| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 85607109 |
| LAW OFFICE ASSIGNED | LAW OFFICE 105 |
| MARK SECTION | |
| MARK | http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85607109 |
| LITERAL ELEMENT | GEISHA |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
|
Amendment – Identification of Services Applicant hereby amends the identification of services covered by the application as follows:
Bar and restaurant services, namely, providing food in a particular portion size.
Amendment – Withdrawal of Translation Statement Applicant withdraws its submitted translation statement.
REMARKS
REFUSAL OF SPECIMEN The Trademark Office has rejected the specimen submitted in support of this application, deeming it to identify food items, not restaurant and bar services. As discussed briefly with the Examiner by phone, Applicant wished to obtain trademark protection for its unique way of labeling the portion sizes served at its restaurant. As there is no appropriate classification available in the Trademark Manual of Acceptable Goods and Services for “serving certain portion sizes,” Applicant followed suit with Registration No. 1896607 (copy of registration certificate attached) for the McDONALD'S CORPORATION trademark, SUPER SIZE®. Being aware that the famous trademark SUPER SIZE® identifies portion sizes, and seeing that Registration No. 1896607 covers “restaurant services,” Applicant proceeded on the belief that “restaurant and bar services” would likewise be a sufficient identification of its own services. Applicant’s menu specimen depicting the GEISHA™ size of angus beef served at Applicant’s restaurant/bar would consequently be a suitable specimen for “restaurant and bar services.”
Merely as a side note, in an unrelated pending application currently being handled by Applicant’s attorney, several specimens (including but not limited to containers for the goods and point-of-sale displays (both online and physical displays)) were rejected for the opposite reason, namely that those specimens, submitted in support of food items prepared and purchased by/from a restaurant could ONLY identify restaurant services and NOT goods. It is certainly understood that one Examiner’s decision is not binding on another Examiner, but at the same time, it seems that there should be some greater consistency so that applicants could then submit filings in good faith.
REFUSAL ON THE BASIS OF SECTION 2(D) The Trademark Office has cited Registration No. 2769802 for the mark GEISHA against this application. This registration is owned by a restaurant in New York City. The services listed under the registered mark are “restaurant services.” Applicant has amended its identification of services to “bar and restaurant services, namely, providing food in a particular portion size” in an attempt to differentiate its services from those of the cited registration. If it is helpful and allowable, Applicant will further narrow its identification of services to merely, “providing food in a particular portion size.”
With this differentiation of services, Applicant submits that the two marks can coexist on the federal register due to the fact that the word GEISHA is so widely used in connection with the restaurant industry that it has ceased to identify one particular source of restaurant services. Consumers would not be confused as to the source of Applicant’s portion servings and the restaurant in New York due to such prolific use. The mark “Geisha” in this context is Not entitled to broad protection: The dilution discussed below has so weakened the existing registration that it is not entitled to trademark protection sufficient to bar Applicant’s registration of the mark for different services.
Evidence of third-party use falls under the sixth du Pont factor – the “number and nature of similar marks in use on similar goods.” In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). Evidence that the consuming public is exposed to third-party use of similar marks on similar goods or services “is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection.” Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005)(emphasis added).
Applicant submits herewith abundant evidence in the nature of numerous website printouts, as Exhibit A, showing trademark use of the word “geisha” in connection with restaurant services. Exhibit A is only a sampling of the many instances found on the Internet of the mark GEISHA in connection with restaurant services. Since consumers have seen so many uses of the same mark for the same or similar services, not only is use of the word “geisha” in this context weak and entitled to narrow protection consistent with du Pont, but also consumers have thereby learned to differentiate between various GEISHA marks based on small differences in the goods and services, locations, and the stylization and presentation of the marks and restaurants. Applicant submits that due to the existence of so many restaurants named Geisha and the apparent absence of actual confusion in connection therewith, there can hardly be a likelihood of confusion between applicant’s mark and the registered mark, which are actually for different services.
