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. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  78/845713

 

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

 

LIKELIHOOD OF CONFUSION

 

Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2917337.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq.  See the enclosed registration.

 

Taking into account the relevant Du Pont factors, a likelihood of confusion determination in this case involves a two-part analysis.  First, the marks are compared for similarities in appearance, sound, connotation and commercial impression.  In re E .I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).  Second, the goods or services 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 National Novice Hockey League, Inc., 222 USPQ 638 (TTAB 1984); 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.

 

Facts

 

Applicant proposes YUTAKA and design for use in connection with “Rice, noodles, cereals and grains; cooking oils and cooking wine; sauces and condiments, namely, soy sauces, marinated sauces, hoisin sauce, black pepper sauce; dairy products, namely, ice cream, yogurt, cheese and frozen desserts; biscuits and sugar confections; powdered mixes, namely, tempura mix batter, five-spice powder, curry powder for cooking and marinating, and seaweed nori.”  Registrant provides “shrimp sauce” in connection with the mark  YUTAKA and design

 

Similarity of the Marks

 

The marks are similar in that they share the identical literal Latin characters YUTAKA.  That the marks have differing design elements does not obviate the similarity between the marks.  Coca‑Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA 1975).  When a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser's memory and to be used in calling for the goods or services. In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976).  On the whole, the marks are confusingly similar.

 

Relatedness of the Goods/Services

 

Applicant’s food products and in particular the applicant’s sauces, spices and seasonings are commercially related to the registrant’s shrimp sauce.  Prospective purchasers encountering the marks are likely to believe that the goods emanate from a common source.  Confusion is likely.

 

If the applicant limited their identification of goods by deleting all goods except dairy products, namely, ice cream, yogurt, cheese and frozen desserts, sugar confections the 2(d) refusal would be carefully reconsidered.  To rephrase the suggested remaining items in acceptably definite format, see identification suggestion below. 

 

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.

 

Identification of Goods

 

The identification of goods is unacceptable as indefinite because some of the terms are overly broad so that the goods are vague and/or could fall into a different international class.  Suggestions and explanation is incorporated into the identification proposed below.  TMEP §1402.01.  The applicant may adopt the following identification, if accurate:

 

Cooking oil; yogurt, cheese, processed edible seaweed, namely, seaweed nori.  International class 29.

 

Rice, marinated sauces, namely, soy sauces, hoisin sauce, black pepper sauce; dairy products namely, ice cream; frozen confection desserts; biscuits and powdered mixes, namely, tempura batter mix, five-spice powder, curry powder for cooking and marinating.  International class 30.

 

Processed cereals and grains.  International class 30.

 

Unprocessed cereals and grains.  International class 31.

 

Cooking wine.  International class 33.

 

Multiple Class Requirements

 

If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.

 

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

 

(2)    The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid.  37 C.F.R. 2.86(a)(2); TMEP §§810.01 and 1403.01.  Although the fee information below is believed to be accurate, current fee information should be confirmed at http://www.uspto.gov.:

 

(i) $325 per class, for a TEAS Application, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html;

 

(ii) $275 per class, for a TEAS Plus Application, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html; and

 

(iii) $375 per class, when the fees are submitted with a paper response. 

 

 

Gray Drawing

 

The applicant’s statement that “the mark consists of the color gray, which is not being claimed as a feature of the mark” is confusing.

 

Applicant has submitted a drawing showing the mark in the color gray, along with black and/or white, but has not specified whether gray is meant to be a color in the mark or the mark is intended to be represented in black and white.  There are only two options for presenting the mark:  (1) color drawings, and (2) black and white drawings.  The appearance of gray has created an ambiguity as to whether the mark features color or is intended to be in black and white, and clarification is required.  37 C.F.R. §§2.52(b)-(b)(1); TMEP §807.07(e). 

 

(1)   If gray is not considered a color or a feature of the mark, applicant must submit the following statement:  “The mark is not in color.” 

 

(2)   If gray is considered a color and is a feature of the mark, applicant must submit a color claim and description for all the colors in the mark, including black and white.  The following format is suggested:  “The colors [specify gray and/or black and/or white] are claimed as a feature of the mark.  The color [name of color] appears in the wording [indicate wording, as appropriate] and in the design [identify design element as appropriate].”

 

Translation and Transliteration

 

Applicant must submit a translation and transliteration of the non-Latin characters in the mark.  37 C.F.R. §2.61(b); TMEP §809.  A transliteration is the phonetic spelling, in Latin characters, of the terms in the mark that are in non-Latin characters.  The following format is suggested:  “The non-Latin characters in the mark transliterate to “*,” and this means “*” in English.”

 

Significance of Mark

 

In addition to the translation and transliteration of the non-Latin characters, the applicant must indicate whether YUTAKA has any significance in the relevant trade, any geographical significance or any meaning in a foreign language.  37 C.F.R. Section 2.61(b).  Upon applicant’s response additional issues may arise.

 

 

 

 

/Thomas M. Manor/

Trademark Examining Attorney

Law Office 110

Phone :  (571) 270-1519

Fax. No. (571) 273-9110

 

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• 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.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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.