UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 79134540
MARK: BRANDT
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Carl-Jürgen Brandt
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1171637
STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION: TO AVOID ABANDONMENT OF THE REQUEST FOR EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS PROVISIONAL FULL REFUSAL NOTIFICATION WITHIN 6 MONTHS OF THE “DATE ON WHICH THE NOTIFICATION WAS SENT TO WIPO (MAILING DATE)” LOCATED ON THE WIPO COVER LETTER ACCOMPANYING THIS NOTIFICATION.
In addition to the Mailing Date appearing on the WIPO cover letter, a holder (hereafter “applicant”) may confirm this Mailing Date using the USPTO’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. To do so, enter the U.S. application serial number for this application and then select “Documents.” The Mailing Date used to calculate the response deadline for this provisional full refusal is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
This is a PROVISIONAL FULL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application. See 15 U.S.C. §1141h(c). See below in this notification (hereafter “Office action”) for details regarding the provisional full refusal.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods, and similarity of the trade channels of the goods. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
Registrant owns the mark BRANDT with a geometric design containing a B. Applicant has proposed the mark BRANDT with a butterfly design.
The word portions of the marks have virtually the same stylization and are nearly identical in appearance. In addition, they are identical in sound, connotation, and commercial impression; therefore, the addition of the different design elements does not obviate the similarity of the marks in this case. See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii). The marks create a highly similar commercial impression.
Registrant uses the mark for “snacks, namely, processed nuts” and “cake, pastry, chocolate, chocolates with alcoholic fillings, chocolate coatings, candy, pralines, marzipan, rusks, processed grains.” Applicant intends to use the mark for “Snacks, mainly consisting of nuts and potatoes; foodstuffs made from extruded potato products; potato crisps, potato sticks; raisins, hazelnut, peanut, cashew nut and pistachio nut kernels, and almonds, dried, roasted, salted and/or spiced; dried fruit” and “Chocolate and chocolate goods (also alcohol-filled chocolate goods and chocolate coatings), confectionery (also in the form of dragees), pralines, marzipan; cocoa; pastries and cookies, in particular long-life cakes and pastries; rusk, savoury biscuits; bread; crisp bread; crisp breads; snack products, mainly consisting of cereals, cocoa, cakes and/or pastry; rusk, either covered with almonds or raisins, hazelnuts, peanuts, cashew nuts or pistachio nuts; foodstuffs made from extruded wheat, rice and maize products; popcorn; sponge fingers, cakes, sweets; pretzels; muesli; preparations made from cereals; prepared cereals for human consumption, in particular rye, spelt, wheat, maize, barley, oats, crushed oats, husked oats, oat flakes, oat bran (cereals preparations) and oatmeal; prepared meals mainly consisting of prepared rye for human consumption, spelt, wheat, maize, barley, oats; cereal-based snack food; cereal flakes; maize flakes (corn flakes); salt sticks.”
Applicant and registrant both offer nuts, confectionery, and processed grains. Applicant’s other goods are closely related to registrant’s goods because they are also snack foods and foods made from processed grains. The goods are identical in part and otherwise closely related.
When confronted with identical goods bearing highly similar marks, a consumer is likely to have the mistaken belief that the goods originate from the same source. Because this likelihood of confusion exists, registration must be refused.
(1) Record the assignment with the USPTO’s Assignment Recordation Branch (ownership transfer documents such as assignments can be filed online at http://etas.uspto.gov) and promptly notify the trademark examining attorney that the assignment has been duly recorded.
(2) Submit copies of documents evidencing the chain of title.
(3) Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant is the owner of U.S. Registration No. 1640625.”
The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting therefrom, declares that all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.
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(Signature)
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(Print or Type Name and Position)
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(Date)
In the alternative, applicant may submit a declaration online using the Trademark Electronic Application System (TEAS) response to Office action form at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. When in the screen of the TEAS response form wizard, answer “yes” to the wizard question relating to submitting a “signed declaration,” and follow the instructions within the form for signing. See 37 C.F.R. §§2.20, 2.33(a)-(b)(1), 2.193(a)-(e)(1); TMEP §§611.01(c), 804.01(b).
TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.25, 3.73(a)-(b); TMEP §502.02(a).
Recording a document with the Assignment Recordation Branch does not constitute a response to an Office action. TMEP §503.01(d).
Applicant must respond to the requirements set forth below.
IDENTIFICATION OF GOODS
In Class 29, applicant must list particular foodstuffs made from extruded potato products. Applicant must also clarify that its hazelnut, peanut, cashew nut and pistachio nut kernels and almonds are processed if accurate and amend the wording “raisins, hazelnut, peanut, cashew nut and pistachio nut kernels, and almonds, dried, roasted, salted and/or spiced” so that it is clear which goods the wording “dried, roasted, salted and/or spiced” refer to.
In Class 30, applicant must list particular chocolate goods (also alcohol-filled chocolate goods and chocolate coatings); confectionery (also in the form of dragees); foodstuffs made from extruded wheat, rice and maize products; and preparations made from cereals. Applicant must also provide a further description of its sponge fingers and salt sticks. Applicant must clarify the wording “prepared meals mainly consisting of prepared rye for human consumption, spelt, wheat, maize, barley, oats” to indicate that the wording “spelt, wheat, maize, barley, oats” also refers to the primary ingredients in the meals, if accurate.
