| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
| Input Field |
Entered |
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| SERIAL NUMBER | 85138562 | |||||||||||||||||||||||||||||||||||||||||||||||||||||||
| LAW OFFICE ASSIGNED | LAW OFFICE 108 | |||||||||||||||||||||||||||||||||||||||||||||||||||||||
| MARK SECTION (no change) | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| ARGUMENT(S) | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||
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APPLICANT’S RESPONSE TO OFFICE ACTION Applicant herewith responds to the Office Action dated January 6, 2011. The Examining Attorney has refused registration on the basis that the Applicant’s mark is likely to be confused with Reg. No. 3,308,240 for FIVESTAR & Design (the “Cited Mark”) under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d). Applicant respectfully requests reconsideration on the grounds that Applicant’s mark is distinguishable from the Cited Mark. Amendment to Goods Listing Applicant hereby requests that the Examiner amend the goods listing associated with the present Application as follows: Class 29: frozen Likelihood of Confusion
In In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (CCPA 1973), the Court of Customs and Patent Appeals discussed the factors relevant to a determination of likelihood of confusion.[1] Each of the relevant factors must be considered independently. The facts in each case vary and the weight to be given each factor may be different in light of the varying circumstances. TMEP 1207.01(a)(iv). The marks must be considered in their entireties and must be considered in connection with the particular goods and services for which they are used. In re National Data Corp., 224 U.S.P.Q. 749 (Fed. Cir. 1985); TMEP § 1207.01 (citing In re National Data Corp.). As further discussed below, Applicant respectfully asserts that the goods associated with its mark are not related to the goods associated with the Cited Mark, such that Applicant’s mark and the Cited Mark are not confusingly similar. 1. Applicant's goods are distinguishable from the goods associated with the Cited Mark The Examining Attorney has stated that the goods formerly associated with Applicant’s mark are "related” to the goods associated with the Cited Mark. However, in view of the above amendment to the goods listing and for the reasons stated below, Applicant respectfully requests reconsideration. With respect to the food items themselves, Applicant argues that its frozen processed potatoes are not commercially related to canned vegetables. Potatoes are one example of a food product which is rarely, if ever, canned. Instead, potatoes are generally frozen, sold raw, or sliced and deep fried to form potato chips. The canning of potatoes is extremely uncommon. As such, Applicant's goods, as amended hereinabove, are not likely to be associated with the canned vegetables of the Cited Mark because businesses in the food service industry are unlikely to recognize potatoes as a typical canned good which would originate from a canned goods producer. Further, Applicant's mark will not create confusion with the Cited Mark because the goods associated with the respective marks will travel in different channels of trade. The Board has acknowledged that two marks used for food items, even if the marks are nearly identical, are not likely to create confusion if the channels of trade are distinct. See rademark law does not include a rule that all products sold or used “under the same roof” with similar marks will engender confusion as to source, connection, or sponsorship. Rather, even though Applicant's goods and the goods associated with the Cited Mark could potentially both be used by a business in the food services industry, such a business will understand that canneries are generally distinguishable from frozen food vendors, just as customers in a retail environment would recognize that modern grocery stores sell a plethora of unrelated goods, including food, toys, clothing, automotive accessories, and so on, and that such items are not likely to be produced by the same source simply because they are both sold under the same roof. See Worthington Foods Inc. v. Kellogg Co., 14 USPQ2d 1577 (DC S.Ohio 1990) (holding that HEARTWISE for ready to eat cereal is not likely to cause confusion with HEARTWISE for frozen meat products). Thus, businesses in the food service industry will not infer a connection between goods sold under similar marks, merely from the fact that such goods are both related to food. Similarly, just as courts have specifically recognized the importance of locational separation within a store when determining likelihood of confusion with respect to food items, so too is locational separation in the food service industry important in the context of food storage. In Vitarroz Corporation v. Borden, Inc., 644 F.2d 960, 209 USPQ 969 (2d Cir. 1981), for example, the court noted that confusion between crackers and chips was not likely between the goods, because crackers are typically sold apart