| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 85790194 |
| LAW OFFICE ASSIGNED | LAW OFFICE 116 |
| MARK SECTION | |
| MARK FILE NAME | http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85790194 |
| LITERAL ELEMENT | PRONTO |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| ARGUMENT(S) | |
|
This response is to the Office Action dated 4/23/2013. Applicant is submitting the following response, signed by a proper party.
In response to the Office Action dated March 27, 2013, for the application for the mark PRONTO and design, applicant submits the following:
The Examining Attorney has refused registration of applicant's mark on the ground that the mark is confusingly similar to the mark: CONNIE'S PRONTO! in Registration No. 3538720.
As specifically addressed in Federated Foods, the inquiry mandated by Section 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks (see Federated Foods, Inc. v. Fort Howard Paper Co., (544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976)). Applicant respectfully argues that there is no likelihood of confusion under the DuPont factors (see In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), because the marks are different as to appearance, sound, connotation and commercial impression, the goods are different, and the goods are marketed to, and consumed by, different consumers in different channels. For the reasons discussed below, applicant respectfully requests that the Examining Attorney withdraw the refusal to register and allow the subject application to proceed to publication.
It is readily apparent that the two marks do not look the same in a visual comparison of the marks. The mere fact that the marks share the word PRONTO does not compel a conclusion of likely confusion (see Gen. Mills, Inc. v. Kellogg Co., 824 F.2d 622, 627, 3 U.S.P.Q.2d 1442, 1445 (8th Cir. 1987) (“The use of identical, even dominant, words in common does not automatically mean that two marks are similar.”), citing Freedom Sav. & Loan Ass’n v.Way, 757 F.2d 1176, 1183, 226 U.S.P.Q. 123, 127 (11th Cir. 1985); see also Penta Hotels Ltd. v. Penta Tours, 9 U.S.P.Q.2d 1081, 1098 (D. Conn. 1988)).
Moreover, a refusal to register grounded in a likelihood of confusion requires that such confusion as to the source of the goods or services not merely be possible, but likely. A mere possibility of confusion is an insufficient basis for rejection under Section 2(d). In re Massey-Ferguson Inc., 222 USPQ 367 (TTAB 1983). As an initial matter, applicant notes from the US Trademark Office register that there are other registrations and approved applications for marks that contain the word PRONTO for similar goods. This co-existence of marks on the register evidences that the Trademark Office believes that consumers can and do distinguish between the sources of food items sold under the respective marks, even when the marks contain these common elements. Applicant includes below a listing of various marks featuring PRONTO for example purposes:
PRONTO PANCAKES Class 030. Instant pancake mixes; Pancake mixes. Registration Number 3922775 COPPERLEAF KITCHEN
PRONTOFRESCO Class 029. Hors d'oeuvres... Class 030. Seasonings and sauces; farinaceous food pastes for human consumption Registration Number 3799697 GRECI INDUSTRIA ALIMENTARE
PRONTOCHEF Class 030. Pastas. Registration Number 3938920 MARKET PLAZA, INC
TONY LUKE'S PRONTO PRONTO PRONTO PRONTO Class 030. Pre-cooked, frozen, microwaveable foods... Registration Number 3633039 TL Enterprises LLC
PRONTO! TRATTORIA Class 030. Sauces; tomato-based sauces; ready-made sauces; tomato sauce; canned tomato sauce; pizza sauce; spaghetti and pasta sauce; marinara sauce; salsa. Registration Number 3523245 Stanislaus Partners San Tomo, Inc
PRONTO PIZZA Class 030. PIZZA, PASTA, CALZONES AND SANDWICHES. Registration Number 3942473 Odd Couple Pizza 42, Ltd.
PRONTO Class 029. dehydrated legumes; namely, dehydrated refried beans. Registration Number 1687986 Inland Empire Foods, Inc.
PRONTO COMBO Class 030. entree comprised of tortillas, chicken, and cheese for consumption on or off the premises. Registration Number 1637727 El Torito Restaurants, Inc.
Where the consuming public is exposed to third-party use of similar marks on similar goods, a given mark is entitled to only a narrow scope of protection (see Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005). The registration record is clear that the Trademark Office and prospective consumers can and do distinguish between marks containing the word PRONTO for food items. Therefore, just as no confusion was considered likely between previously registered and approved marks and the cited mark, applicant submits that no confusion is likely between the use of its mark and the mark in the cited registration.
