Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 78770202 has been amended as follows:
Argument(s)
In response to the substantive refusal(s), please note the following:

 

 

In the Office Action, the Examining Attorney refused registration on the basis of likelihood of confusion with U.S. Registration No. 1803492 for the mark ANDIAMO.  For the following reasons, this refusal is respectfully traversed. 

The Examining Attorney has cited In re E.I. du Pont de Nemours & Co., 177 U.S.P.Q. 563 (C.C.P.A.1973).  DuPont stands for the proposition that likelihood of confusion in regard to Section 2(d) depends upon whether the purchasing public would mistakenly assume that an applicant's goods originate from, are sponsored by, or are in some way associated with goods provided under a cited registration.  In DuPont, the court enunciated several factors relevant to determining likelihood of confusion, including the strength of the mark, the similarity or dissimilarity of the marks, the similarity or dissimilarity of the goods and services provided in association with the marks and the conditions under which the goods and services are provided.  However, the Examining Attorney focused on only two of these factors, similarity of the marks and similarity of the goods,  to the exclusion of all the other factors.

Strength of the Marks

“Whether a mark is classified as ‘strong’ or ‘weak’ is a very important element in deciding likelihood of confusion.  If the common element of conflicting marks is a word that is ‘weak,’ then this reduces the likelihood of confusion.  A portion of a mark may be ‘weak’ in the sense that such portion is descriptive, highly suggestive, or is in common use by many other sellers in the market.”  McCarthy on Trademarks, §23:48.

“[W]here a party uses a weak mark, his competitors may come closer to his mark than would be the case with a strong mark.”  Sure-Fit Products Co. v. The Saltzson Drapery Co., 17 U.S.P.Q. 295 (CCPA 1958); In re The Lucky Co., 209 U.S.P.Q. 422 (TTAB 1980); King Candy Co. v. Eunice King’ Kitchen, Inc., 182 U.S.P.Q. 108 (CCPA 1974) (confusion between two marks is unlikely if they are weak).

Moreover, in a crowded field, purchasers will not be confused between any two of the crowd because they “have become educated to distinguish between different marks on the basis of minute distinctions.”  Standard Brands, Inc. v. RJR Foods, Inc., 192 U.S.P.Q. 383 (TTAB 1976).

Likewise, the TMEP states that “[i]f the common element of two marks is ‘weak’ in that it is generic, descriptive or highly suggestive of the named goods or services, consumers typically will be able to avoid confusion unless the overall combinations have other commonality.”  TMEP section 1207.01(b)(ii).

The Board in Marcal Paper Mills, Inc. v. American Can Company, 212 U.S.P.Q. 852 (TTAB 1981) stated:

Third-party registrations are . . . incompetent, per se, to establish use of the registered marks or that they are known to the general or particular class of purchasers or that they play or have played any part in conditioning the trade or purchasers to react to portions of these marks; and they are insufficient to establish that any two other marks, considered as a whole, are not likely to collide in the marketplace . . . They are, however, probative to show that a registered mark may be a “weak” mark entitled to but a narrow scope of protection in a specific field . . . or to indicate the meaning or appropriateness of a conflicting portion of a mark in the same way as dictionaries or other indications of common usage.  See: The Conde Nast Publications, Inc. v. Miss Quality, Inc., 184 U.S.P.Q. 422 (CCPA 1975) and Tektronix, Inc. v. Daktronics, Inc., 189 U.S.P.Q. 693 (CCPA 1976).

Id. at 863 (emphasis added).  In Marcal Paper Mills, the Board found the inclusion of the term “AQUA,” for virtually identical goods, to be an insufficient basis for a finding of likelihood of confusion, finding no likelihood of confusion between AQUA-QUILT and AQUA-GARD for paper towels precisely because of the weakness of the term “AQUA.”

Like the term “AQUA” is weak as relates to “water,” the term “ANDIAMO is weak as it relates to goods or services referring to Italy or things Italian.   The facts in Colgate-Palmolive Co. v. American Cellophane & Plastic Films Corp., 185 U.S.P.Q. 301 (TTAB 1974) are similar to those of the instant case.  In this case, Colgate-Palmolive, owner of the registered mark “BAGGIES” for plastic storage bags opposed American’s application to register “BAG’M” for plastic trash bags.  In dismissing the opposition, the TTAB held that “it is manifest from the very nature of the term that opposer’s position in the field cannot serve to bestow upon it a proprietary right in “BAG” sufficient as to preclude the adoption and use thereof by others as a portion of their marks for like or similar products.  In fact, the third-party registrations are competent along with the acknowledged uses of marks in the plastic bag field containing the word “BAG” . . . to indicate that the inclusion in two marks of the “BAG” term cannot serve as a basis upon which to predicate a holding of confusing similarity if the marks are otherwise distinguishable.”  Id. at 304.