from chips in grocery stores. In Keebler Company v. Associated Biscuits Limited, 207 USPQ 1034 (1980), the Board held that the mark JACOB’S CLUB for chocolate biscuits was not likely to be confused with the mark CLUB for crackers because chocolate biscuits, a candy or confectionary item, would not be sold in the “cracker sections” of grocery stores. Instead, such items would be sold in the “candy or confectionery sections” or in candy or department stores. Id. at 1037. Similarly, in Lever Brothers Co. v. American Bakeries Co., 693 F.2d 251, 216 USPQ 177 (2d Cir. 1982), the Second Circuit held that the locational separation of the goods at issue, margarine and bread, was a factor to be considered in a likelihood of confusion suit. In the present case, businesses in the food service industry will store Applicant's frozen processed potatoes in a freezer, along with other frozen goods. On the other hand, the canned vegetables of the Cited Mark are specifically designed not to be stored within a freezer, but rather merely on a shelf at room temperature. Thus, within a business in the food service industry, Applicant's frozen processed potatoes will be stored in different locations than will the goods of the Cited Mark. Further, the dichotomy between frozen goods and canned goods has been extensively discussed for many years. (See the results from a Google search for "frozen vs. canned" at the following link: http://www.google.com/search?sourceid=chrome&ie=UTF-8&q=frozen+vs.+canned, a copy of which is attached hereto). The freezing of goods, as a process, competes with the canning of goods as methods to preserve foods. Businesses have long understood the difference between the two, and would recognize that canned goods and frozen goods come from different companies. Moreover, Applicant points out that numerous marks which contain the term FIVE STAR and are used in connection with food products all coexist. Specifically, Applicant notes the following marks:
As can be seen, there are many FIVE STAR marks which already coexist on the Principal Register in connection with various food products in International Class 29. Indeed, there are multiple FIVE STAR registrations for beef products, all owned by different companies. Similarly, there are multiple FIVE STAR registrations for seafood products, all owned by different companies. Thus, even within categories of foods, multiple FIVE STAR registrations have coexisted without confusion for many years. Applicant's mark should similarly be able to coexist with the Cited Mark, especially considering the differences in goods.
CONCLUSION Applicant responded to each issued raised by the Examiner. Accordingly, it is Applicant's belief the referenced application is in condition for publication and such action is respectfully requested. [1] (1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression; (2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use; (3) The similarity or dissimilarity of established, likely-to-continue trade channels; (4) The conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing; (5) The fame of the prior mark; (6) The number and nature of similar marks in use on similar goods; (7) The nature and extent of any actual confusion; (8) The length of time during and the conditions under which there as been concurrent use without evidence of actual confusion; (9) The variety of goods on which a mark is or is not used; (10) The market interface between application and the owner of a prior mark; (11) The extent to which applicant has a right to exclude others from use of its mark on its goods; (12) The extent of potential confusion, i.e., whether de minimis or substantial.; (13) Any other established fact probative of the effect of use.
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| GOODS AND/OR SERVICES SECTION (current) | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| INTERNATIONAL CLASS | 029 | |||||||||||||||||||||||||||||||||||||||||||||||||||||||
| DESCRIPTION | Frozen vegetables | |||||||||||||||||||||||||||||||||||||||||||||||||||||||
| FILING BASIS | Section 1(a) | |||||||||||||||||||||||||||||||||||||||||||||||||||||||
| FIRST USE ANYWHERE DATE | At least as early as 03/01/2004 | |||||||||||||||||||||||||||||||||||||||||||||||||||||||
| FIRST USE IN COMMERCE DATE | At least as early as 03/01/2004 | |||||||||||||||||||||||||||||||||||||||||||||||||||||||
| GOODS AND/OR SERVICES SECTION (proposed) | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| INTERNATIONAL CLASS | 029 | |||||||||||||||||||||||||||||||||||||||||||||||||||||||
| TRACKED TEXT DESCRIPTION | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| FINAL DESCRIPTION | Frozen processed potatoes | |||||||||||||||||||||||||||||||||||||||||||||||||||||||
| FILING BASIS | Section 1(a) | |||||||||||||||||||||||||||||||||||||||||||||||||||||||
| FIRST USE ANYWHERE DATE | At least as early as 03/01/2004 | |||||||||||||||||||||||||||||||||||||||||||||||||||||||
| FIRST USE IN COMMERCE DATE | At least as early as 03/01/2004 | |||||||||||||||||||||||||||||||||||||||||||||||||||||||