A visual comparison of applicant's mark and the cited mark immediately imparts the differences between the marks. While both marks may contain the word PRONTO, applicant’s mark includes a distinctive logo having a red circle around the word. It is well-settled that one feature of a mark may be more significant than another, and it is not improper to give more weight to this dominant feature in determining the commercial impression created by the mark. See In re Chatam International Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004); In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). The red circle of applicant’s mark is significant because the goods are sold in grocery stores where shoppers are scanning shelves for familiar logos. There is no likelihood of confusion because applicant’s mark, when combined with the red-circle feature is so merged with that feature that, the overall appearance of each mark is totally different.
The mark in the cited registration begins with the word CONNIE'S and includes an "!". The inclusion of the word CONNIE'S and a "!" in the cited mark and the lack of a red circle around the word PRONTO are significant and cannot be ignored in that these elements materially alter the way in which the mark is perceived and recognized by prospective consumers. The difference between the marks is more significant in view of the above-referenced co-existing registrations containing the word PRONTO. The registration record makes it clear that differences among the various marks containing the word PRONTO are sufficient to distinguish marks belonging to separate parties.
When the marks of the parties are viewed in their entirety, applicant's mark significantly differs from the cited mark in appearance and commercial impression such that confusion would not be likely. To evaluate a likelihood of confusion, the marks must not be dissected but must be considered in their entireties without ignoring non-similar elements (see 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §23:41 (4th ed. 2000). Under the anti-dissection rule, the validity and distinctiveness of a composite trademark is determined by viewing the trademark as a whole, as it appears in the marketplace. Here, the addition of the word CONNIE'S makes it clear to customers that the goods originate from Connie's Food Products. Applicant’s red-ringed PRONTO is not likely cause confusion with the mark CONNIE'S PRONTO because CONNIE'S is the dominant element of the cited mark, which gives the mark a different sound and creates a different commercial impression distinct from applicant’s mark.
When viewed in their entirety, there is no likelihood of confusion. The marks "partake of both visual and oral indicia, and both must be weighed in the context in which they occur." In re Electrolyte Labs., Inc., 913 F.2d 930, 16 USPQ2d 1239 (Fed. Cir. 1990) (finding no likelihood of confusion based on the overall commercial impression despite the letter K in both marks on similar goods and trade channels). Accordingly, applicant respectfully asserts that the differences between the marks are sufficient such that confusion would not be likely.
With respect to the goods, the mere fact that cakes and cannolis are desserts does not compel the finding of a relationship. Applicant's goods are flans and flavored, sweetened gelatin desserts. While canollis and flavored gelatin may be food items, they are not at all identical. The registration record makes it clear that differences among goods for the various marks containing the word PRONTO are sufficient to distinguish marks used for different food items belonging to separate parties. Under du Pont, "[t]he number and nature of similar marks in use on similar goods" is a factor that must be considered in determining likelihood of confusion (In re E. I. du Pont, 476 F.2d at 1361, 177 USPQ at 567).
Further, in order for there to exist even the possibility of a likelihood of confusion, applicant’s goods and the goods of the cited mark must be marketed to common customers (see Electronic Design & Sales v. Electronic Data Systems, 954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992)). With respect to customers, there is a substantial difference. Consumers of the cited mark's goods are people eating in or carrying custom made food from a restaurant or kiosk (see attached printout advertizing the franchise). In contrast, consumers of applicants goods are grocery shoppers, where the prominent logo makes it easy for shoppers to see the brand easily on a grocery shelf.
Consumers purchasing custom made cakes and canollis from a restaurant or kiosk would exercise greater care due to the higher price than that exercised by grocery shoppers buying flavored gelatin from the grocery. Purchaser “sophistication is important and often dispositive because sophisticated consumers may be expected to exercise greater care” (Electronic Design & Sales, 21 USPQ2d at 1392); therefore it is unlikely that the public will be confused about the source of applicant’s goods.
In summary, there is no likelihood of confusion because the marks are different as to appearance, sound, connotation and commercial impression, the goods are different, and the goods are marketed to, and consumed by, different consumers in different channels. For all of the above reasons, there is no likelihood of confusion between concurrent use of applicant’s mark and the mark shown in the cited registration.