The contents of Exhibit A include the following marks:
· GEISHA HOUSE LA, in Los Angeles, California · GEISHA, in New York, New York (this appears to be the website for the existing registration) · GEISHA JAPANESE RESTAURANT, in Corinth, Mississippi · GEISHA JAPANESE RESTAURANT, in Santa Clarita, California · GEISHA or FOREVER GEISHA, in Valencia, California · GEISHA HOUSE, in Las Vegas, Nevada · GEISHA JAPANESE RESTAURANT & TEA HOUSE or GEISHA SUSTAINABLE SUSHI, in Capitola, California · GEISHA II, in Utica, New York · GEISHA SUSHI BAR, in Columbia, Missouri · GEISHA, in West Chester, Ohio · GEISHA, in Plano, Texas · GEISHA TABLE, in New York, New York · GEISHA SUSHI BUSTRO, in New Orleans, Louisiana · GEISHA A GO GO, in Scottsdale, Arizona
(Please note that one or more of the printouts in Exhibit A include online directory listings. These have been held as appropriate evidence of the use of service marks. See Lloyd’s Food Products, Inc. v. Eli’s, Inc., 987 F.2d 766 (Fed. Cir. 1993) (holding that “use in advertising includes listing the name of the business, including the mark, in telephone directories…”). Hence, it is appropriate to include it herewith as evidence of third party use.)
CONCLUSION
Applicant has withdrawn its translation statement, has amended its identification of services to differ from those in the cited registration, and agrees to further differentiate such identification of services if useful, as noted in the Remarks section. Applicant has also submitted that there is no need for a substitute specimen as Applicant’s services are providing specific portion sizes in connection with “restaurant and bar services,” and that therefore Applicant’s menu is a suitable specimen. Finally, Applicant has shown that the cited registration is entitled to only narrow protection, and the marks are sufficiently distinguishable by consumers, who are readily able to discern the differences in the types of services and otherwise.
It is courteously solicited that this application be approved for publication. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_711191838-121850852_._Reg._No._1896607.pdf |
| CONVERTED PDF FILE(S) (3 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\856\071\85607109\xml3\ROA0002.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\856\071\85607109\xml3\ROA0003.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\856\071\85607109\xml3\ROA0004.JPG | |
| ORIGINAL PDF FILE | evi_711191838-121850852_._Exhibit_A.pdf |
| CONVERTED PDF FILE(S) (15 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\856\071\85607109\xml3\ROA0005.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\856\071\85607109\xml3\ROA0006.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\856\071\85607109\xml3\ROA0007.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\856\071\85607109\xml3\ROA0008.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\856\071\85607109\xml3\ROA0009.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\856\071\85607109\xml3\ROA0010.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\856\071\85607109\xml3\ROA0011.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\856\071\85607109\xml3\ROA0012.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\856\071\85607109\xml3\ROA0013.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\856\071\85607109\xml3\ROA0014.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\856\071\85607109\xml3\ROA0015.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\856\071\85607109\xml3\ROA0016.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\856\071\85607109\xml3\ROA0017.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\856\071\85607109\xml3\ROA0018.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\856\071\85607109\xml3\ROA0019.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Copy of Registration Certificate No. 1896607; Exhibit A: website printouts showing dilution of "geisha" |
| ADDITIONAL STATEMENTS SECTION | |
| MISCELLANEOUS STATEMENT | Applicant withdraws its submitted translation statement. |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Lori M. Lofstrom/ |
| SIGNATORY'S NAME | Lori M. Lofstrom |
| SIGNATORY'S POSITION | Attorney of record, California bar member |
| SIGNATORY'S PHONE NUMBER | 562-596-0116 |
| DATE SIGNED | 02/11/2013 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Feb 11 14:57:32 EST 2013 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.XX-20 130211145732544801-856071 09-500ba4e172df304bba5ba1 25e56bc47cb2b8c94e865adc3 09c5e45d8632e4bdada-N/A-N /A-20130211145538366549 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
Amendment – Identification of Services
Applicant hereby amends the identification of services covered by the application as follows:
Bar and restaurant services, namely, providing food in a particular portion size.
Amendment – Withdrawal of Translation Statement
Applicant withdraws its submitted translation statement.
REMARKS
REFUSAL OF SPECIMEN
The Trademark Office has rejected the specimen submitted in support of this application, deeming it to identify food items, not restaurant and bar services. As discussed briefly with the Examiner by phone, Applicant wished to obtain trademark protection for its unique way of labeling the portion sizes served at its restaurant. As there is no appropriate classification available in the Trademark Manual of Acceptable Goods and Services for “serving certain portion sizes,” Applicant followed suit with Registration No. 1896607 (copy of registration certificate attached) for the McDONALD'S CORPORATION trademark, SUPER SIZE®. Being aware that the famous trademark SUPER SIZE® identifies portion sizes, and seeing that Registration No. 1896607 covers “restaurant services,” Applicant proceeded on the belief that “restaurant and bar services” would likewise be a sufficient identification of its own services. Applicant’s menu specimen depicting the GEISHA™ size of angus beef served at Applicant’s restaurant/bar would consequently be a suitable specimen for “restaurant and bar services.”