| SIGNATURE SECTION | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| RESPONSE SIGNATURE | /Christopher M. Bikus/ | |||||||||||||||||||||||||||||||||||||||||||||||||||||||
| SIGNATORY'S NAME | Christopher M. Bikus | |||||||||||||||||||||||||||||||||||||||||||||||||||||||
| SIGNATORY'S POSITION | Attorney | |||||||||||||||||||||||||||||||||||||||||||||||||||||||
| DATE SIGNED | 07/06/2011 | |||||||||||||||||||||||||||||||||||||||||||||||||||||||
| AUTHORIZED SIGNATORY | YES | |||||||||||||||||||||||||||||||||||||||||||||||||||||||
| FILING INFORMATION SECTION | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| SUBMIT DATE | Wed Jul 06 16:33:19 EDT 2011 | |||||||||||||||||||||||||||||||||||||||||||||||||||||||
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XXX- 20110706163319968115-8513 8562-480c010eb1ea4bd5a57f 33f1b88ba5954-N/A-N/A-201 10706162705651136 |
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| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
APPLICANT’S RESPONSE TO OFFICE ACTION
Applicant herewith responds to the Office Action dated January 6, 2011.
The Examining Attorney has refused registration on the basis that the Applicant’s mark is likely to be confused with Reg. No. 3,308,240 for FIVESTAR & Design (the “Cited Mark”) under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d). Applicant respectfully requests reconsideration on the grounds that Applicant’s mark is distinguishable from the Cited Mark.
Amendment to Goods Listing
Applicant hereby requests that the Examiner amend the goods listing associated with the present Application as follows:
Class 29: frozen vegetables processed potatoes
Likelihood of Confusion
In In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (CCPA 1973), the Court of Customs and Patent Appeals discussed the factors relevant to a determination of likelihood of confusion.[1] Each of the relevant factors must be considered independently. The facts in each case vary and the weight to be given each factor may be different in light of the varying circumstances. TMEP 1207.01(a)(iv).
The marks must be considered in their entireties and must be considered in connection with the particular goods and services for which they are used. In re National Data Corp., 224 U.S.P.Q. 749 (Fed. Cir. 1985); TMEP § 1207.01 (citing In re National Data Corp.). As further discussed below, Applicant respectfully asserts that the goods associated with its mark are not related to the goods associated with the Cited Mark, such that Applicant’s mark and the Cited Mark are not confusingly similar.
1. Applicant's goods are distinguishable from the goods associated with the Cited Mark
The Examining Attorney has stated that the goods formerly associated with Applicant’s mark are "related” to the goods associated with the Cited Mark. However, in view of the above amendment to the goods listing and for the reasons stated below, Applicant respectfully requests reconsideration.
With respect to the food items themselves, Applicant argues that its frozen processed potatoes are not commercially related to canned vegetables. Potatoes are one example of a food product which is rarely, if ever, canned. Instead, potatoes are generally frozen, sold raw, or sliced and deep fried to form potato chips. The canning of potatoes is extremely uncommon. As such, Applicant's goods, as amended hereinabove, are not likely to be associated with the canned vegetables of the Cited Mark because businesses in the food service industry are unlikely to recognize potatoes as a typical canned good which would originate from a canned goods producer.
Further, Applicant's mark will not create confusion with the Cited Mark because the goods associated with the respective marks will travel in different channels of trade. The Board has acknowledged that two marks used for food items, even if the marks are nearly identical, are not likely to create confusion if the channels of trade are distinct. See rademark law does not include a rule that all products sold or used “under the same roof” with similar marks will engender confusion as to source, connection, or sponsorship. Rather, even though Applicant's goods and the goods associated with the Cited Mark could potentially both be used by a business in the food services industry, such a business will understand that canneries are generally distinguishable from frozen food vendors, just as customers in a retail environment would recognize that modern grocery stores sell a plethora of unrelated goods, including food, toys, clothing, automotive accessories, and so on, and that such items are not likely to be produced by the same source simply because they are both sold under the same roof. See Worthington Foods Inc. v. Kellogg Co., 14 USPQ2d 1577 (DC S.Ohio 1990) (holding that HEARTWISE for ready to eat cereal is not likely to cause confusion with HEARTWISE for frozen meat products). Thus, businesses in the food service industry will not infer a connection between goods sold under similar marks, merely from the fact that such goods are both related to food.