An application must specify, in an explicit manner, the particular goods on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce. See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Generally, the terminology “and/or” and “or” is not sufficiently explicit language in identifications because it is not clear whether applicant is using the mark, or intends to use the mark, on all the identified goods. See TMEP §1402.03(a). Therefore, applicant should replace “and/or” with “and” in the identification of goods, if appropriate, or rewrite the identification with the “and/or” deleted and the goods specified using definite and unambiguous language.
In an application filed under Trademark Act Section 66(a), an applicant may not change the classification of goods from that assigned by the International Bureau in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Further, in a multiple-class Section 66(a) application, an applicant may not transfer goods from one existing international class to another. 37 C.F.R. §2.85(d); see TMEP §§1402.07(a), 1904.02(c).
Therefore, any modification to this wording must identify goods in International Classes 29 and 30, the classification specified in the application for these goods.
The following substitute wording is suggested, if accurate:
“Snacks, mainly consisting of nuts and potatoes; foodstuffs made from extruded potato products, namely, [applicant must specify, e.g., potato chips, potato puffs, etc.]; potato crisps, potato sticks; raisins, processed hazelnut, peanut, cashew nut and pistachio nut kernels, and processed almonds, all being dried, roasted, salted and spiced; dried fruit” in International Class 29
“Chocolate and chocolate goods, alcohol-filled chocolate goods, and chocolate coated goods, namely, [applicant must specify, e.g., chocolate bars; confectionery, namely, [applicant must specify, e.g., candy dragees], pralines, marzipan; cocoa; pastries and cookies, in particular long-life cakes and pastries; rusk, savoury biscuits; bread; crisp bread; crisp breads; snack foods, mainly consisting of cereals, cocoa, cakes and pastry; rusk, either covered with almonds or raisins, hazelnuts, peanuts, cashew nuts or pistachio nuts; foodstuffs made from extruded wheat, rice and maize products, namely, [applicant must specify, e.g., extruded wheat snacks, extruded corn snacks, rice-based snack foods, etc.]; popcorn; sponge fingers being small sponge cakes, cakes, sweets; pretzels; muesli; preparations made from cereals, namely, [applicant must specify, e.g., breakfast cereals]; prepared cereals for human consumption, in particular, rye, spelt, wheat, maize, barley, oats, crushed oats, husked oats, oat flakes, oat bran being a cereal preparation, and oatmeal; prepared meals mainly consisting of prepared rye for human consumption, spelt, wheat, maize, barley, and oats; cereal-based snack food; cereal flakes; maize flakes being corn flakes; salt sticks in the nature of [applicant must provide further description of goods, e.g., pretzels]” in International Class 30
Identifications can be amended only to clarify or limit the goods; adding to or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07(a), 1904.02(b). In addition, for applications filed under Trademark Act Section 66(a), amendments to the identification are limited to goods in the international classes designated in the application as filed. See TMEP §§1402.03(d), 1402.07(a).
Thus, applicant can only amend the identification to include goods that are (1) within the scope of the identification in the application as filed, and (2) classified in an international class designated in the application as filed.
For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
Generic color names must be used to describe the colors in the mark, e.g., magenta, yellow, turquoise. TMEP §807.07(a)(i)-(ii). If black, white, and/or gray are not being claimed as a color feature of the mark, applicant must exclude them from the color claim and include in the mark description a statement that the colors black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark. See TMEP §807.07(d).
Therefore, applicant must provide a mark description that specifies where all the colors appear in the literal and design elements in the mark. See TMEP §807.07(a)(ii). The following is suggested, if accurate:
The mark consists of an orange rectangle containing the white stylized wording BRANDT with gold lines outlining the letters below a white butterfly with gold lines outlining the design.
CLAIM OF OWNERSHIP OF REGISTRATIONS
Applicant may use the following format to claim ownership of these registrations:
Applicant is the owner of U.S. Registration Nos. 4266319 and 4319392.
RESPONSE GUIDELINES
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02. Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to live status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).
WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL: Any response to this provisional refusal must be personally signed by an individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner). 37 C.F.R. §§2.62(b), 2.193(e)(2)(ii); TMEP §712.01. If applicant hires a qualified U.S. attorney to respond on his or her behalf, then the attorney must sign the response. 37 C.F.R. §§2.193(e)(2)(i), 11.18(a); TMEP §§611.03(b), 712.01. Qualified U.S. attorneys include those in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the United States. See 37 C.F.R. §§2.17(a), 2.62(b), 11.1, 11.14(a); TMEP §§602, 712.01. Additionally, for all responses, the proper signatory must personally sign the document or personally enter his or her electronic signature on the electronic filing. See 37 C.F.R. §2.193(a); TMEP §§611.01(b), 611.02. The name of the signatory must also be printed or typed immediately below or adjacent to the signature, or identified elsewhere in the filing. 37 C.F.R. §2.193(d); TMEP §611.01(b).
In general, foreign attorneys are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal). See 37 C.F.R. §11.14(c), (e); TMEP §§602.03-.03(b), 608.01.
DESIGNATION OF DOMESTIC REPRESENTATIVE: The USPTO encourages applicants who do not reside in the United States to designate a domestic representative upon whom any notice or process may be served. TMEP §610; see 15 U.S.C. §§1051(e), 1141h(d); 37 C.F.R. §2.24(a)(1)-(2). Such designations may be filed online at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.
Examining Attorney
Law Office 116
571-272-5895
kristina.morris@uspto.gov (informal queries only)
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.