likelihood of confusion because the marks are sufficiently different. The Applicant’s mark does not have a similar appearance to the composite mark BROWN COW of U.S. Trademark Registration No. 0256207. U.S. Trademark Registration No. 0256207 includes a side view image of a cow. Above the side view image of the cow, the words “BROWN COW” appear inside an arch-shaped border. In contrast, each letter of the Applicant’s stylized mark BROWN COW gradually changes colors. The colors of the Applicant’s letters fade from dark red to orange-red. Then, the colors of the Applicant’s letters change from orange-red to tan.
U.S. Trademark Registration No. 0294715
The examining attorney has indicated that there is a likelihood of confusion between U.S. Trademark Registration No. 0294715 and the Applicant’s mark. U.S. Trademark Registration No. 0294715 is for a mark BROWN COW and Design. The examining attorney has indicated that the goods of U.S. Trademark Registration No. 0294715 include “frozen confections”.
In response to the examining attorney’s rejections based on U.S. Trademark Registration No. 0294715, the Applicant seeks to expressly exclude frozen confections in International Class 30. The Applicant refers the examining attorney to the proposed amendment to the identification of goods below. According to the Applicant’s proposed amendment to the identification of goods in International Class 30, the Applicant seeks to add the language “except frozen confections and yogurt and yogurt beverages”.
There is no likelihood of confusion because the appearance and commercial impression of U.S. Trademark Registration No. 0294715 is dissimilar to the appearance and commercial impression of the Applicant’s mark. U.S. Trademark Registration No. 0294715 is a composite mark. U.S. Trademark Registration No. 0294715 includes the word portion BROWN COW in stylized letters. A cow is looking through the letter “O” in the word BROWN. A second cow is looking through the letter “O” in the word COW. The cows, looking through the letter “O”, evoke an impression that the cows are looking through holes in a fence. The letters “B” and “R” are falling over and evoke an impression of a leaning or tattered fence.
The Applicant’s mark Brown Cow is in stylized format. Each letter of the Applicant’s mark BROWN COW gradually changes colors. The top color is dark red. The dark red color fades to orange-red. Then, the orange-red color fades to tan. The Applicant’s mark BROWN COW does not evoke an impression that the cows are looking through holes in a leaning or tattered fence.
U.S. Trademark Registration No. 2036725
The examining attorney’s position is that there is a likelihood of confusion between U.S. Trademark Registration No. 2036725 and the Applicant’s mark. U.S. Trademark Registration No. 2036725 is for the word mark BROWN COW on and in connection with “frozen confections” in International Class 30. The Applicant’s stylized mark BROWN COW is for “confectioneries, namely, snack foods, namely, chocolate”. The Applicant’s goods also include “confectionery made of sugar” and “chocolate”.
In response to the examining attorney’s rejection, the Applicant seeks to expressly exclude frozen confections in International Class 30. The proposed amendment to the identification of goods in International Class 30 has the language “except frozen confections and yogurt and yogurt beverages”. In light of the proposed express exclusion of the “frozen confections”, the Applicant believes there is no likelihood of confusion.
U.S. Trademark Registration No. 3205083
In refusing to register the Applicant’s mark BROWN COW, the examining attorney has cited U.S. Trademark Registration No. 3205083. The goods listed in U.S. Trademark Registration No. 3205083 are as follow: “Yogurt and yogurt beverages, not including frozen yogurt or frozen confections” in International Class 29. The examining attorney has pointed out that the Applicant has not specified the Applicant’s beverages as yogurt beverages. However, the examining attorney has indicated that there is a likelihood of confusion between the Applicant’s mark and U.S. Trademark Registration No. 3205083.
In response to the examining attorney’s rejection, the Applicant seeks to expressly exclude “yogurt and yogurt beverages” in the Applicant’s proposed amendment to the Applicant’s identification of goods in International Class 30. The proposed amendment to the identification of goods in International Class 30 has the language “except frozen confections and yogurt and yogurt beverages”. Thus, the goods in U.S. Trademark Registration No. 3205083 are sufficiently different from the Applicant’s goods to avoid likelihood of confusion.
There is no general rule that the word portion of a composite mark must be the dominant portion of the composite mark. U.S. Trademark Registration No. 3205083 is a composite mark. U.S. Trademark Registration No. 3205083 includes the word portion BROWN COW. The design portion of U.S. Trademark Registration No. 3205083 displays a cow head peaking over a picket fence. The design portion of U.S. Trademark Registration No. 3205083 is the dominant portion of the mark BROWN COW and Design.
The Applicant’s mark Brown Cow is in stylized format. As discussed above, each letter of the Applicant’s mark BROWN COW gradually changes colors. The colors change from dark red to orange-red and from orange-red to tan. The composite mark BROWN COW and Design of U.S. Trademark Registration No. 3205083 is sufficiently dissimilar in appearance and commercial impression to Applicant’s stylized mark BROWN COW. Therefore, no likelihood of confusion exists between U.S. Trademark Registration No. 3205083 and the Applicant’s mark.
Identification and Classification of Goods
The Applicant proposes that the examining attorney amend the goods in Classes 30 and 32 as follow:
International 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 corn flakes; 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, except frozen confections and yogurt and yogurt beverages.
International 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.
The examining attorney has indicated that the Applicant must amend the application to classify “milk-shakes and powders for the preparation of milk-shakes” in International Class 30. In response, the Applicant seeks to classify “milk-shakes and powders for the preparation of milk-shakes” in International Class 30. The Applicant refers the examining attorney to the Applicant’s proposed amendment of goods in International Class 30 above.
The examining attorney has indicated that the Applicant must specify the nature of the drinks referred to as “Non-alcoholic chocolate-flavored drinks and powder for the preparation of such drinks” in International Class 32. The examining attorney has indicated that the Applicant may place the term “soft” in front of the term “drink” if the nature of the goods are soft drinks. The examining attorney has indicated that soft drinks are classified in International Class 32 and milk shakes are classified in International Class 30. In response, the Applicant seeks to amend “Non-alcoholic chocolate-flavored drinks and powder for the preparation of such drinks” in International Class 32 to “Non-alcoholic chocolate-flavored soft drinks and powder for the preparation of such drinks.”
The examining attorney has indicated that the Applicant must clarify the wording “chocolate beverages with milk”, “cereal preparations”, and “flaked cereal foods” in the identification of goods. The examining attorney has suggested that the Applicant change “chocolate beverages with milk” to “chocolate-based beverages with milk”. The examining attorney has suggested that the Applicant change “flaked cereal foods” to “flaked breakfast cereal” in International Class 30.
The Applicant refers the examining attorney to the proposed amended goods in International Class 30 above. The Applicant seeks to change “chocolate beverages with milk” to “chocolate-based beverages with milk” in International Class 30. The Applicant also seeks to amend “cereal preparations” to “preparations made from cereal, namely corn flakes”. As suggested by the examining attorney, the Applicant seeks to change “flaked cereal foods” to “flaked breakfast cereal” in International Class 30.
The examining attorney has indicated that the Applicant must delete the parenthetical “(sweet)” because parentheses are not generally permitted. In response, the Applicant seeks to delete the parenthetical “(sweet)” to the right of the term “Candies” in International Class 30. The Applicant refers the examining attorney to the proposed amendment to the identification of Applicant’s goods in this section, Identification and Classification of Goods.