Applicant has attached, as Exhibit A, evidence of five active registrations incorporating the term “ANDIAMO” for Italian-related goods or services.   These registrations clearly evidence both the descriptive and diluted nature of the term  “ANDIAMO” for the services cited in Registrant’s field of use, and clearly demonstrate that the inclusion of the term “ANDIAMO” is an insufficient basis on which to predicate a finding of likelihood of confusion.   The term “ANDIAMO” in the cited registration is weak and directly informs consumers that the goods or services at issue are somehow related to things Italian.

An evaluation of Applicant’s and the cited Registrant’s marks in light of these registrations establishes that there is little basis for a finding of a likelihood of confusion.  The term “ANDIAMO” is weak and diluted, and thus entitled only to a very narrow scope of protection.

Similarity or Dissimilarity of the Marks

Further, the mere similarity or even identity between the two marks can never alone be decisive of likelihood of confusion.  McGregor-Donniger, Inc. v. Drizzle, Inc., 202 U.S.P.Q. 81, 89 (2^nd Cir. 1979).  Thus, in holding the mark “DRIZZLE” for women’s overcoats was not likely to cause confusion with “DRIZZLER” for golf jackets, the Court of Appeals for the Second Circuit stated:

First, even close similarity between the marks is not dispositive on the issue of likelihood of confusion.  Similarity in and of itself is not the acid test.  Whether the similarity is likely to provoke confusion is the crucial question.

            Id. (citations omitted).

Applicant acknowledges that the marks are identical.  However, the mere identification of common elements in two marks does not mean that a likelihood of confusion exists.  Source Services Corp. v. Chicagoland JobSource, Inc., 1 U.S.P.Q.2d 1048 (N.D.Ill. 1986).

Further, while such a refusal might be proper in the case of marks whose shared terms possess some measure of distinctiveness, the cited registration is not such a mark.  The cited registration is entitled to an extremely narrow scope of protection in view of the weakness of the term “ANDIAMO.”  

Similarity or Dissimilarity of the Goods and Services

Despite the similarities between the marks, a substantial factor weighing against the likelihood of confusion is the difference between the parties’ goods and services.  The cited ANDIAMO registration covers “restaurant services.”  Applicant’s goods are described as “spaghetti sauce.’ Registrant is a well known operator of hotels, and upon information and belief, its “ANDIAMO” restaurants are all located within its “Hilton” hotels.  Attached as Exhibit B are excerpts from Registrant’s websites depicting and describing several of its hotel-based “ANDIAMO” restaurants.  The websites show no signs at all that Registrant has expanded use of its mark to any foods, let alone spaghetti sauce. 

In  Jacobs v. International Multifoods, 668 F.2d 1234 (CCPA 1982),  the Court of Customs and Patent Appeals considered the alleged infringement of the trademark "BOSTON TEA PARTY" for tea by the service mark "BOSTON SEA PARTY" for restaurant services.  In a brief opinion, the court held that "to establish likelihood of confusion a party must show something more than that similar or even identical marks are used for food products and restaurant services."  This “something more” requirement was also applied by Federal Circuit in In re Coors Brewing Company, 343 F.3d 1340 (Fed. Cir. 2003). Coors attempted to register the trademark "BLUE MOON & Design" for a new line of beer. Coors was denied registration on the grounds that two similar trademarks were already registered for wine, and that a similar service mark was registered for use in connection with a restaurant. The Trademark Trial and Appeal Board rejected the notion that beer and wine were sufficiently related products to create confusion, but upheld rejection with respect to the existing registration for restaurant services. The Board did not consider that the restaurant's registered mark was a service mark, whereas Coors sought to register a trademark.

The Federal Circuit overturned the Board because the Court could not find a sufficient likelihood of confusion to justify the Trademark Office's rejection, noting that "it is quite uncommon for restaurants and beer to share the same trademark,"  Id. at 1346. The Court held that the Trademark Trial & Appeal Board's finding of likelihood of confusion was not supported by substantial evidence. After considering evidence of brewpubs and private-label beers, Judge Bryson  determined that "the degree of overlap between the sources of restaurant services and the sources of beer is de minimis."  Id.

In reaching its decision, the Court  returned to the "something more" standard of International Multifoods, indicating that the "evidence of overlap between beer and restaurant services is so limited that to uphold the Board's finding of relatedness would effectively overturn the requirement . . . that a finding of relatedness . . . requires 'something more' than the fact that restaurants serve food."  id.