Applicant submits that the all matters of this application have been addressed. Applicant also submits that the application is now in condition to be passed to publication and such action is respectfully requested. |
|
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Leslie Alan Glick/ |
| SIGNATORY'S NAME | Leslie Alan Glick |
| SIGNATORY'S POSITION | Attorney of record; District of Columbia bar member |
| SIGNATORY'S PHONE NUMBER | 6142272116 |
| DATE SIGNED | 09/03/2013 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Sep 03 15:09:13 EDT 2013 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XX-2 0130903150913311564-85790 194-50046f8bc82155335d6f9 788744a8ebadd04285619889f 2ced84bad8e8dae8f6265-N/A -N/A-20130820173232243450 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
This response is to the Office Action dated 4/23/2013. Applicant is submitting the following response, signed by a proper party.
In response to the Office Action dated March 27, 2013, for the application for the mark PRONTO and design, applicant submits the following:
The Examining Attorney has refused registration of applicant's mark on the ground that the mark is confusingly similar to the mark: CONNIE'S PRONTO! in Registration No. 3538720.
As specifically addressed in Federated Foods, the inquiry mandated by Section 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks (see Federated Foods, Inc. v. Fort Howard Paper Co., (544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976)). Applicant respectfully argues that there is no likelihood of confusion under the DuPont factors (see In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), because the marks are different as to appearance, sound, connotation and commercial impression, the goods are different, and the goods are marketed to, and consumed by, different consumers in different channels. For the reasons discussed below, applicant respectfully requests that the Examining Attorney withdraw the refusal to register and allow the subject application to proceed to publication.
It is readily apparent that the two marks do not look the same in a visual comparison of the marks. The mere fact that the marks share the word PRONTO does not compel a conclusion of likely confusion (see Gen. Mills, Inc. v. Kellogg Co., 824 F.2d 622, 627, 3 U.S.P.Q.2d 1442, 1445 (8th Cir. 1987) (“The use of identical, even dominant, words in common does not automatically mean that two marks are similar.”), citing Freedom Sav. & Loan Ass’n v.Way, 757 F.2d 1176, 1183, 226 U.S.P.Q. 123, 127 (11th Cir. 1985); see also Penta Hotels Ltd. v. Penta Tours, 9 U.S.P.Q.2d 1081, 1098 (D. Conn. 1988)).
Moreover, a refusal to register grounded in a likelihood of confusion requires that such confusion as to the source of the goods or services not merely be possible, but likely. A mere possibility of confusion is an insufficient basis for rejection under Section 2(d). In re Massey-Ferguson Inc., 222 USPQ 367 (TTAB 1983).
As an initial matter, applicant notes from the US Trademark Office register that there are other registrations and approved applications for marks that contain the word PRONTO for similar goods. This co-existence of marks on the register evidences that the Trademark Office believes that consumers can and do distinguish between the sources of food items sold under the respective marks, even when the marks contain these common elements. Applicant includes below a listing of various marks featuring PRONTO for example purposes:
PRONTO PANCAKES
Class 030. Instant pancake mixes; Pancake mixes.
Registration Number 3922775
COPPERLEAF KITCHEN
PRONTOFRESCO
Class 029. Hors d'oeuvres...
Class 030. Seasonings and sauces; farinaceous food pastes for human consumption
Registration Number 3799697
GRECI INDUSTRIA ALIMENTARE
PRONTOCHEF
Class 030. Pastas.
Registration Number 3938920
MARKET PLAZA, INC
TONY LUKE'S PRONTO PRONTO PRONTO PRONTO
Class 030. Pre-cooked, frozen, microwaveable foods...
Registration Number 3633039
TL Enterprises LLC
PRONTO! TRATTORIA
Class 030. Sauces; tomato-based sauces; ready-made sauces; tomato sauce; canned tomato sauce; pizza sauce; spaghetti and pasta sauce; marinara sauce; salsa.
Registration Number 3523245
Stanislaus Partners San Tomo, Inc
PRONTO PIZZA
Class 030. PIZZA, PASTA, CALZONES AND SANDWICHES.
Registration Number 3942473
Odd Couple Pizza 42, Ltd.
PRONTO
Class 029. dehydrated legumes; namely, dehydrated refried beans.
Registration Number 1687986
Inland Empire Foods, Inc.
PRONTO COMBO
Class 030. entree comprised of tortillas, chicken, and cheese for consumption on or off the premises.
Registration Number 1637727
El Torito Restaurants, Inc.
Where the consuming public is exposed to third-party use of similar marks on similar goods, a given mark is entitled to only a narrow scope of protection (see Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005). The registration record is clear that the Trademark Office and prospective consumers can and do distinguish between marks containing the word PRONTO for food items. Therefore, just as no confusion was considered likely between previously registered and approved marks and the cited mark, applicant submits that no confusion is likely between the use of its mark and the mark in the cited registration.
