Offc Action Outgoing

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  78/556566

 

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

 

Search Results

Information is enclosed concerning pending Application Serial No. 78523742.  Although the Office records have been searched and no similar registered mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), there may be a likelihood of confusion under Section 2(d) of the Act between applicant’s mark and the mark in the above noted application.  The filing date of the referenced application precedes applicant’s filing date.  If the earlier-filed application registers, registration may be refused under Section 2(d).  37 C.F.R. §2.83.

 

Section 2(d) - Likelihood of Confusion Refusal

Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2356635.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq.  See the enclosed registration.

 

A likelihood of confusion determination requires a two-part analysis.  First the marks are compared for similarities in appearance, sound, connotation and commercial impression.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).  Second, the goods are compared to determine whether they are similar or related or whether the activities surrounding their marketing are such that confusion as to origin is likely.  In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re Int’l Tel. and Tel. Corp., 197 USPQ 910 (TTAB 1978); Guardian Prods. Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); TMEP §§1207.01 et seq.

 

In this case, the marks are identical.  Thus, there is really no issue that they will create the same commercial impression in the minds of consumers. 

The parties’ goods need not be identical or directly competitive to find a likelihood of confusion.  Instead, they need only be related in some manner, or the conditions surrounding their marketing be such that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods come from a common source.  In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Prods. Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re Int’l Tel. & Tel. Corp., 197 USPQ 910 (TTAB 1978); TMEP §1207.01(a)(i).

The registrant’s goods include “fresh fruits” and the applicant’s goods include “fresh apples”.  Though not specifically identical, the goods are likely to travel in the same trade channels and be encountered by the same class of purchasers.

 

Any doubt regarding a likelihood of confusion is resolved in favor of the prior registrant.  In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988); TMEP §§1207.01(d)(i).

 

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

 

The stated refusal refers to Class 31 only and does not bar registration in the other classes.

 

Applicant may respond to the stated refusal by doing one of the following:

 

(1)                 deleting the class to which the refusal pertains;

 

(2)                 arguing against the refusal of the combined application as a whole;

 

(3)                 filing a request to divide out the goods and/or services that have not been refused registration, so that the mark may be published for opposition in the classes to which the refusal does not pertain (See 37 C.F.R. §2.87 and TMEP §§l 110.05 and 1403.03 regarding the requirements for filing a request to divide); or

 

(4)                 changing the basis, if appropriate (the basis may not be changed for applications filed under Trademark Act §66(a)).

 

 

If applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the following requirement(s).

 

 

Identification of Goods

 

The current wording used to describe the Class 29 goods needs clarification as indicated. Applicant may adopt the following identification of goods, if accurate: 

 

cooking oil, cooking oil spray, shortening, evaporated and condensed milk, powdered milk, coffee non-dairy creamers, canned and bottled fruit, canned meat, canned fish, grated Parmesan cheese, peanut butter, jams, jellies, fruit preserves, fruit-based spreads, pickles, relish, ripe olives, Spanish olives, pimentos, peppers, raisins, prunes, dried fruit, processed potatoes, soup, canned tomatoes, canned vegetables, wet pack beans, namely, [specify];  canned mushrooms, baked beans, fresh meats, fresh pork, fresh chicken, frozen fresh processed meats, frozen fresh seafood, frozen fresh processed seafood, frozen fresh shrimp, frozen fresh lobster, frozen fresh crab, frozen crab cakes, deli meats, deli salads, packaged salads, jarred garlic, canned and bagged peanuts, milk, eggs, cheese, cream cheese, cottage cheese, ricotta cheese, yogurt, margarine, butter, vegetable based spreads, snack dips [excluding salsa & other sauces used as dips], sour cream, fruit toppings, nut toppings, whipped toppings, frozen fish sticks and fillets, frozen fruit, frozen vegetables, and fresh vegetable salads.

 

The current wording used to describe the Class 30 goods also needs clarification as indicated. Applicant may adopt the following identification of goods, if accurate: 

 

mixes for baking products, frostings, sugar, sugar substitutes, flour, pie fillings, breakfast cereals, hot cereal, instant breakfast, toaster pastries, fruit snacks, granola bars, cereal bars, pancake mix, waffle mix, pancake syrup, powdered drink mixes, cocoa, stuffing mixes, baking mixes, mayonnaise, salad dressings, tartar sauce, chili sauce, cocktail sauce, steak sauce, hot sauce, ketchup, mustard, vinegars, BBQ sauce, marinades, sloppy joe sauce, chocolate and marshmallow toppings, candy, marshmallows, puddings, gelatin mixes, pudding mixes, pasta, gravy mixes, seasoning mixes, spices, extracts, bread crumbs, croutons, Mexican sauces, Mexican dinners comprised primarily of [specify; e.g., burritos, chimichangas, enchiladas, and tamale; etc],  microwave popcorn, popped popcorn, pasta sauce, dry pasta, pizza sauce, honey, marshmallow créme, prepared rice, prepared rice mixes, macaroni & cheese,  mix for making combined noodle and sauce dish,  breads, rolls, pastries, cakes, doughnuts, bagels, cookies, ice cream, ice cream novelties, ice cream cones, salty snacks, namely, [specify; e.g, pretzels]; bread dough, taco shells, tortilla shells, frozen pie shells, frozen garlic bread and toast, frozen pot pies, frozen pizza snacks, frozen cereal-based snack foods, frozen rice-based snack foods, frozen wheat-based snack foods, frozen pizza bagels,  frozen pasta, frozen pizza, frozen waffles and frozen French toast.

 

 

The wording “snack nuts” in the Class 31 identification of goods needs clarification because  it is vague and the goods appear to be misclassified. While a “snack mix consisting primarily of processed nuts” is in Class 29, a “snack mix consisting primarily of candied nuts” is in Class 30. 

In addition, “seeds” is overbroad.  Applicant must specify the type of seeds for proper classification.  “Seeds for agricultural purposes” are  acceptable in Class 31. Finally, “in-shell peanuts” is vague.  Applicant may amend to “unprocessed peanuts”.

 

The wording “juice drinks” in the Class 32 identification of goods needs clarification because  it is indefinite.  Applicant may change this wording to “juice drinks, namely, [specify; e.g., fruit http://atlas/netacgi/ - h13http://atlas/netacgi/ - h15juice concentrates or fruit juice bases],” if accurate.  TMEP §1402.01.  Applicant must also amend to indicate that the “cider” is “sweet cider”.  “Hard cider” is in Class 33.

 

Class 5 is accepted.

 

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

 

For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.

 

 

Classification

 

Please note, the applicant has classified the “refried beans”  and “frozen baked potatoes” incorrectly by placing them in Class 30.  The applicant must amend the application to classify the goods in International Class  29.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

 

 

Applicant must also correct the classification of the “unpopped popcorn” currently in Class 31 in the application and amend the application to classify them in International Class 30.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

 

The “corn nuts” should be moved from Class 31 to International Class  29 unless applicant amends the identification to indicate that the nuts are “unprocessed”.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

 

 

 

 

NOTICE:  FEE CHANGE   

 

Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:

 

(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or 

 

(2)   $375 per international class if filed on paper

 

These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be  $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.

 

The new fee requirements will apply to any fees filed on or after January 31, 2005.

 

NOTICE:  TRADEMARK OPERATION RELOCATION

 

The Trademark Operation has relocated to Alexandria, Virginia.  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, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.

 

 

/kbp/

Kimberly Boulware Perry

Attorney - Law Office 112

phone: 571-272-9208; fax: 571-273-9112

direct email: kimberly.perry@uspto.gov

 

 

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 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.