In the instant case, the Examining Attorney has cited a small number of instances where the same mark is used both as a restaurant service mark and as a trademark for goods sold at the restaurant.   Applicant acknowledges that some restaurants do sell goods, like the example “Il Fornaio Authentic Italian Restaurant & Bakery.”  However, as in the Coors case, this evidence is de minimis, and “something more” is required to convincingly prove the overlap between Applicant’s goods and Registrant’s services in this case.  The available evidence in Exhibit B tends to prove the reverse, namely, that there is no overlap in fact.

Further, to support a determination of a likelihood of confusion, the respective goods must be related in some manner or marketed under conditions such that they might be encountered in the marketplace under circumstances that could, due to the similarity of the marks, give rise to confusion as to source, sponsorship or association.  In re International Telephone & Telegraph Corp., 197 U.S.P.Q. 910, 911 (TTAB 1978).  The Examining Attorney’s conclusion that consumers will perceive that the spaghetti sauce comes from a common source (Registrant’s hotel-based restaurants) is unsupported and provides no real evidence of how the marks would be perceived in the marketplace.  See In re Shell Oil Co., 26 U.S.P.Q.2d 1687, 1691 (Fed. Cir. 1993) (Michel, J., dissenting) (Board’s finding of relatedness unsupported by any evidence of record).  A finding of a likelihood of confusion “must be based on more than just theoretical possibilities and speculation.”  Shell Oil, 26 U.S.P.Q.2d at 1692 (citing Electronic Design & Sales, Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 717, 719, 21 U.S.P.Q.2d 1388, 1391, 1393 (Fed. Cir. 1992) (citations omitted).

While the Examining Attorney may draw reasonable inferences concerning the use of the cited registered mark, the Examining Attorney may not simply assume that the services covered by the cited registration and the present application are related.  See Shell Oil, 26 U.S.P.Q.2d at 1692.  It is the “[m]arketplace realities … [that] control [the] likelihood of confusion analysis, and ‘a finding based only on assumptions is, by definition, clearly erroneous’.”  Id. at 1691, 1692.

The Conditions Under Which and the Purchasers to Whom Goods and Services are Sold

It is well settled that if “the goods or services in question are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion is not likely.”  TMEP § 1207.01(a)(i).  (emphasis added)  Here, Applicant’s goods are offered and sold in grocery stores, shelved and displayed among other pasta sauces.   Purchasers in this context are well aware that they are not in a restaurant (or hotel) and that the ANDIAMO spaghetti sauce they are purchasing will not be prepared and served to them within the grocery store.  Nor are purchasers shopping for spaghetti sauce in a jar likely to travel to Registrant’s hotel-based restaurants to find it.

Likewise, purchasers looking to sit down for a lunch or dinner featuring Italian food at a restaurant are  highly unlikely to visit the pasta sauce section of a grocery store to do so.

Conclusion

As the Examining Attorney is aware, under the Lanham Act, a refusal to register under likelihood of confusion requires that such confusion as to the source of the services must not be merely possible, but likely.  A mere possibility of confusion is an insufficient basis for refusal under Section 2(d).  See In re Massey-Ferguson, Inc., 222 U.S.P.Q. 367, 368.

In short,  Applicant submits that reconsideration of the du Pont factors, including “strength of the mark” and “conditions under which and the purchasers to whom the goods or services are sold,” in addition to “similarity of the marks” and “similarity or dissimilarity of the goods or services” leads one to conclude that all but perhaps one factor (“similarity of the marks”) weighs against a likelihood of confusion. When appropriate factors are taken into account, they clearly balance in favor of no likelihood of confusion. Therefore, Applicant respectfully requests withdrawal of the likelihood of confusion refusal.

Evidence
Evidence in the nature of Exhbit A - certificates of registration for ANDIAMO marks; Exhibit B - excerpts from Registrant's websites regarding its hotel-based Andiamo restaurants has been attached.
Original PDF file:
evi_69222245190-111935823_._Exhibit_A.pdf
Converted PDF file(s) (6 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Original PDF file:
evi_69222245190-111935823_._Exhibit_B.pdf
Converted PDF file(s) (10 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10


Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii). If the applicant is seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date. 37 C.F.R. Secs. 2.34(a)(1)(i). The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true.

Signature: /Michael A. Lisi/      Date: 12/09/2006
Signatory's Name: Michael A. Lisi
Signatory's Position: Attorney

Response Signature
Signature: /Michael A. Lisi/     Date: 12/09/2006
Signatory's Name: Michael A. Lisi
Signatory's Position: Attorney
        
Serial Number: 78770202
Internet Transmission Date: Sat Dec 09 11:25:40 EST 2006
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-200612091125401
03246-78770202-360f79a64f2dd99f154e95474
879f67ad33-N/A-N/A-20061209111935823469