A visual comparison of applicant's mark and the cited mark immediately imparts the differences between the marks. While both marks may contain the word PRONTO, applicant’s mark includes a distinctive logo having a red circle around the word. It is well-settled that one feature of a mark may be more significant than another, and it is not improper to give more weight to this dominant feature in determining the commercial impression created by the mark. See In re Chatam International Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004); In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). The red circle of applicant’s mark is significant because the goods are sold in grocery stores where shoppers are scanning shelves for familiar logos. There is no likelihood of confusion because applicant’s mark, when combined with the red-circle feature is so merged with that feature that, the overall appearance of each mark is totally different.
The mark in the cited registration begins with the word CONNIE'S and includes an "!". The inclusion of the word CONNIE'S and a "!" in the cited mark and the lack of a red circle around the word PRONTO are significant and cannot be ignored in that these elements materially alter the way in which the mark is perceived and recognized by prospective consumers. The difference between the marks is more significant in view of the above-referenced co-existing registrations containing the word PRONTO. The registration record makes it clear that differences among the various marks containing the word PRONTO are sufficient to distinguish marks belonging to separate parties.
When the marks of the parties are viewed in their entirety, applicant's mark significantly differs from the cited mark in appearance and commercial impression such that confusion would not be likely. To evaluate a likelihood of confusion, the marks must not be dissected but must be considered in their entireties without ignoring non-similar elements (see 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §23:41 (4th ed. 2000). Under the anti-dissection rule, the validity and distinctiveness of a composite trademark is determined by viewing the trademark as a whole, as it appears in the marketplace. Here, the addition of the word CONNIE'S makes it clear to customers that the goods originate from Connie's Food Products. Applicant’s red-ringed PRONTO is not likely cause confusion with the mark CONNIE'S PRONTO because CONNIE'S is the dominant element of the cited mark, which gives the mark a different sound and creates a different commercial impression distinct from applicant’s mark.
When viewed in their entirety, there is no likelihood of confusion. The marks "partake of both visual and oral indicia, and both must be weighed in the context in which they occur." In re Electrolyte Labs., Inc., 913 F.2d 930, 16 USPQ2d 1239 (Fed. Cir. 1990) (finding no likelihood of confusion based on the overall commercial impression despite the letter K in both marks on similar goods and trade channels). Accordingly, applicant respectfully asserts that the differences between the marks are sufficient such that confusion would not be likely.
With respect to the goods, the mere fact that cakes and cannolis are desserts does not compel the finding of a relationship. Applicant's goods are flans and flavored, sweetened gelatin desserts. While canollis and flavored gelatin may be food items, they are not at all identical. The registration record makes it clear that differences among goods for the various marks containing the word PRONTO are sufficient to distinguish marks used for different food items belonging to separate parties. Under du Pont, "[t]he number and nature of similar marks in use on similar goods" is a factor that must be considered in determining likelihood of confusion (In re E. I. du Pont, 476 F.2d at 1361, 177 USPQ at 567).
Further, in order for there to exist even the possibility of a likelihood of confusion, applicant’s goods and the goods of the cited mark must be marketed to common customers (see Electronic Design & Sales v. Electronic Data Systems, 954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992)). With respect to customers, there is a substantial difference. Consumers of the cited mark's goods are people eating in or carrying custom made food from a restaurant or kiosk (see attached printout advertizing the franchise). In contrast, consumers of applicants goods are grocery shoppers, where the prominent logo makes it easy for shoppers to see the brand easily on a grocery shelf.
Consumers purchasing custom made cakes and canollis from a restaurant or kiosk would exercise greater care due to the higher price than that exercised by grocery shoppers buying flavored gelatin from the grocery. Purchaser “sophistication is important and often dispositive because sophisticated consumers may be expected to exercise greater care” (Electronic Design & Sales, 21 USPQ2d at 1392); therefore it is unlikely that the public will be confused about the source of applicant’s goods.
In summary, there is no likelihood of confusion because the marks are different as to appearance, sound, connotation and commercial impression, the goods are different, and the goods are marketed to, and consumed by, different consumers in different channels. For all of the above reasons, there is no likelihood of confusion between concurrent use of applicant’s mark and the mark shown in the cited registration.
Applicant submits that the all matters of this application have been addressed. Applicant also submits that the application is now in condition to be passed to publication and such action is respectfully requested.