Similarly, just as courts have specifically recognized the importance of locational separation within a store when determining likelihood of confusion with respect to food items, so too is locational separation in the food service industry important in the context of food storage. In Vitarroz Corporation v. Borden, Inc., 644 F.2d 960, 209 USPQ 969 (2d Cir. 1981), for example, the court noted that confusion between crackers and chips was not likely between the goods, because crackers are typically sold apart from chips in grocery stores. In Keebler Company v. Associated Biscuits Limited, 207 USPQ 1034 (1980), the Board held that the mark JACOB’S CLUB for chocolate biscuits was not likely to be confused with the mark CLUB for crackers because chocolate biscuits, a candy or confectionary item, would not be sold in the “cracker sections” of grocery stores. Instead, such items would be sold in the “candy or confectionery sections” or in candy or department stores. Id. at 1037. Similarly, in Lever Brothers Co. v. American Bakeries Co., 693 F.2d 251, 216 USPQ 177 (2d Cir. 1982), the Second Circuit held that the locational separation of the goods at issue, margarine and bread, was a factor to be considered in a likelihood of confusion suit.
In the present case, businesses in the food service industry will store Applicant's frozen processed potatoes in a freezer, along with other frozen goods. On the other hand, the canned vegetables of the Cited Mark are specifically designed not to be stored within a freezer, but rather merely on a shelf at room temperature. Thus, within a business in the food service industry, Applicant's frozen processed potatoes will be stored in different locations than will the goods of the Cited Mark. Further, the dichotomy between frozen goods and canned goods has been extensively discussed for many years. (See the results from a Google search for "frozen vs. canned" at the following link: http://www.google.com/search?sourceid=chrome&ie=UTF-8&q=frozen+vs.+canned, a copy of which is attached hereto). The freezing of goods, as a process, competes with the canning of goods as methods to preserve foods. Businesses have long understood the difference between the two, and would recognize that canned goods and frozen goods come from different companies.
Moreover, Applicant points out that numerous marks which contain the term FIVE STAR and are used in connection with food products all coexist. Specifically, Applicant notes the following marks:
|
TM Records |
TM/SN/RN/Disclaimer |
Status/Status Date |
Brief Goods/Services |
Owner |
|
US Federal Q1 f-1 |
5 STAR RESERVE
SN:77-678894 |
Allowed - Intent to Use 3rd Extension of Time Granted February 18, 2011 |
(Int'l Class: 29) Beef; meat |
Skippack Creek Corporation (Delaware Corp.) |
|
US Federal Q1 f-2 |
BRIANN JENN FIVE STARS BRAND
SN:77-179874 RN:3,781,540
Disclaimer: "BRAND" |
Registered April 27, 2010 |
(Int'l Class: 29) Frozen shrimp |
Star Food Products, Inc. (Florida Corp.) Suite 105 2853 Executive Park Drive Weston, Florida 33331 |
|
US Federal Q1 f-3 |
CONSUMERS MEAT PACKING CO. FIVE STAR EXCELLENCE IN MEATS and Design
SN:77-779887 RN:3,786,986
Disclaimer: "CONSUMERS MEAT PACKING CO." AND "EXCELLENCE IN MEATS" |
Registered May 11, 2010 |
(Int'l Class: 29) Beef; pork; poultry; processed lamb; processed meat; seafood; veal |
Consumers Packing Company, Inc. (Illinois Corp.) 1301 Carson Drive Melrose Park, Illinois 60160 |
|
US Federal Q1 f-4 |
FIVE STAR and Design
SN:78-865100 RN:3,769,417 |
Registered March 30, 2010 |
(Int'l Class: 29) Chicken |
Kriwattanapong, Panuwat (Thailand Citizen) 6949 Arrowood Landing Blairsville, Georgia 30512 |
|
US Federal Q1 f-5 |
FIVE STAR BRAND and Design
