Offc Action Outgoing

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.

The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

Summary of Issues Applicant Must Address

Section 2(d) Refusal
Description of the Mark
Identification of Goods

Refusal - Section 2(d) – Likelihood of Confusion

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2810328 (BEKA for “pans, pots, trays, sieves and kitchen utensils of metal and enameled metal or synthetic material”). Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration.

A. General Principles in Determining Likelihood of Confusion:

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) aid in this determination. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)). Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.

In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services. 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.

B. Similarity of the Marks:

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); TMEP §1207.01(b).

In the present matter, the applicant has applied to register the mark BEKA and design. The registrant has registered the mark BEKA. The marks are very similar based on applicant’s BEKA vs. registrant’s BEKA. This is because these components are identical and dominant in both marks. Moreover, the designs are highly similar as well. Both designs are similarly shaped chef’s hats with vertical lines running through the center of the hats. As a result, the two marks as a whole are highly similar.

C. Relatedness of the Goods:

The applicant’s goods (“household and kitchen utensils; metal containers (not of precious metal or coated therewith), of wood and synthetic materials for household and kitchen use; stew-pans; frying pans; woks; fish pans; sets for fondue Bourguignonne and Swiss fondue (tableware); non-electric cooking utensils; containers for preparing, preserving, keeping warm and serving food and beverages; kitchen strainers; trays for household purposes; containers for household and kitchen use; non-electric pressure cookers; non-electric kettles; saucers; kettles (not electrically heated); pots; non-electric saucepans for steam cooking; dish covers; oil cruets (not of precious metal); cups, not of precious metal; water jugs; cooling water bottles; non-electric deep fryers; hand-operated machines for making noodles; non-electric coffee percolators; sieves for kitchen use; isothermal bottle; insulating flasks; insulated bags for food; thermally insulated containers for food; isothermal boxes for preparing edible ices; non-electric fondue pans; pot lids; mixing spoons; tableware (with the exception of table knives, forks and spoons); manual mixers for kitchen use; soup ladles; pie servers”) are related to the registrant’s goods (“pans, pots, trays, sieves and kitchen utensils of metal and enameled metal or synthetic material”) because both are for highly similar and identical household or kitchen items.

D. Conclusion:

The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

E. Response Guidelines:

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

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

Requirement – Description of the Mark

Applicant has submitted a color drawing and provided a color claim, but has not provided the required description specifying where color appears in the literal and design elements in the mark. See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(a)-(a)(ii).

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 a chef’s hat in red with three white curved vertical lines running through the center of the hat and the stylized term “BEKA” in black below the hat.

Requirement - Identification of Goods and/or Services

First, the identification of goods and/or services contains indefinite language and must be clarified. See TMEP §1402.01. See the proposed identification below for further details.

Second, the identification of goods and/or services contains parentheses and/or brackets. Generally, parentheses and brackets should not be used in identifications because the USPTO generally uses these punctuation marks to indicate goods and/or services that have been deleted from registrations. See TMEP §1402.12. Parenthetical or bracketed information is permitted in identifications only if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity of the identification, e.g., “obi (Japanese sash).” Id.

Therefore, applicant must remove the parentheses and/or brackets from the identification of goods and/or services and incorporate any parenthetical or bracketed information into the description.

Applicant may adopt the following identification, if accurate. Please note that the wording subject to this requirement and the suggested changes made by the trademark examining attorney appear in bold. Further, the wording contained in brackets and/or italicized is merely for guidance in responding to this requirement, and should not be included in applicant’s amended identification.

Household and kitchen utensils, namely, {indicate the common commercial name of the goods in this class, e.g., sieves}; containers for household or kitchen use, namely, metal containers not of precious metal or coated therewith; containers of wood and synthetic materials for household and kitchen use; stew-pans; frying pans; woks; fish pans; sets for fondue Bourguignonne and Swiss fondue, namely, fondue pots without heat source, forks, and bowls sold as a unit; non-electric cooking utensils, namely, {indicate the common commercial name of the goods in this class, e.g., griddles}; household or kitchen containers for preparing, preserving, keeping warm and serving food and beverages; kitchen strainers; trays for household purposes; containers for household and kitchen use; non-electric pressure cookers; non-electric kettles; saucers; kettles, not electrically heated; pots; non-electric saucepans for steam cooking; dish covers; oil cruets not of precious metal; cups, not of precious metal; water jugs; cooling water bottles sold empty; non-electric deep fryers; stamps for forming noodles [please note that machines for making pasta are classified in Class 007 and hand-operated cutters for pasta are in Class 008]; non-electric coffee percolators; sieves for kitchen use; isothermal bottle sold empty; insulating flasks; insulated bags for food for domestic use; thermally insulated containers for food; isothermal boxes for preparing edible ices for domestic use; non-electric fondue pans; pot lids; mixing spoons; tableware, with the exception of table knives, forks and spoons, namely, {indicate the common commercial name of the goods in this class, e.g., coffee service and tea services}; manual mixers for kitchen use; soup ladles; pie servers

For assistance with identifying and classifying goods and services 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.

NOTICE: Although identifications of goods and/or services may be amended to clarify or limit the goods and/or services, adding to or broadening the scope of the goods and/or services is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.

In a Trademark Act Section 66(a) application, classification of goods and/or services may not be changed from that assigned by the International Bureau of the World Intellectual Property Organization. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Additionally, classes may not be added or goods and/or services transferred from one class to another in a multiple-class Section 66(a) application. 37 C.F.R. §2.85(d); TMEP §1401.03(d).

Assistance

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.

Deirdre G. Robertson

/Deirdre G Robertson/

Trademark Examining Attorney

Law Office 111

Phone No. (571) 272-8806

deirdre.robertson@uspto.gov

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.

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 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.

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 Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, 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/teas/eTEASpageE.htm.

Offc Action Outgoing

BEKA

ALLINOX

Offc Action Outgoing

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