Merely as a side note, in an unrelated pending application currently being handled by Applicant’s attorney, several specimens (including but not limited to containers for the goods and point-of-sale displays (both online and physical displays)) were rejected for the opposite reason, namely that those specimens, submitted in support of food items prepared and purchased by/from a restaurant could ONLY identify restaurant services and NOT goods. It is certainly understood that one Examiner’s decision is not binding on another Examiner, but at the same time, it seems that there should be some greater consistency so that applicants could then submit filings in good faith.
REFUSAL ON THE BASIS OF SECTION 2(D)
The Trademark Office has cited Registration No. 2769802 for the mark GEISHA against this application. This registration is owned by a restaurant in New York City. The services listed under the registered mark are “restaurant services.” Applicant has amended its identification of services to “bar and restaurant services, namely, providing food in a particular portion size” in an attempt to differentiate its services from those of the cited registration. If it is helpful and allowable, Applicant will further narrow its identification of services to merely, “providing food in a particular portion size.”
With this differentiation of services, Applicant submits that the two marks can coexist on the federal register due to the fact that the word GEISHA is so widely used in connection with the restaurant industry that it has ceased to identify one particular source of restaurant services. Consumers would not be confused as to the source of Applicant’s portion servings and the restaurant in New York due to such prolific use.
The mark “Geisha” in this context is Not entitled to broad protection:
The dilution discussed below has so weakened the existing registration that it is not entitled to trademark protection sufficient to bar Applicant’s registration of the mark for different services.
Evidence of third-party use falls under the sixth du Pont factor – the “number and nature of similar marks in use on similar goods.” In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). Evidence that the consuming public is exposed to third-party use of similar marks on similar goods or services “is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection.” Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005)(emphasis added).
Applicant submits herewith abundant evidence in the nature of numerous website printouts, as Exhibit A, showing trademark use of the word “geisha” in connection with restaurant services. Exhibit A is only a sampling of the many instances found on the Internet of the mark GEISHA in connection with restaurant services. Since consumers have seen so many uses of the same mark for the same or similar services, not only is use of the word “geisha” in this context weak and entitled to narrow protection consistent with du Pont, but also consumers have thereby learned to differentiate between various GEISHA marks based on small differences in the goods and services, locations, and the stylization and presentation of the marks and restaurants. Applicant submits that due to the existence of so many restaurants named Geisha and the apparent absence of actual confusion in connection therewith, there can hardly be a likelihood of confusion between applicant’s mark and the registered mark, which are actually for different services.
The contents of Exhibit A include the following marks:
· GEISHA HOUSE LA, in Los Angeles, California
· GEISHA, in New York, New York (this appears to be the website for the existing registration)
· GEISHA JAPANESE RESTAURANT, in Corinth, Mississippi
· GEISHA JAPANESE RESTAURANT, in Santa Clarita, California
· GEISHA or FOREVER GEISHA, in Valencia, California
· GEISHA HOUSE, in Las Vegas, Nevada
· GEISHA JAPANESE RESTAURANT & TEA HOUSE or GEISHA SUSTAINABLE SUSHI, in Capitola, California
· GEISHA II, in Utica, New York
· GEISHA SUSHI BAR, in Columbia, Missouri
· GEISHA, in West Chester, Ohio
· GEISHA, in Plano, Texas
· GEISHA TABLE, in New York, New York
· GEISHA SUSHI BUSTRO, in New Orleans, Louisiana
· GEISHA A GO GO, in Scottsdale, Arizona
(Please note that one or more of the printouts in Exhibit A include online directory listings. These have been held as appropriate evidence of the use of service marks. See Lloyd’s Food Products, Inc. v. Eli’s, Inc., 987 F.2d 766 (Fed. Cir. 1993) (holding that “use in advertising includes listing the name of the business, including the mark, in telephone directories…”). Hence, it is appropriate to include it herewith as evidence of third party use.)
CONCLUSION
Applicant has withdrawn its translation statement, has amended its identification of services to differ from those in the cited registration, and agrees to further differentiate such identification of services if useful, as noted in the Remarks section. Applicant has also submitted that there is no need for a substitute specimen as Applicant’s services are providing specific portion sizes in connection with “restaurant and bar services,” and that therefore Applicant’s menu is a suitable specimen. Finally, Applicant has shown that the cited registration is entitled to only narrow protection, and the marks are sufficiently distinguishable by consumers, who are readily able to discern the differences in the types of services and otherwise.
It is courteously solicited that this application be approved for publication.
