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. 

 

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

 

THIS IS A FINAL ACTION

 

The office has received Applicant’s communication on February 5, 2007, in which the following requirements have been satisfied and are now withdrawn:  (1) Applicant’s amended Identification of goods for Classes 29 and 30; (2) Applicant’s addition of Class 30; (3) Applicant’s statement indicating the mark is not in color; (4)  Applicant’s Translation statement; and (5) Applicant’s statement regarding significance of the mark.   TMEP §714.04.

 

Registration was refused under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration No. 2917337 as to be likely to cause confusion.  Registration attached to prior Office action.

 

The examining attorney has considered the applicant’s arguments carefully but has found them unpersuasive.  For the reasons below, the refusal under Section 2(d) is maintained and made FINAL.

 

Trademark Section 2(d) Refusal -- Likelihood of Confusion

 

Registration was refused under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration

No. 2917337 as to be likely, when used in connection with the specific goods identified in Classes 29 and 30, to cause confusion, or to cause mistake, or to deceive.

 

For the reasons set forth below, the refusal under Trademark Act Section 2(d), 15 U.S.C. §1052(d), only with regard to the specific Class 29 and 30 goods identified as:  cooking oil, marinated sauces, namely soy sauces, hoisin sauce, black pepper sauce; five-spice powder; and curry powder for cooking and marinating, is now made FINAL with respect to U.S. Registration No. 2917337.  37 C.F.R. §2.64(a).  (Registration attached to prior Office action.)  The examining attorney hereby references the Trademark Act Section 2(d) refusal as presented in the Office action of September 25, 2006, and incorporates those statements and attached evidence herein.

 

The examining attorney shall address Applicant’s arguments presented in the response to Office action.

 

First, Applicant argues that a “likelihood of confusion determination must be made in light of the total effect of the product and package in the eye and mind of the ordinary purchaser,” yet applicant applies the appropriate standard, which is “A variety of factors may be material in assessing the likelihood of confusion and no one of these factors by itself is dispositive of the likelihood of confusion question.” 

 

Trademark Act Section 2(d) bars registration where an applied-for mark so resembles a registered mark that it is likely, when applied to the goods, to cause confusion, mistake or to deceive the potential consumer as to the source of the goods.  TMEP §1207.01.  The Court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 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 relatedness of the goods.  The overriding concern is to prevent buyer confusion as to the source of the goods.  In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt as to the existence of a likelihood of confusion must be resolved in favor of the registrant.  In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988); Lone Star Mfg. Co. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368 (C.C.P.A. 1974).

 

Facts:

 

The applicant is proposing the composite mark consisting of the literal element YUTAKA, along with the Japanese characters that transliterate to YUTAKA, all within a rectangular carrier design,  for use in connection with the Class 29 amended goods identified as: Cooking oil, yogurt, cheese, processed edible seaweed, namely, seaweed nori, and the Class 30 goods identified as: 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; processed cereals and grains.  Registrant provides shrimp sauce in connection with the composite mark YUTAKA with a person with chopsticks partially encompassed within a circular carrier design.

 

Similarity and Comparison of the Marks:

 

Next, Applicant argues that as composite marks, the appearance and design differences between Applicant’s and Registrant’s marks is sufficient to avoid a likelihood confusion.  Applicant gives particular attention to a side-by-side comparison as showing no particular dominant element(s) in either marks, and that the use of identical words does not automatically indicate the two marks are similar.

 

In response to Applicant’s arguments, the examining attorney asserts the following.  With respect to Applicant’s use of the literal elements “YUTAKA” and a design element as opposed to Registrant’s “YUTAKA” with person with chopsticks partially encompassed within a circular carrier design, does not adequately distinguish between Applicant’s and Registrant’s marks.  Regarding the issue of likelihood of confusion, the question is not whether people will confuse the marks, but whether the marks will confuse people into believing that the goods they identify come from the same source.  In re West Point-Pepperell, Inc., 468 F.2d 200, 175 USPQ 558 (C.C.P.A. 1972).  For that reason, the test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison.  The question is whether the marks create the same overall impression.  Recot, Inc. v. M.C. Becton, 214 F.2d 1322, 54 USPQ2d 1894, 1890 (Fed. Cir. 2000); Visual Information Inst., Inc. v. Vicon Indus. Inc., 209 USPQ 179 (TTAB 1980).  The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.  Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP §1207.01(b). 

 

As a general rule, consumers are more inclined to focus on the first word, prefix or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005); see also Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions).

 

Marks may be confusingly similar in appearance where there are similar terms or phrases or similar parts of terms or phrases appearing in both applicant’s and registrant’s mark.  See e.g., Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986), aff’d 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH and COMMUNICASH); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB and “21” CLUB (stylized)); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re Collegian Sportswear Inc., 224 USPQ 174 (TTAB 1984) (COLLEGIAN OF CALIFORNIA and COLLEGIENNE); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (MILTRON and MILLTRONICS); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (LUTEXAL and LUTEX); TMEP §§1207.01(b)(ii) and (b)(iii).

