Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

 

Serial Number  78/406416

 

This letter is in reply to the applicant’s communication filed on 5/17/05.  In that communication, the applicant (1) enters a claim of ownership of a prior registration and (2) argues against the Section 2(d) refusal by submitting a consent agreement.

 

Number 1 is acceptable.  Number 2 is not acceptable and also raises a new issue.

 

NON-FINAL ACTION

 

CONSENT AGREEMENT UNACCEPTABLE

The consent agreement does not refer to the applicant’s use of the mark FIRESIDE standing alone.  While the registrant agrees not to use the mark FIRESIDE standing alone in connection with coffee products, there is no other reference to that particular mark.  Instead, the consent agreement refers to the use and registration by applicant of its marks “FIRESIDE COFFEE” and “FIRESIDE COFFEE and design.”  

 

A proper consent agreement should refer to the mark at hand.  The applicant may submit a different consent agreement related to the proposed mark FIRESIDE.

 

If applicant wishes to submit a proper consent agreement from the registrant consenting to the registration of the mark, this refusal will be reconsidered.  Please note that consent agreements are but one factor to be taken into account with all of the other relevant circumstances bearing on the likelihood of confusion referred to in §2(d).  In re N.A.D. Inc., 754 F.2d 996, 224 USPQ 969, 971 (Fed. Cir. 1985); TMEP §1207.01(d)(viii).

 

Factors to be considered in weighing a consent agreement include: whether the agreement is unilateral or bilateral; whether the parties agree that no confusion exists; whether the trade channels of the respective goods are related and a statement indicating a clear indication of the respective, separate trade channels; whether the parties will make efforts to prevent confusion, and cooperate and take steps to avoid any confusion that may arise in the future; and whether the marks have been used for a period of time without evidence of actual confusion.  See In re Mastic, 829 F.2d 1114, 1115, 4 USPQ2d 1292, 1294 (Fed. Cir. 1987) (relying on the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563 (C.C.P.A. 1973)).

 

SECTION 2(d) REFUSAL – Continued.

The Section 2(d) refusal is continued pending the resolution of the consent agreement issue.

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

 

/tmg/

Tonja M. Gaskins

Trademark Attorney

Law Office 112

(571) 272-9406

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

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

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

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