UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  78/358572

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

LIKELIHOOD OF CONFUSION

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the applicant's mark, when used on or in connection with the identified services, so resembles the marks in U.S. Registration Nos. 2430881 and 2501292 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP section 1207.  See the enclosed registrations.

 

Section 2(d) of the Trademark Act bars registration where a mark so resembles a registered mark, that it is likely, when applied to the services, to cause confusion, or to cause mistake or to deceive. TMEP section 1207.01.  The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), listed the principal factors to consider in determining whether there is a likelihood of confusion.  Among these factors are the similarity of the marks as to appearance, sound, meaning and commercial impression and the similarity of the services.  The overriding concern is to prevent buyer confusion as to the source of the services.  Miss Universe, Inc. v. Miss Teen U.S.A., Inc., 209 USPQ 698 (N.D. Ga. 1980).  Therefore, any doubt as to the existence of a likelihood of confusion must be resolved in favor of the registrant.  Lone Star Mfg. Co. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368 (CCPA 1974).

 

Here, the applicant seeks registration of the mark THE CHAMBERLAIN for its Hotel and resort services; provision of general purpose facilities for meetings, conferences and exhibitions; reservation services for hotel accommodations; and food and beverage services.  The registrant applies the marks “CHAMBERLIN’S MARKET & CAFÉ – YOUR NATURAL FOOD CENTER” and “CHAMBERLIN’S” to its Restaurant services and carry out restaurant services rendered in connection with a health food store, featuring health and natural food and; Retail health and natural food stores; retail delicatessen services rendered in connection with a health food store; retail bakery shops rendered in connection with a health food store.

 

Consumers, who are familiar with the registrants’ restaurant services and who then encounter applicant’s food and beverage services, are likely to believe the services of the parties to emanate from a single source.

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.

 

SERVICES INDEFINITE

The recitation of services is unacceptable as indefinite.  TMEP section 1402.01.  The applicant may adopt the following recitation, if accurate:

 

Provision of general purpose facilities for meetings, conferences and exhibitions, in Int. Cl. 35

 

Hotel and resort services; reservation services for hotel accommodations; and food and beverage services, in Int. Cl. 43 

 

Please note that, while the identification of services may be amended to clarify or limit the services, adding to the services or broadening the scope of the services is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include services that are not within the scope of the services set forth in the present identification.

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the requirements below for those goods and/or services based on actual use in commerce under Trademark Act Section 1(a):

 

1)                        Applicant must list the goods/services by international class with the classes listed in ascending numerical order. TMEP §1403.01.

 

2)                        Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid. 37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.

 

RESPONSE GUIDELINES

No set form is required for response to this Office action.  The applicant may respond via fax, electronic mail or traditional mail.  The applicant should simply set forth the required changes or statements and request that the Office enter them.  The applicant must sign the response.

In all correspondence to the Patent and Trademark Office, the applicant should list the name and law office of the examining attorney, the serial number of this application, the mailing date of this Office action, and the applicant's telephone number to speed up further processing.

Note For Electronic Responses

Any communications regarding pending applications sent via e-mail to any of the law office e-mail addresses must:

 

(1)  be in English;

(2)            include the entire response as e-mail text, not as an attachment;

(3)  list the serial number in the "Subject" line; and

(4)  include any specimens or evidence in jpg format only.

 

For security and compatibility reasons, the Office will not accept communications that include any attachments, other than those in jpg format.  Thus, no attachments in WordPerfect®, Word, Adobe® PDF or any other format EXCEPT jpg can be accepted. 

 

Additionally, all such communications sent via e-mail should (1) be signed electronically (using the same format accepted for electronically-filed applications, namely, the signatory must enter any combination of alpha/numeric characters that has been specifically adopted to serve the function of the signature, preceded and followed by the forward slash (/) symbol.  Acceptable "signatures" could include: /john doe/; /jd/; and /123-4567/.  (See 64 FR 33056, 33062 (June 21, 1999))); and (2) address every issue raised.  Failure to comply with these additional requirements will result in delays in prosecuting your application.

 

Note Regarding  Timely Filing Of Responses

The statutory period for response to an Office action during examination is six months.  15 U.S.C. §1062(b).  The examining attorney does not have any discretion to shorten or extend such period. 

 

The crucial date for the response is the date it is received by the Office, not the date it is mailed by the applicant.  The applicant should see 37 C.F.R. §§1.8 and 1.10; TMEP §§702.02, 702.03 and 702.04(f), regarding certificate of mailing, certificate of transmission and "Express Mail" procedures to avoid lateness.

 

Note Regarding Status Of Application

Current status and status date information is available on-line at http://tarr.gov.uspto.report/ or, via push button telephone, for all federal trademark registration and application records maintained in the automated Trademark Reporting and Monitoring (TRAM) system.  The information may be accessed by calling (703) 305‑8747 from 6:30 a.m. until midnight, Eastern Time, Monday through Friday, and entering a seven‑digit registration number or eight‑digit application number, followed by the "#" symbol, after the welcoming message and tone.  Callers may request information for up to five registration number or application number records per call.

 

NOTICE:  TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER  2004

 

The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.

 

 

 

David T. Taylor

2900 Crystal Drive

Arlington, VA 22202

703-308-9112, ext. 164

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.