SN:76-504406 RN:2,819,349
Disclaimer: "FIVE STAR BRAND" |
Registered 8 & 15 June 14, 2009 |
(Int'l Class: 29) Processed meats, namely, hams, pork, sausages, beef, and combinations thereof, namely, bologna, cooked salami, and frankfurters; canadian bacon, roast beef, corned beef, [ pastrami,] cottage butts, kielbasa, bratwurst, and head cheese |
The Storer Meat Co., Inc. (Ohio Corp.) 3007 Clinton Avenue Cleveland, Ohio 44113 |
|
US Federal Q1 f-6 |
FIVE STAR FOODIES and Design
SN:77-088501 RN:3,623,452
Disclaimer: "FOODIES" |
Registered May 19, 2009 |
(Int'l Class: 29) Instant or pre-cooked soup; veggie burger patties; frozen vegetarian entrees |
Five Star Foodies LTD. (Ohio Limited Liability Company) 4100 Rose Hill Ave. Cincinnati, Ohio 45229 |
|
US Federal Q1 f-7 |
FIVE STAR NUT MIX
SN:77-561378 RN:3,630,281
Disclaimer: "NUT MIX" |
Registered June 2, 2009 |
(Int'l Class: 29) Snack mix consisting primarily of cashews, macadamia nuts, almonds, pistachios, and pecans |
Tropical Nut & Fruit Co. (North Carolina Corp.) 1100 Continental Blvd. Charlotte, North Carolina 28273 |
|
US Federal Q1 f-8 |
FIVE STAR SALMONES ANTARTICA S.A. and Design
SN:77-149315 RN:3,460,306
Disclaimer: "SALMONES ANTARTICA S.A." |
Registered July 8, 2008 |
(Int'l Class: 29) Fresh salmon and frozen salmon |
Salmones Antartica S.A. (Chile Corp.) Avda. Providencia No. 2653, Piso 15 Providencia, Santiago Chile |
|
US Federal Q1 f-9 |
FIVE STAR TILAPIA
SN:78-953560 RN:3,327,951
Disclaimer: "TILAPIA" |
Registered October 30, 2007 |
(Int'l Class: 29) Prepackaged seafood dinners |
Gorton's Inc. (Delaware Corp.) 128 Rogers Street Gloucester, Massachusetts 01930 |
|
US Federal Q1 f-10 |
GORTON'S FIVE STAR TILAPIA and Design
SN:78-954854 RN:3,327,953
Disclaimer: "TILAPIA" |
Registered October 30, 2007 |
(Int'l Class: 29) Prepackaged seafood dinners |
Gorton's Inc. (Delaware Corp.) 128 Rogers Street Gloucester, Massachusetts 01930 |
As can be seen, there are many FIVE STAR marks which already coexist on the Principal Register in connection with various food products in International Class 29. Indeed, there are multiple FIVE STAR registrations for beef products, all owned by different companies. Similarly, there are multiple FIVE STAR registrations for seafood products, all owned by different companies. Thus, even within categories of foods, multiple FIVE STAR registrations have coexisted without confusion for many years. Applicant's mark should similarly be able to coexist with the Cited Mark, especially considering the differences in goods.
CONCLUSION
Applicant responded to each issued raised by the Examiner. Accordingly, it is Applicant's belief the referenced application is in condition for publication and such action is respectfully requested.
[1] (1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression; (2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use; (3) The similarity or dissimilarity of established, likely-to-continue trade channels; (4) The conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing; (5) The fame of the prior mark; (6) The number and nature of similar marks in use on similar goods; (7) The nature and extent of any actual confusion; (8) The length of time during and the conditions under which there as been concurrent use without evidence of actual confusion; (9) The variety of goods on which a mark is or is not used; (10) The market interface between application and the owner of a prior mark; (11) The extent to which applicant has a right to exclude others from use of its mark on its goods; (12) The extent of potential confusion, i.e., whether de minimis or substantial.; (13) Any other established fact probative of the effect of use.