 

 

 

The marks are compared in their entireties under a Section 2(d) analysis.  Nevertheless, one feature of a mark may be recognized as more significant in creating a commercial impression.  Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion.  In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987); TMEP §1207.01(b)(viii).

 

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.  Therefore, the word portion is normally accorded greater weight in determining likelihood of confusion.  In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976); TMEP §1207.01(c)(ii).

 

The literal portions of both marks are nearly identical in appearance, sound and meaning.  The addition of the design element does not obviate the similarity between the marks in this case.  In re Shell Oil Company, 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); Coca-Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975); TMEP §1207.01(c)(ii).

 

 

Relatedness of the Goods:

 

Applicant argues their goods are not similar to Registrant’s nor are they goods which compete in the same or similar channels of trade.  The examining attorney finds these arguments to be unpersuasive.  The goods of the parties need not be identical or directly competitive to find a likelihood of confusion.  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.  Visa International Service Assoc. v. Bankcard Holders of America, 211 USPQ 28 (N.D. Cal. 1981); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978); In re William Hodges & Co., Inc., 190 USPQ 47 (TTAB 1976).

 

Applicant argues Registrant appears to be a restaurant, and therefore a presumption of limitation of distribution of Registrant’s goods should be presumed.  Registrant’s entity type places any limitation upon their potential channels and/or volume of distribution.  The presumption under Trademark Act Section 7(b), 15 U.S.C. §1057(b), is that the registrant is the owner of the mark and that use of the mark extends to all goods identified in the registration.  The presumption also implies that the registrant operates in all normal channels of trade and reaches all classes of purchasers of the identified goods.  In re Melville Corp., 18 USPQ2d 1386, 1389 (TTAB 1991); McDonald’s Corp. v. McKinley, 13 USPQ2d 1895, 1899 (TTAB 1989); RE/MAX of America, Inc. v. Realty Mart, Inc., 207 USPQ 960, 964-5 (TTAB 1980).

 

Attached are copies of printouts from the USPTO X-Search database, which show third-party registrations of marks used in connection with the same or similar goods as those of applicant and registrant in this case.  These printouts have probative value to the extent that they serve to suggest that the goods listed therein, namely shrimp sauce, and Applicant’s cooking oil, marinated sauces, namely soy sauces, hoisin sauce, black pepper sauce; five-spice powder; and curry powder for cooking and marinating, are of a kind that may emanate from a single source.  See In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-1218 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 at n.6 (TTAB 1988).

 

The products of Applicant and Registrant, where not identical, are commercially related for purposes of a Section 2(d) analysis in that they share similar trade channels and a similar class of purchasers.  Prospective purchasers encountering the marks are likely to believe that the goods emanate from a common source.  Confusion is likely.

 

Sophisticated Purchasers:

 

Applicant argues the additional position that consumers of both Applicant’s and Registrant’s products are highly sophisticated target consumers, and as such, a comparison of the goods of the parties does not increase the likelihood of confusion.   The examining attorney responds, stating, the fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion.  See In re Decombe, 9 USPQ2d 1812 (TTAB 1988); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983); TMEP §1207.01(d)(vii).

 

 

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.

 

Response Guidelines

 

If applicant does not respond within six months of the mailing date of this final action, then the following goods to which the final refusal applies will be deleted from the application:  cooking oil, marinated sauces, namely soy sauces, hoisin sauce, black pepper sauce; five-spice powder; and curry powder for cooking and marinating. 

 

The application will proceed forward for the remaining goods identified by Applicant as:  yogurt, cheese, processed edible seaweed, namely seaweed, nori, Class 29; Rice, dairy products, namely, ice cream, frozen confection desserts; biscuits; powdered mixes, namely, tempura batter mix; and processed cereals and grains.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).

 

Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

 

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matters.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

 

 

 

 

/Thomas M. Manor/

Trademark Examining Attorney

Law Office 110

Phone :  (571) 270-1519

Fax. No. (571) 273-9110

 

 

 

 

NOTICE OF NEW PROCEDURE FOR E-MAILED OFFICE ACTIONS:  In late spring 2007, for any applicant who authorizes e-mail communication with the USPTO, the USPTO will no longer directly e-mail the actual Office action to the applicant.  Instead, upon issuance of an Office action, the USPTO will e-mail the applicant a notice with a link/web address to access the Office action using Trademark Document Retrieval (TDR), which is located on the USPTO website at http://portal.gov.uspto.report/external/portal/tow.  The Office action will not be attached to the e-mail notice.  Upon receipt of the notice, the applicant can then view and print the actual Office action and any evidentiary attachments using the provided link/web address.  TDR is available 24 hours a day, seven days a week, including holidays and weekends.  This new process is intended to eliminate problems associated with e-mailed Office actions that contain numerous attachments.

 

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.